Mexico: A closer look at promoting a nullity action on unfavourable oppositions

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Mexico: A closer look at promoting a nullity action on unfavourable oppositions

Sponsored by

olivares-400px.jpg
yang-shuo-16y4shhe9xy-unsplash.jpg

Santiago Pedroza of OLIVARES looks at how the opposition procedure has undergone changes to protect right holders

In 2021, the opposition system in Mexico celebrates five years since coming into force.

In the course of its development, the opposition procedure has undergone changes in the interests of better functioning and better protection of the legal sphere of right holders, as well as to consumers of goods and services.

One amendment to the opposition procedure was through the entry into force of the new Mexican Industrial Property Law in 2020. This consisted of a penalty or impossibility to initiate a nullity action in the event of obtaining an unsuccessful opposition claiming the same arguments and evidence.

In this respect, if an opposition has been promoted and it is unsuccessful or unfavourable, namely, it does not prevent the granting of the trademark registration in question, the possibility of filing a nullity action against such a trademark registration is prevented based on the same arguments and evidence as those filed in the opposition.

In simpler words – and as an example in case – an opposition is filed based on likelihood of confusion and it results unsuccessful, the possibility of filing a nullity action against the resulting trademark registration based on likelihood of confusion would be precluded. Consequently, a potential nullity action would have to be necessarily filed on a different basis (e.g. prior use, bad faith, etc.).

Article 259 of the new Mexican IP Law contains the penalty to file a nullity action based on the same arguments and evidence presented in the opposition:

Article 259: A nullity action shall not be admitted, when the opposition provided in Article 221 of this Law has been filed, provided that the arguments asserted in the nullity action, as well as the evidence, are the same as those filed in the opposition and the Institute has already ruled on them.

This new provision is intended to avoid the filing of idle oppositions, tending to delay and hinder the trademark registration process in Mexico, and consolidates the opposition procedure as a more robust and reliable mechanism in the prevention of the granting of trademark registrations than may affect prior third parties’ rights.

 

Santiago Pedroza

Attorney, OLIVARES

E: santiago.pedroza@olivares.mx

more from across site and SHARED ros bottom lb

More from across our site

Lateral hires at Thompson Hine and Pierson Ferdinand said they were inspired by fresh business opportunities and innovative strategies at their new firms
The launch of a new IP insurance product and INTA hiring a former USPTO commissioner were also among the top talking points this week
The firm explains how it secured a $170.6 million verdict against the government in a patent dispute surrounding airport technology, and why the case led to interest from other inventors
Developments of note included the court partially allowing a claim concerning confidentiality clubs and a decision involving technology used in football matches
The firm said adding capability in the French capital completes its coverage of all major patent litigation jurisdictions as it strives for UPC excellence
Marc Fenster explains how keeping the jury focused on the most relevant facts helped secure a $279m win for his client against Samsung
Clients are divided on what externally funded IP firms bring to the table, so those firms must prove why the benefits outweigh the downsides
Rahul Bhartiya, AI coordinator at the EUIPO, discusses the office’s strategy, collaboration with other IP offices, and getting rid of routine tasks
A boom in transactional work and a heightened awareness of IP have helped boost revenue for the rebranded commercial services team
Clemens Heusch, head of global litigation and dispute resolution at Nokia, tells us why open conversations – and respectful challenges – lead to the best results
Gift this article