What does the new Industrial Property Law mean for trademarks?
On July 1 2020, and as a result of the entry into force of the United States–Mexico–Canada Agreement (USMCA), the new Federal Law for the Protection of Industrial Property was published, abrogating the current Industrial Property Law. It will come into force on November 5 2020.
Some of the most relevant changes in the new Federal Law for the Protection of Industrial Property regarding trademarks are the following:
Use in Mexico of a trademark is not required in order to apply or achieve registration. Therefore, if there is no use, it is possible to file a trademark application on an intent to use basis. However, if a trademark is already in use in Mexico and a date of first use is declared, under the new Law, if the owner of the trademark registration does not prove the truthfulness of the date of first use declared, the registration may be declared null and void.
Trademark applications filed after November 5 2020 will be subject to a single examination, and not two exams as currently happens. Therefore, once Mexico's Trademark Office conducts the relevant examinations, it will issue an official communication on formal requirements (information and documents) and relative and absolute grounds for refusal (legal impediments or prior rights on record), as well as informing the applicant of eventual oppositions filed by third parties.
If an opposition is filed during the prosecution of a trademark application, the time period in which to respond to it will be four months after the applicant has been notified of the opposition, instead of the one month time period in the current IP Law.
Trademark registrations that are granted after November 5 2020 will be valid for 10 years from the granting date, and not from the filing date, as currently occurs.
Coexistence agreements are expressly allowed in order to achieve a registration to overcome refusals due to prior rights. Therefore if a coexistence agreement is submitted, this is enough to achieve a registration for a trademark application.
Partial non-use cancellation actions are not allowed by the Mexican Trademark law currently in force. However, under the new law, trademark registrations granted after November 5 2020 can be partially cancelled due to lack of use, only with respect to the protected goods and services that are not in use.