Dilemma – Mexico Opposition actions vs. trademark applications filed under the Madrid Protocol

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Francisco Capetillo Traeger

Back in 2012, Mexico adopted the Madrid Protocol relating to the Madrid Agreement concerning the International Registration of Marks.  

The opposition system has been in force since August 30th, 2016, so the trademark applications filed are published in an Official Trademark Gazette and any person or company that deems that the published trademark application is identical or similar to a previously applied for or registered mark may oppose its registration within a term of one month counted as from the date of the respective publication. The applicant will then have a term of one month to submit its arguments against the opposition. The recent amendments to the IP Law have established a very short term of two working days to file allegations. The opposition and arguments from the applicant may be considered by the IMPI in a discretionary manner in order to grant or object to the trademark application.

The great dilemma or problem exists when the trademark applications have been filed according to the Madrid Protocol. While article 120 bis of the Mexican IP Law establishes that the IMPI notifies the applicant through the Official Trademark Gazette about the oppositions received, sometimes the owners of the trademark applications based on the International Registration might not be aware of such publications because they are in another country and/or because they do not have access to the Gazette’s publications. 

Meanwhile, the IMPI has allegedly been serving via WIPO the so-called “provisional refusal based on opposition”, (in Spanish “denegación provisional basada en una oposición”), but the due dates are calculated as from the date the publications are made in the Official Trademark Gazette in accordance to what is established in article 120 bis of the Mexican IP Law. Furthermore, the “provisional refusals based on opposition” are not official objections per-se and are completely unrelated with the result of the novelty examination, therefore said communications could cause a problem of interpretation under the Mexican Law that could end in a litigation before IMPI and the Federal Administrative Courts.

Since this does not happen a hundred percent of the times, we recommend to our clients that they inform us when they file trademark applications through the Madrid Protocol in order to monitor the corresponding Mexican trademark applications and detect any possible oppositions, objections and/or refusals from IMPI.