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By: Jaime Israel Davila Gomez, Attorney
In our country, since 2018, a procedure called opposition has been incorporated into the process of trademark registration applications, and although it is simple, it has had significant repercussions. This figure will be briefly explained.
If a trademark application is submitted to the Mexican Institute of Industrial Property (IMPI), the first step in this process is to publish it in the Gazette (the authority’s official dissemination medium) to make it known to the general public so that anyone with an opposing interest in the registration of the trademark can oppose it.
For the purpose of filing an opposition, there is a one-month period following the publication in the Gazette; the reasons for opposing can be varied, although they mainly fall into two categories: the person filing the opposition has a very similar trademark to the one published for the same industry and informs the authority that their rights would be affected if it were granted; the person filing the opposition believes that granting the trademark would be contrary to the law as it involves a prohibited word that cannot be registered because it is descriptive, generic, or causes error or confusion.
In recent years, filing oppositions has become strategic because, even if an opposition is filed against a trademark, the IMPI may consider that the arguments are not sufficient to deny it and may grant it, resulting in the negative consequence of having spent money on the opposition without achieving the desired result. Additionally, the arguments used cannot be later asserted in administrative defense proceedings seeking to annul the granted trademark.
The most relevant point of analysis of this figure is that a new service has emerged from which trademark holders can benefit, as the trademark system in Mexico is much more complex than it was 10 or 15 years ago. This service involves monitoring, maintaining, and caring for trademark portfolios to file timely and strategic oppositions, allowing for the best possible protection of intangible assets.
