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A guide to Mexico’s new opposition system (sponsored article)




Eduardo Kleinberg, Jorge Vega and Juan Carlos Hernandez of Basham Ringe & Correa answer some common questions about trademark oppositions in Mexico

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 examples yet?

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 filed.

Have there been any problems, or are there any unclear elements?

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 now.

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 new system?

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 Mexico.

What will the effects of the opposition system be, going forward?

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
  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
  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
  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.


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