On April 28th, the Mexican Congress, approved the amendment of several articles and new articles also included into the Mexican Industrial Property Act (hereinafter “LPI”), including the implementation of a trademark opposition proceeding that pointed out the following amendments and new provisions.
The Reform will come into force within the next 90 calendar days after its publication in the Federal Government Gazette. The specific publication date is still unknown, since it will be necessary that the Tariff of the Mexican Institute of Industrial Property (IMPI) is also amended to include the official fees for filing of or response to an opposition.
All Mexican trademark applications filed should be published by the Mexican Industrial Property Institute (hereinafter “IMPI”), in the IMPI´s Gazette, within a maximum term of 10 days (Article 119 LPI). So, according to the text of such reform the Opposition proceeding will be applicable in the following cases:
- If there is a Registrant or Applicant in Mexico who considers that an owned a previous application or registration mark is invaded or infringed by a third party the Registrant or Applicant could file an opposition before the IMPI in the term of one month (30 calendar days) without extensions, as of the publication date of the new mark application come in force into the IMPI´s Gazette. (art. 120 LPI).
- If an Applicant was notified by IMPI that a third party has filed an opposition against its mark application. In such case the Applicant could give response to the opposition claim in the term of one month (30 calendar days) without extensions, since the publication date of the opposition come in force into the IMPI´s Gazette. (art. 123 LPI).
- Please be informed that once the term of (one month) mentioned above has expired, the IMPI must published all applications which had received an opposition in the term of 10 days. On this regard, IMPI will grant a term of one month without extensions to the Applicant in order to reply or giving response to the third parties opposition claim.
It is important to consider that the new “Mexican Opposition System” would not be encumber to the IMPI´s Examiners as a new step on the prosecution of a trademark application in Mexico. On the other hand, the Applicant subject of an opposition process is not undertaking by the Mexican Laws to give response to an opposition filed.
The new Mexican Opposition System will help to prevent or avoid the registration of trademarks that could invade or infringe an Applicant or Registrant´s rights granted.
Our clients will timely receive our watch notices so they can assess whether to oppose an application or respond to an opposition, depending on each specific case.
Finally, we will inform our clients once the publication of this reform is published in the Federal Government Gazette.
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