Intellectual Property

Reforms to the Industrial Property Law, concerning the trademark opposition procedure (Part 1) [14/06/ 2016].

June 14, 2016

Dear clients and friends:

On June 1, 2016, The Ministry of Economy (SE) published in the Official Federal Gazette (DOF) a decree reforming the “Industrial Property Law” (LPI), this reform being the most important in this area in the last two decades and which will enter into force 90 (ninety) calendar days after the date of their publication.

The purpose of this reform is to modernize and adjust the Mexican law to the principles established in the “Protocol Relating to the Madrid Agreement, concerning the International Registration of Marks” in relation to the Opposition System since the majority of the members of that protocol (and commercial partners of Mexico) have such system. With the reform, one of the objectives is that the holders of marks already registered in Mexico can also challenge marks of foreign applicants and have greater legal security in the registration procedure of a distinctive sign.

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.

With this reform the Mexican Industrial Property Institute (IMPI) will edit the Industrial Property Gazette, in which it will make the publications this Law refers to and where it will report any information of interest on industrial property and the other matters that are determined (including the applications for trademark registrations) so that interested third parties can present their opposition in the time period of one month without extension from the date on which teh publication in the Gazette takes effect (which is very short in comparison with other countries where the time periods can also be extended) with the intention that the Opposition Procedure be short and expedited, without the possibility of suspending the Opposition in order to pursue negotiations. In this regard, the acts recorded in this information source will take effect with regard to third parties from the day following the date on which it is put in circulation, which shall be indicated on each copy.

The petitioner will also have one month non-extendible from when the notice (publication in the Gazette) takes effect to manifest any defense in relation to the claim of the opponent.

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 Opposition to an application for registration will not suspend the processing of such registration, nor will it attribute to the person that has presented it the nature of interested party, third party or party and it will not prejudge the result of the substantive examination done 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.  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.

It should be mentioned that IMPI will not be obligated to pronounce on the Opposition nor will issue a ruling in that respect. 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 spike of the Opposition Procedure the opponent does not convince IMPI to deny the trademark application, the affected party may file a nullity claim on the trademark registration base on the premises established in article 151 and following of the LPI (TITLE FOUR: TRADEMARKS AND SLOGANS AND TRADE NAMES; CHAPTER VII: NULLITY, EXPIRATION AND CANCELLATION OF REGISTRATION), which is followed in the same terms.

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 or that are confusing with respect to others already registered.

The publication of this reform is unquestionably an important step forward in matters of Industrial Property protection and it is one more element for increasing competitiveness in our country.

Probably, as happens with all reforms, we will have to wait for adjustments and modifications to the regulatory provisions and adjustments to the structure of IMPI and its computer and publications systems, including the creation of an area dedicated to the study of Oppositions as happens in similar organizations in other countries.

Furthermore, the lawyers and professionals dedicated to the area will have to put special care into the review of the publications made through the Gazette in order to detect applications for trademarks of third parties that could invade the rights of our clients, so that if this occurs the necessary Opposition Procedures can be carried out in order to protect their interests.

Attached to this note, allow us to send a comparative table of the articles that were subject to this reform, for easy reference.

To learn more about this topic, please contact:
Lic. Esperanza Viesca Urquiaga: eviesca@samanosc.com.mx
Lic. Cynthia Osorio Muñoz: cosorio@samanosc.com.mx

Reformed Articles

TITLE ONE

SOLE CHAPTER
GENERAL PROVISIONS

Art. 6º.- The Mexican Industrial Property Institute, administrative authority in Industrial Property matters, is a de-centralized body, with legal capacity and its own assets, which will have the following powers:

...
IV.- Carry out the procedures of nullity, expiration and cancellation of the industrial property rights, formulate the resolutions and issue the administrative declarations as provided in this Law and its regulation and, in general, resolve the petitions that are signed for purposes of its application;

...
VIII.- Carry out and resolve the administrative resources provided for in this Law, that are filed against the resolutions issued, relative to their acts of application, of its regulation and other provisions on the matter;

...
X.- Perform the legal publication, through the Gazette, as well as disseminate the information derived from the patents, registrations, declarations of notoriety or fame of the marks, authorizations and publications granted and of any others referring to the industrial property rights conferred to it by this Law, as well as establish the general rules for the handling of procedures electronically and their start up;

 

Previous text 2nd paragraph, Sec.X   Current text (reformed) 2nd paragraph, Sec.  X   Comments

All the resolutions issued in the administrative declaration proceedings, established in this Law, as well as those that present petitions the purpose of which is to modify the conditions or scope of patents or registrations granted, shall be published in the issue of month immediately after their issuance

 

The definitive resolutions  issued in the administrative declaration proceedings established in this Law, as well as those resolutions that modify the conditions or scope of patents or registrations granted, shall be published in the Gazette the month immediately after the date of its issuance;

 

A clear and more concise drafting is included on what will be published in the Gazette. Definitive resolutions and resolutions that modify the conditions or scope of patents or registrations granted.


Art. 7 Bis 1.-

Previous text   Current text (reformed)   Comments

The General Director, or the equivalent, is the legal representative of the Institute and is designated by the Federal Executive, through the Ministry of Commerce and Industrial Development by the Governing Board.

 

The General Director, or the equivalent is the legal representative of the Institute and is designated by the Federal Executive, through the Ministry of Economy by the Governing Board.

 

This reform was an opportunity to update the name of the Ministry of Economy.

Art. 8º.-

Previous text 2nd paragraph, Sec.X   Current text (reformed) 2nd paragraph, Sec.  X   Comments

The Institute will publish the Gazette monthly, which will contain the publications referred to in this Law and any information of interest on industrial property and the other matters that are determined will be reported. The acts recorded in said information body will take effect before third parties from the day following the date on which it is put into circulation, which must be included in each copy.

 

The Institute will publish the Gazette in which the publications referred to in this Law will be made and where any information of interest on industrial property and the other matters determined will be reported. The acts recorded in said information body will take effect before third parties from the day following the date on which it is put into circulation, which must be included in each copy.

 

The part stating that the gazette will be published monthly, was eliminated the Gazette may be published more than once a month, thinking in the Opposition Procedure.


 

TITLE FOUR
THE TRADEMARKS AND SLOGANS AND TRADE NAMES
CHAPTER V
REGISTRATION OF TRADEMARKS

Art. 119.- 

Previous text 2nd paragraph, Sec.X   Current text (reformed) 2nd paragraph, Sec.  X   Comments

Once the application is received, there will be an examination of form and of the documentation exhibited will be done, in order to prove compliance with the requirements of this Law and its regulation.

 

Once the application is received, the Institute will publish it in the Gazette, not later than within ten business days after its reception, and will do an examination of form thereof, and of the documentation exhibited, in order to prove compliance with the requirements of this Law and its regulation.

 

The publication of the application for registration in the Gazette is added so that the Opposition Proceeding can begin, in addition to the fact that the IMPI will continue with the examination of form, also including that IMPI will review the documentation exhibited by the petitioner.

Art. 120.-

Previous text   Current text (reformed)   Comments

This article has been derogated.

 

Any person who considers that the application published falls under any of the premises established in articles 4.1 and 90 of this Law may oppose its registration, within a non-extendible period of one month, counting from the date on which the respective publication takes effect.

The opposition must be filed in writing, accompanied by the documentation considered advisable, as well as the proof of payment of the fee.

The opposition to the application will not suspend the processing, nor will it consider the person presenting to be an interested party, a third party or a party. Neither will it prejudge on the results of the substantive examination done by the Institute of the application.

Once the period referred to in the first paragraph of this article expires, the Institute will publish in the Gazette, no later than in the next ten business days, a list of the applications in which an opposition to the registration has been presented.

The applicant may manifest in writing a defense in relation to the causes, impediments or prior claims cited in the opposition, within the non-extendible period of one month, from the date on which the respective publication takes effect.

The opposition as well as the manifestations of the applicant may be considered by the Institute during the substantive examination of the application.

 

 

The Opposition Procedure by a third party is included.

Notwithstanding the opposition to a registration application does not suspend the registration process nor prejudges the result of the substantive examination by IMPI, on the application, the opposition as well as the manifestations of the applicant may be considered by the Institute during the substantive examination of the application.

The applications for registration will be published in the Gazette so that third parties can oppose them. Furthermore, the applications in which an opposition has been filed will be published.

It is for this that the above articles related to the Gazette were reformed.

Art. 123.- 

Previous text   Current text (reformed)   Comments

If when the application answers, within the granted period, in order to remedy the legal impediment to registration, modify or substitute the mark, it will be subject to a new procedure, and the corresponding fee for a new application must be paid and the requirements of articles 113 and 114 of this Law and the applicable provisions of its regulations must be satisfied. In this case the filing date will be considered the date on which the new procedure is requested.

 

If for purposes of remedying the legal impediment for registration, answering within the granted period, the applicant modifies or substitutes the mark, it will be subject to a new procedure.
The new procedure must:

  • Make the payment of the fee corresponding to the new application;
  • Satisfy the requirements of articles 113 and 1142 of this Law and the applicable provisions of its regulation, and
  • Be subject to the publication referred to in article 119 of this Law.
  • In this case, the date of filing will be considered the date on which the new procedure is requested.

 

The publication in the Gazette related to the Opposition Procedure is considered.

Art. 125.- Once the processing of the applications is concluded and the legal and regulatory requirements have been satisfied, the registration certificate will be issued.

If the Institute denies the registration of the mark, it will inform the applicant of this in writing, stating the legal grounds in law and factual basis for its ruling.

Previous text   Current text (addition) 3rd paragraph.   Comments

-----

 

If applicable the Institute will inform any opponent of the application in writing of the data of the registration certificate issued or those of the resolution that denied the registration, whichever is appropriate.

IMPI’s obligation to notify the opponent of an application of the data of the registration certificate issued or those of the resolutions denying its registration is included.

 

The publication in the Gazette related to the Opposition Procedure is considered.


TITLE SIX
THE ADMINSITRATIVE PROCEDURES
CHAPTER I
GENERAL RULES OF PROCEDURE
Art. 181.- When the applications and filings are presented through an agent, the agent must evidence his representative capacity:
...

Previous text 3rnd paragraph.   Current text (reformed) 3rd paragraph.   Comments

IV.- In the cases not included in section II, by power granted according to the applicable law of the place where it is granted or according to International treaties, if the agent is a foreign entity. When the power attests to the legal existence of the entity in whose name the power is granted, as well as the right of the grantor to confer it, the validity of the power will be presumed, unless proven otherwise.

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 the capacity in the applications to register a trademark, collective mark, slogan and publication of trade name; their subsequent renewals, as well as the registration of the licenses or transfers; it will be sufficient that the agent manifest in writing in the application, under oath, that he has powers to carry out the corresponding procedure, provided it is the same representative since the beginning and until the conclusion of the procedure.

If after the presentation of the application a new agent intervenes, he must evidence the capacity he claims in terms of this article.

 

 

IV.- In the cases not included in section II, by power granted according to the applicable law of the place where it is granted or according to International treaties, if the agent is a foreign entity. When the power attests to the legal existence of the entity in whose name the power is granted, as well as the right of the grantor to confer it, the validity of the power will be presumed, unless proven otherwise.

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 capacity he claims in terms of this article.

 

 

In addition to adjusting the drafting a little, the change of domicile of the applicant or holder of a registration is included as object of the publication and the change of location of an establishment.




1 Article 4 refers to the fact that no patent, registration or authorization will be granted nor will any be published in the Gazette when its contents or form are contrary to the law, public order, morals and custom.
Article 90 refers to what cannot be registered as a mark.
2Article 113 refers to the information the application to register a trademark should contain
Article 114 refers to the documents that should accompany the application to register a mark.