[15/08/2016].
Following up on our note from June 14th of this year, the reforms and additions to various provisions of the “Industrial Property Law” (LPI), will enter into force on August 30, 2016, which is 90 (ninety) calendar days after the date of its publication (June 1, 2016). Such reforms refer to the Trademark Opposition System and therefore the implementation of “Phase 2” of the system of “Trademark on Line” as well as important reforms to the “Regulation of the Industrial Property Law” (RLPI), adjustments to the Internet page of the “Mexican Industrial Property Institute” (“IMPI”) called (“Marcanet”) and the issuance of administrative agreements justifying, grounding and describing the operation of the “Trademark on Line”. As already mentioned, the reform seeks to:
Allow the holders of marks already registered in Mexico to also oppose marks of foreign applicants.
Provide greater legal security to the procedure for the registration of a distinctive sign.
Promote the application for registration of trademarks and protect industrial property.
Efficiently and times attend the growing number of trademark applications (it is estimated that in 2016, it will reach approximately 160,000)
The Opposition System allows third parties and individuals or entities having a legitimate interest to provide information and any evidence to the trademark examiner before the authority grants a registration. The opposition must be based on substantive questions, primarily if a trademark can be considered contrary to public order, morals or custom (article 4 of the LPI) or if it is considered that the trademark could fall under one of the premises established in article 90 of that law which indicates what cannot be registered as a mark.
As we have explained, IMPI will not be obligated to pronounce on the Opposition nor will it issue a resolution in this respect.
Furthermore, IMPI may or may not take into consideration the arguments, which it must communicate to the applicant and the opponent.
Therefore, no challenge can be filed, and thus the Opposition Procedure does not imply a delay in the process of registration of a mark.
Once the examiner does the substantive examination and issues the trademark certificate or the denial, the IMPI must inform the opponent. If in spite of the Opposition Procedure the opponent does not convince IMPI to deny the trademark application, the affected party may claim the nullity of the trademark registration based on the premises established in article 151 and following of the LPI.
In reality the Opposition Procedure complements the examination process of a mark prior to its registration, and therefore the elements contributed by the opponent can be useful for the examiner, but they are not binding, since the examiner analyzes the mark according to the Law and criteria established by the courts.
For the above reason in this reform there is not modification or substitution in relation to the NULLITY, EXPIRATION AND CANCELLATION OF REGISTRATION, of the LPI, as well as what is established in TITLE SIX, ADMINISTRATIVE PROCEDURES and specifically CHAPTER II, ADMINISTRATIVE DECLARATION PROCEDURE and CHAPTER III, MOTION FOR RECONSIDERATION, of the mention law and regulatory provisions.
In reality the adoption of the Opposition System in the Mexican law is an additional filter that tries to prevent and reduce the number of nullity requests of a mark and therefore, make the function of the IMPI and the courts in the last instance more efficient, since it will prevent or at least decrease the issuance of registration certificates by error or inadvertence of IMPI that could invade rights previously granted or take from the public domain common names in a particular industry
Additionally, the adoption of this Opposition System also attempts to dissuade the application for and use of similar trademarks that are confusing with respect to others already registered. With this reform IMPI:
Will publish daily in PDF. and XML. Formats the “Industrial Property Gazette” (the “Gazette”), in which it will publish what is referred to in the LPI and where any information of interest on industrial property will be reported and other matters that are determined will be reported (including the trademark registrations applied for).
The applicants may reconcile their data and electronic oversight and monitoring systems of their marks with the information published daily in the “Gazette”. In this way they may be become aware of a situation that may invade their rights, so that they can carry out or respond to the Opposition Proceedings necessary to protect their interests.
In this regard, the acts recorded in the "Gazette", will take effect before third parties beginning on the day after the date on which it is put in circulation, which must be recorded in each copy.
Interested third parties may present their opposition in the non-extendible period of one month from the date on which the publication in the “Gazette” takes effect with the intention that such Opposition Procedure be short and expedited, without the possibility of suspending the Opposition to attempt negotiations, providing greater legal security to the opponents and the applications for a registration as well.
The applicant will also have, but is not obligated to use, a non-extendible month from when the notification (publication in the "Gazette") takes place, to manifest a defense in relation to the claims of the opponent. It is not necessary to pay fees to present the response to an opposition.
The Opposition to a registration must be presented in writing, accompanied by the documentation considered advisable, as well as the proof of payment of the corresponding fee. The amount of such payment will be published on the IMPI page and it is estimated it will be around $4,332.00 pesos
The Opposition to the application for a registration will not suspend the processing of that registration, nor will the person who presents it be considered an interested party, third party or party and nor will it prejudge on the results of the substantive examination by IMPI on the application.
With the Opposition Procedure, both the opponent and the application may argue according to their interests and both manifestations can serve for the examiner to determine whether or not to grant the registration of a distinctive sign.
Initially, IMPI recommends that the opposition be filed based only on arguments and not on evidence.
With the Opposition Procedure it is permitted for the petitioners and injured third parties to have the possibility of providing information and material to the examiner, which otherwise would not be easily available for a better and more complete analysis of the mark.
The opponent must evidence his capacity in terms of article 181 of the LPI.1
MARK ON LINE
While the procedure of “Mark on Line” has existed for a few years (of the 140,000 applications filed in 2015, 70,000 were on line), with these reforms, it should be emphasized that the possibility of continuing to file registration applications traditionally does not disappear. However, if the procedure is initiated traditionally, all the follow up and subsequent steps until obtaining the registration must be done this way, and if it is chosen to do the process on line, the entire procedure must be done on line. The novelties of this reform will consist of:
With the new phase, the processing of a trademark application will be done electronically without needing to present any original physical document.
The representative must obtain the “FIEL” (Firma Electrónica Avanzada) to carry out these procedures.
The possibility is also included of making notifications on line within the 30 days following the issuance of the official rulings.
With “Phase 2” the possibility of initiating electronically the new Opposition Procedure is incorporated.
What will cease to function is the reception of filings by fax, including an electronic mailbox that substitutes such functions.
1Capacity is evidenced with the appropriate documents indicated in such article. In each file that is processed the capacity of the applicant or the filer must be evidenced; however, it will be sufficient with a simple copy of the record of registration if the power is registered in the general registry of powers established by the Institute. To evidence capacity in the applications for trademark registration, collective mark, slogan and publication of trade name; their renewals; recordals of licenses or transfers; change of domicile of the application or holder, or change of location of the establishment, it will be sufficient that in the application the agent manifests in writing, under oath, that he has powers to carry out the corresponding procedure, provided it has been the same representative from its beginning to its conclusion. If after the presentation of the application, a new agent intervenes, he must evidence the representative capacity he claims according to the terms of that article.