What are the main provisions of the opposition system?
Juan Carlos Hernandez: Ten days after the
filing of a trademark application, it is published in the
Industrial Property Gazette. This is prior to any formal or
substantive examination by the Mexican Trademark Office. Once
the application is published, any person who considers that
trademark publication to be similar to theirs in any form
according to the conditions set forth in the Industrial
Property Law of Mexico that refer to distinctiveness may file
an opposition to the granting of such an application, and a
payment of government fees has to be made.
Regardless of the filing of an opposition, the Mexican
Office of Industrial Property will perform its own examination.
A trademark owner has 30 days to file an opposition, then the
Office will communicate its decision to the opponent through an
official action, or through a registration certificate.
Previously, the examiner was the only one able to express an
opinion regarding the granting or the refusal of a trademark
application. Now, anybody who considers that there would be
some type of negative effect by the registration of the
trademark may express, through an opposition, that it should
not be granted.
Why has this been implemented now?
Eduardo Kleinberg: In Mexico, it was only
up to the examiner to decide whether or not he considered the
trademark application to be relatively similar to another
registered trademark. We were one of the very few countries
around the would that did not have an opposition system.
It all came together because of two main facts: first,
Mexico became a part of the Madrid Protocol, so now we are not
only dealing with national trademarks, but also international
trademarks. The other cause that made the opposition system
move forward was the fact that Mexico was negotiating the Trans
Pacific Partnership (TPP) with several countries. The TPP
appears to be completely dead now that the US has decided not
to take part in it. But, still, because of the negotiations of
the TPP, authorities finally understood that the opposition
system was needed for entering into the TPP.
How popular has it been so far?
Jorge Vega: At first, the legal community
was panicked with what would happen with the opposition system,
and how would it work. The Office took this into consideration,
and that's why, in order to avoid lots of opposition and delays
in the registration of certain trademarks, they made the
government fees very high compared to other government fees
related to IP. This calmed down the legal community.
I think it has been very popular. Last time I had a meeting
with the Office, there were over 1,000 oppositions filed, which
is a very high number for the small amount of time that we have
had the system in place. I think that these proceedings are
giving more credibility to the Trademark Office, because now
they have a different point of view of the trademarks to be
registered and if they want to co-exist in the market.
Have there been any-high profile opposition
Jorge Vega: ExxonMobil has filed an
opposition and there have been some owners of well-known
trademarks that have filed oppositions. About a week ago, we
started to see some resolutions. It's interesting that an
entertainment company, a retail company, clothing entities and
even companies in the oil industry have had oppositions
resolved. As you can see, this is very diverse: all types of
industries are having opposition experiences.
How effective is it? Is it living up to expectations?
Juan Carlos Hernandez: It's been quite
effective, actually. At the beginning, the legal community was
sort of skeptical about the effect that the oppositions would
have on the examiners' review and processing of an application,
because the system was designed so that the time of prosecution
would be delayed. One of the major advantages of our trademark
system is that applications can be made and prosecuted in a
very short period of time.
We have seen that we have been able to provide examiners
with lots of information about our clients' trademarks, our
clients' ways of doing business that have been taken into
account by the examiners to reject new applications that have
been filed in bad faith. So, we believe that, yes, it has been
effective, because we are now able to provide the examiners
with tools and information that they did not have before.
How does it compare to other opposition systems globally?
Is it robust enough?
Eduardo Kleinberg: The Trademark Office was
very concerned with the implementation of an opposition system,
because we have a very expeditious system of registration, and
they were concerned that an opposition system would simply
create a backlog on the registration system. We looked at very
different opposition systems around the world. Some of them are
really complex, and it can be a very lengthy process. We were
concerned that we would end up with something like that, or a
similar opposition system to what the US has, where oppositions
are very expensive. In the end, the Trademark Office created an
opposition system that would allow the owners of registered
trademarks to voice their opinions to the examiners, but still
the examiners would allow the registration process to continue
while definitely taking into consideration the oppositions.
Jorge Vega: The Mexican opposition system
is a hybrid. The first part is the opposition proceeding; the
Trademark Office is working flawlessly in accepting and then
publishing the oppositions, and then starting them. The second
part is the final resolution. When you file an opposition, the
examiner will consider the opposition and will see your
arguments. Even if an applicant does not oppose, the Trademark
Office will still have the right to issue an office action, and
even if the applicant opposes, the Office could consider that
the applied-for mark and the published mark are not quite
similar. Even if the opposition is not successful, clients have
time to prepare for post-registration litigation, because they
know about the publication of the new application. Previously,
the trademarks were only published and recorded when they were
registered; they weren't published when they were
Have there been any problems, or are there any unclear
Jorge Vega: At the very beginning, there
were a couple of oppositions that were filed just for the
purpose of delaying the procedures. There are many pirates out
there that just want to give trouble to a legitimate applicant,
but they're thinking twice, because, as I mentioned earlier,
the government fees are high. We're at the very start of
getting some resolutions from the very first oppositions that
were filed; about 10% of opposition filings are being resolved
Overall, prosecution has not been affected by the opposition
system. Usually, Mexico has about a six-month timeline. It's
one of the quickest trademark offices in the world, and I think
that that six-month resolution period has been delayed a little
bit, but now it takes about seven to seven-and-a-half months,
so I believe trademark applicants are happy. So far,
resolutions have come out about 50-50: I've seen them both
granted and rejected, and by rejected I mean that the trademark
applications are granted.
What should trademark owners be doing to prepare to use the
Juan Carlos Hernandez: Trademark owners
should definitely hire a watching service. Here in Mexico we
need to take into account a number of factors such as the
possibility of bad faith applications that are filed in classes
that are not the same class in which the trademark has been
granted, but rather they are filed in a class in which the bad
faith applicant thinks that it won't be detected or opposed to,
or rejected by the Trademark Office. They should also consider
expanding the protection of their trademarks to additional
international districts … and multi-platform coverage,
and the possibility of coexistence agreements. Mexican
examiners are not compelled to consider them, but we do believe
that we should take an open-minded approach. Finally, you also
have to take into account globalization. An opposition in
Mexico could also be taking place in other countries. Or,
perhaps the marks are coexisting in other countries, and you
could hope for negotiations to reach a good conclusion in
What will the effects of the opposition system be, going
Juan Carlos Hernandez: I think this
opposition system will start leading to a much more precise
description of goods and services when trademark applications
are filed. Currently in Mexico applicants are allowed to
designate the entire class, or as many products or services as
they want, as long as they are correctly classified.
If applicants begin to see that by designating specific
groups of interest, they will avoid the possibility of an
opposition and the eventual rejection by the Trademark Office,
I think that they're going to begin to be more specific about
it. I think that applicants are going to become more aware of
prior rights before filing. Now, trademark owners have the
certainty that they have an additional tool to keep a watch on
their trademarks and protect their IP rights in Mexico.
||Eduardo Kleinberg is a
partner of Basham, specialising in IP and franchises. He
is past president of CONCAMIN and represented the Mexican
private sector in respect to the IP chapter of the TPP
Agreement. He has also held various offices in other
associations such as AMPPI, AIPPI, LES and INTA. He has
been managing partner of the firm since 2014 and heads
the trade mark, franchising and licensing practices.
||Jorge Vega Sotelo is a
partner of Basham in Mexico City, specialising in
trademark and copyright law. He is a member of AMPPI,
ASIPI and INTA. A graduate of the Universidad Anahuac del
Sur, he received an LL M from The George Washington
University Law School. He speaks Spanish and English and
has lectured on various IP-related topics.
||Juan Carlos Hernandez
Campos is a partner of Basham in Mexico City,
specialising in IP. His practice encompasses trademarks
and slogans, copyright, industrial secrets, domain names
and new technologies. He is the author of various
articles and publications and has spoken in IP forums,
and is a member of AMPPI, ANADE and INTA. He speaks
Spanish, English and French.