The New Trademark Opposition System in Mexico

AuthorJohn M. Murphy
PositionJohn M. Murphy is of counsel with Arochi & Lindner S.C. in Mexico City.
Published in Landslide® magazine, Volume 10, Number 1 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2017 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar
The New
System in
By JohnM. Murphy
JohnM. Murphy is of counsel with Arochi & Lindner
S.C. in Mexico City.
Through a series of amendments to the Indus-
trial Property Law published June1, 2016,
Mexico created a formal trademark opposition
system. While the new system is far from per-
fect, it is an important step forward.
Although trademarks have been registrable in Mexico since
1885,1 there was never a formal trademark opposition system.
Applications that survived ex parte examination proceeded
directly to registration.
The virtue of the system was that it was simple and rapid.
The Mexican Institute of Industrial Property (IMPI) generally
granted or refused applications within six months of ling.
The disadvantage was that ex parte examination had inherent
limitations, as discussed below. Moreover, the owner of a Mexican
trademark registration had (and continues to have) the exclusive
right to use the mark for the goods or services identied in the reg-
istration, and could not be sued for trademark infringement, until
and unless the registration was canceled or declared invalid. This
often gave the owner of a wrongly granted trademark registration
an unfair and unwarranted advantage against others in the market.
Consider the following hypothetical: Compagnie, a French
company, has long used the mark CHAT NOIR for cologne.
These products have been sold in Mexico through a local dis-
tributor, Equis. However, Compagnie terminates Equis over a
payment dispute and signs an agreement with a new distributor.
Compagnie has never registered the mark CHAT NOIR in
Mexico. After being terminated, Equis registers the mark CHAT
NOIR in its own name and begins selling a cheaper fragrance
under the mark. Compagnie does not learn of the application until
after it has matured to registration. When Compagnie resumes
sales of genuine CHAT NOIR cologne in Mexico, Equis sues
Compagnie and its new distributor for trademark infringement.
Under Mexican law, Compagnie may counterclaim for
invalidation of Equis’s registration, based on Compagnie’s
prior use of the mark CHAT NOIR in both France and Mex-
ico, and Equis’s bad faith in registering the mark. Once IMPI
declares Equis’s registration to be invalid, Compagnie can
register the mark CHAT NOIR in its own name, and sue
Equis for infringement. However, this is a lengthy process
with an uncertain outcome.2 Rather than face this prospect,
Compagnie pays Equis a large sum of money to assign the
registration, dismiss the infringement action, and cease its
sales of counterfeit cologne.

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