Earlier this year the Mexican Chamber of Deputies approved an amendment to the Mexican Industrial Property Law which, entering into force on 30 August 2016, will provide for formal trade mark oppositions.
Going forward, all Mexican trade mark applications filed from 30 August 2016 will have to be examined and published by the Mexican Trade Mark Office (MTO) for opposition purposes within 10 business days, with third parties then having one month (non-extendable) following publication to oppose the later-filed application.
Under the outgoing system, the MTO conducted an in-depth examination of trade mark applications, and third parties had to wait for an application to register and then apply to cancel it based on earlier conflicting registered trade mark rights.
This change to the Mexican trade mark registration process will streamline and significantly expedite the prosecution of national trade mark applications.
As to the new opposition procedures there are some interesting procedural points to note:
- Oppositions will be heard and ruled upon exclusively by trade mark examiners at the MTO with no legal obligation to actively consider the statement of grounds supporting the opposition;
- The only obligation of the MTO in the opposition proceedings (other than the publication of applications and oppositions filed) will be to serve a notice to the opposing party, confirming either the application’s registration or refusal, and there will be no time limit for the MTO to do this; and
- Any party opposing a Mexican trade mark application will not be recognised as a party to the registration proceedings and therefore, in theory, will have no legal standing to appeal the opposition decision.
For more information on this change to Mexican Industrial Property Law please contact John Wallace, or your usual Boult Wade Tennant advisor.