TRADEMARK OPPOSITION
registrations granted in an opposition system are stronger, as they have already overcome alleged impediments. In addition to the above, trademark opposition
procedures (specifically pre-registration systems) act as preventive measures, compared with the more remedial cancellation proceedings, which are mostly very expensive.
Opposition scenarios Even though
the specific procedure for
trademark opposition is determined by each country, the general opposition scenario is as follows. A trademark application is filed before the trademark office and could be published in the local IP gazette (i) right aſter the application has been filed; (ii) once the examination of formal requirements has been completed; (iii) once the examination of grounds for refusal has been issued; or (iv) aſter the trademark has been granted. Aſter this publication any third party entitled
by law can file, within a specific period of time, an opposition to the registration based on an absolute or relative ground. Te trademark office will inform the applicant, which will be able to try to overcome the opposition or negotiate with the opponent. Tis procedure may end either with a trademark registration certificate or with an official refusal of registration. Analysing thoroughly the features of the
procedure is an appealing topic itself, but the subject of this article is to explain the crucial points that should not to be sidestepped in Mexico’s upcoming system. It is useful to understand how the current
system works. Trademark applications are filed before the Mexican Institute of Industrial Property (IMPI). Te office then proceeds with the examination of formal requirements and the examination of grounds of refusal. At this stage, the IMPI unilaterally decides whether the application might infringe another registration and, if so, will issue an official action. It is important to mention that only the
applicant is notified about the action; the owner of the mark cited is not notified of this situation. At the moment, right aſter trademark applications are filed they immediately enter into
“THE ONLY COURSE OF ACTION FOR THIS OWNER IS TO APPEAR BEFORE THE IMPI AGAIN AND CHALLENGE THE VALIDITY OF THE TRADEMARK REGISTRATION THROUGH A CANCELLATION ACTION.”
compelled by law to even take into account the owner’s allegations, so the registration may be granted in the end. By that time, the only course of action for
this owner is to appear before the IMPI again and challenge the validity of
the trademark
registration through a cancellation action based on existing rights, and then the ordeal begins. Tis type of proceeding, the results of which can be challenged in two further instances, may take up to five years to be finally decided by a judicial authority. Moreover, in the past few years an unfortunate
situation has happened. Te number of cases related to ‘abduction’ or ‘hijacking’ of trademarks has increased. Tis is when for example a third party, acting in bad faith, applies to register a prestigious automobile brand in several classes that usually would not be protected by the automobile company—for example, classes 1, 2, 3, 5, 16, 19, etc. Considering that in Mexico there is no
publication of applications, it is very difficult for the trademark owner to become aware of the existence of an application filed in bad faith. Terefore, it is difficult to avoid its granting. Once the marks are granted, it would be necessary to initiate cancellation actions against each of the registrations, which obviously represents a considerable amount of money and time. Te same happens in every case where
there exists a clear and evident impediment to registration, such as obvious descriptiveness, generic nature, or a lack of distinctiveness. Under this scenario, it is undeniable that it is
possible to improve the Mexican model, so the implementation of
the trademark opposition
system should be well designed to guarantee the accomplishment of its many objectives and make the most out of it.
Time keeping Tis system (as every other) has its advantages, it has its shortcomings too, especially concerning periods of time and expenses. Te Mexican system for granting trademarks is
the IMPI’s official online database,
which is available to everyone. Let’s say that a very cautious trademark owner notices an application that might harms its existing IP rights. Te owner may appear before the IMPI and inform it of the disputed registration. Mexican law firms have tried to compensate
for this situation by preparing third parties with observation briefs that demonstrate the alleged infringement and even holding meetings with the authorities. Nonetheless, the IMPI is not
64 World Intellectual Property Review Annual 2015 World Intellectual Property Review November/December 2014
generally efficient. In cases where an application progresses smoothly and no official actions are issued during prosecution, the certificate of registration can be obtained in about six months. Terefore, it might be important to implement a trademark opposition system that does not jeopardise this efficiency. A relevant concern regarding times derives
from the fact that if they’re not established, every decision from the IMPI in the trademark opposition system would be an administrative act, and thereby it may be appealed in further instances, which translates to time and money for the parties involved.
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