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An opposition system for Mexico at last (sponsored discussion)

Mexico’s Congress approved an amendment to the country’s industrial property law at the end of April to establish a trademark oppositions system. Attorneys from Basham Ringe y Correa explain how it will work

Why is this opposition system being introduced now?

Eduardo Kleinberg: It had to happen eventually. Perhaps the issue of Mexico implementing the Madrid Protocol, and now the TPP [the Trans-Pacific Partnership agreement announced in October last year and signed in February this year], accelerated the process. It is something that had to happen eventually and maybe it is also because of this international treaty that Mexico has subscribed.

We are very happy that Mexico has finally decided to implement an opposition system. We have been asking for it for a very, very long time. We thought that implementing Madrid Protocol before having an opposition system was not very beneficial, because we would not be in the same positon as other countries participating in the Madrid Protocol.

How will it work?

Juan Carlos Hernandez: It is a pre-registration opposition system as opposed to a post registration. Interestingly, applications will be published 10 days after they are received by the Mexican trademark office. This is prior to the formal exam that the trademark office conducts. This could have an impact on the way that trademarks are published because some applications are filed with errors as to the class number or the description of goods and services. This is going to be interesting because we are going to have to be very careful as to what is published. Maybe people could be distracted by errors in the class and certain trademarks could not be detected appropriately.

The trademark office will continue to conduct their own substantial exam. What is also interesting is that if the opposition is favourable for the opponent, the trademark office will issue a formal rejection, saying the reasons the registration was not granted. But if the opposition does not prevail, the trademark office will just issue the registration certificate. The opponent will not be given the reasoning of the trademark office for the granting of the registration.

What has been the reaction among IP practitioners in Mexico?

Eduardo Kleinberg: In general terms it has been received well because in our opinion it is something that was missing from our system: you did not previously have the opportunity as a trademark owner to raise your hand and object to the filing of another trademark. In any country where there is an opposition system it was well received by the practitioners.

But we do not believe that it went far enough. It is a mild system because, even when the trademark examiner will receive your objections and will take them into consideration, they will continue with their own substantial exam and they will grant a registration and you may not even know what their considerations are for granting the registration.

If the mark is denied they will issue their argument as to why it was denied. If it is granted you will not even know if they did or did not really consider your arguments. You will still have the possibility of proceeding to an annulment action but what is relavant about an opposition system is that you can file arguments and that they should be considered in a very strict manner. We do not know if that will happen or not.

When will it come into effect?

Juan Carlos Hernandez: It has to be approved by the executive power. After it is approved, it will be published in the federal gazette, them it will come into effect 90 days after this publication. We expect the executive powers approval to be granted in the following weeks. It shouldn’t be more than two months but this could vary.

How will this system compare to others around the world?

Juan Carlos Hernandez: It will be similar to most pre-registration opposition systems. I would say the main difference would be this element in which the opponent that loses will not know what the reasons of the trademark office for granting the registrations were. We do not have a mediation stage like in other countries. There will be results fast. Mexico has a very fast trademark procedure. You may have a registration granted in four months, sometimes even less, which is an advantage for trademark holders. So one of the main advantages and one of the way it differs from other systems is it is going to be a swift system.

Will the trademark office be able to cope?

Santiago Zubikarai: We believe the trademark office will be able to cope with this new system. The intention of the system is not to be like a trademark examination process. When the trademark office receives the application it will have 10 days to publish the application in the intellectual property gazette. You would then have one month to file the opposition. Then the proceeding will continue as usual. Therefore we do not expect it to put any excessive burden on the trademark office when this opposition system comes into effect. On the other hand, we will potentially be giving the Mexican trademark office additional elements to protect trademarks that could possibly affect third party rights. In so doing, we also hope that we will reduce the number of annulment actions that are filed against trademark registrations.

Juan Carlos Hernandez: I would like to add that what Santiago said was very important because trademark hijacking was becoming an important problem in Mexico. For instance, a person would try to obtain the registration of a well-known trademark that was well known for restaurant services, and they would try to register in class 32 for beverages. Since the rightful owner sometimes didn’t have a registration on that particular class, some of the let’s call them bad faith applications did go through. The Mexican trademark office was making notable efforts to try to stop this practice and continues to do so. We believe this opposition system will help the rightful trademark owners to avoid the situation and will also be a good complement for the efforts that the Mexican Institute of Industrial Property is pursuing.

Will these proceedings be popular?

Santiago Zubikarai: It’s so new here that it is going to take a while for trademark users to clearly understand the benefits of that. We believe that it will be used as in any other country. I would expect that they will file an opposition in Mexico the same way that they oppose in any other country when they consider their trademark may be invaded by a similar mark. I would expect that trademark owners will use this important tool, which could be less costly than having to go to the annulment action.

Juan Carlos Hernandez: What is also relavant here is it is not only trademark application or registration owners that will be able to file oppositions. One element of this system is that you will be able to file an opposition based on any of the prohibitions for the registration of a trademark that are included in the law. This could include trademarks that are contrary to public order or to morality. It includes trademarks that should not be granted based on copyright. So the possibility of filing oppositions is not limited to trademark owners—it could also extend to groups or to copyright holders that could be considered affected by the granting of a registration.

What should clients be taking into account ahead of the system coming into effect and once it is live?

Juan Carlos Hernandez: They should take into account two main aspects. First, the Mexican Institute of Industrial Property makes important efforts to reduce the number of registrations that are unrightfully obtained but trademark hijacking is something that is going on. The second thing they should consider is the procedure itself. They should be acquainted with how it works, and the advantages and disadvantages. We are constantly saying that one important thing is the annulment procedure is maintained but we should also take into account the annulment procedure entails litigation and it is a more considerable investment in time and money. So we would advise the general public—because it is not only trademark holders—to become acquainted with the system and to use it.

Madrid and the TPP were factors in the opposition system being set up. Are there other elements to the trademark system that will potentially be changed?

Eduardo Kleinberg: We do expect that besides this opposition system, in the near future there is going to be an important change to the law. That is what IMPI has been discussing for a long time. To implement TPP in Mexico there is going to be a lot of changes that need to be added to the law, for example non-traditional trademarks that we do not have in Mexico that are going to be added to our system. There is a lot of new procedures that are going to be included. It cannot be just patches, it needs a completely new law. That’s what the trademark office is looking for. It is not going to be immediately but it is going to be in the future and not far away.

Separate from the oppositions proceeding, how have trademark filing figures been trending in the past few years?

Santiago Zubikarai: Trademark filing in recent years has been consistently increasing. It is one of the largest trademark offices in Latin America, behind Brazil.

We have seen a considerable increase of filings that are coming from the Madrid System. A lot of foreign applicants are not using it for the protection of trademarks here in Mexico and I expect that the inclusion of an opposition system will only enhance the number of filings here in Mexico. Basically what we see is that the opposition system will ultimately make the trademark system of Mexico stronger and as such it will reassure people about protecting their intellectual property here in Mexico.

Eduardo Kleinberg

Eduardo Kleinberg has been a Partner of the firm since 2003 in the Intellectual Property area and Managing Partner since 2014.

He is President of the Intellectual Property Commission of the Confederation of Industrial Chambers of Mexico (Confederación de Cámaras Industriales de los Estados Unidos Mexicanos also known as CONCAMIN). He is designated by CONCAMIN as the permanent representative of the Mexican private sector with respect to the Intellectual Property chapter of the Trans-Pacific Partnership Agreement (TPP), Past-President of the Mexican Association for the Protection of Intellectual Property (AMPPI), Past-President of the Mexican chapter of the International Association for the Protection of Intellectual Property (AIPPI), Member of the Nominations Committee of AIPPI, Member of the Permanent Committee on Trademarks of AIPPI, Past-President of Licensing Executives Society—Mexico (LES-Mexico), Member of the Licensing Executives Society International (LESI), Member of the International Trademark Association (INTA), Member of the Inter-American Association for the Protection of Intellectual Property (ASIPI), President of the Non-Traditional Trademarks Committee of ASIPI, Past-President of the Copyright Committee of the International Chamber of Commerce Mexico, Member of the Association of European Trade Mark Owners (MARQUES), Member of the Mexican Franchise Association.

Juan Carlos Hernandez

Juan Carlos Hernandez is  partner of the firm in the Intellectual Property area in the Mexico City office. His practice focuses on planning and consulting in the field of intellectual property, both nationally and internationally, including aspects related to trademarks and slogans, copyright, industrial secrets, domain names and new technologies. He also has wide experience in negotiating and drafting contracts.

He is the author of various articles and publications and speaker in intellectual property forums.

Santiago Zubikarai

Santiago Zubikarai is Associate of the firm in the intellectual property area in the Mexico City office. His practice focuses on trademark filing and prosecution, including international registrations provided by the Madrid System, designing strategies related to trademark and copyright protection, conducting trademark and copyright searches and drafting and reviewing license, franchise, assignment, advertising, copyright and software license agreements, as well as agreements with artists for their participation in several events. He also practices litigation in the field of intellectual property, including enforcement in all instances.

Has also prosecuted and obtained permits for reproducing monuments from the Mexican Institute of Fine Arts and the Mexican Institute of Anthropology and History.

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