As many of the readers might be aware, Mexico introduced an “opposition” system to its IP legislation, which came into effect on 31st August 2016. The fact that opposition is being written between quotation marks in some sections of this article represents the feeling about the weakness and inappropriateness that in general is in the minds of both practitioners and IP holders, not only in Mexico, but internationally.
More information about the new system is available in the Information Notice No 28/2016 on WIPO’s website.
Prior to the introduction of this system in Mexico, only third party observations were available as a means for a prior rights holder to make the Mexican office (MPTO) aware of the fact that the granting of a pending application could affect the rights of such prior rights. These third party observations were not mandatory in their analysis and/or consideration by the examiner, during the course of the application. Additionally, no official fees were payable for filing these third party observations.
Mexican practitioners and both domestic and foreign companies had been pushing for years towards the introduction of a formal opposition proceeding into the Mexican trade mark system: one that would allow for both a prompt resolution, so as to avoid delays in the application process, but that would also grant legal certainty to third party prior rights (and in some cases prior use), would be ideal to achieve credibility and a powerful weapon against trade mark misappropriation.
After several meetings of special commissions and committees created to this effect, a considerable number of proposals being presented, and discussions in the Mexican Congress, the final reform that was taken for analysis and voting ended up being the one with the least substance which would not provide Mexico with a formal and effective opposition system.
The statement of reasons for the amendments that would become what we today know as our “opposition” system contains inconsistencies and in some cases reflects ignorance about the basic principles an opposition system should contain, at least in terms of European and US law, which should be the reference for Mexico in this field.
The statement of reasons contains information such as:
The proposed amendments seek to harmonize Mexican legislation with the legal systems of our main commercial partners and incorporate the possibility that applicants may oppose in Mexico against trade mark, slogan and trade name applications
(…)
Prior to the analysis of the proposed articles to be incorporated, is it important to state that the “Opposition System” proposed will not be binding, considering that:
- It will not suspend the application
- It will not grant the opposer the character of an interested party, a third party or a party to the proceeding at all
- It will not represent a pre-judgment against substantive examination performed by the MPTO; and
- The MPTO may consider both the opposition and the response to the same by the applicant, during substantive examination.
This will grant an efficient mechanism that will not delay the registration or publication process of trade marks, slogans or trade names and which transforms into a burden for the applicant or the opposing party.
As the opposition will not be a proceeding within the application process, within the provided timeframe, the applicant may or may not file a response. The lack of a response will not be considered an acceptance of the arguments filed by the opposing party.
…
The arguments filed by the opposing party and by the applicant will serve as additional elements during substantive examination conducted by the MPTO, but the MPTO will retain the authority to determine whether a proposed application complies or not with the provisions of the Law of Industrial Property (…)”
…
The term provided for filing the opposition (30 days) has been established taking into account it is sufficient and is compliant with the standards applied by other trade mark offices in their opposition systems, as is the case of the US, Chile, Colombia and Peru. Additionally, the proposed term has the aim of not interrupting formal examination.
The problem with the current system is not only due to the final amendments made, but rather thanks to the way it was analysed and compared to other systems at the time of drafting both the statement of arguments and the actual amendments. This results in a system that is full of inconsistencies in terms of Mexican Constitutional Law and international standards for proceedings of this nature.
From not considering the opposing party as a party of any kind in the opposition, to requiring the payment of official fees that are greater than the fees payable for the filing of a new trade mark application for a proceeding that is not a proceeding and that may be considered by the MPTO, we have managed to create a monster of a system. It not only does not provide certainty and speediness – which are two of the main arguments included in the statement of arguments – but it goes against the general rules of legal proceedings in Mexico and the international trends and standards for the protection of IP rights.
If Mexico really wants to meet international standards in terms of oppositions, we are to seriously consider the possibility of amending the system and constructing one that will, among other things, accept the filing of a notice of opposition and provide an additional term for the filing of the formal writ and evidence, consider the parties as parties, be mandatory in its analysis to the MPTO and result finally in the issuing of a decision (on the actual opposition) that is appealable by any of the parties.
Laura Collada is Vice-Chair of the MARQUES International Trade Mark Law and Practice Team and is managing partner of Dumont Bergman Bider
Issue 070
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