The New Trademark Opposition System in Mexico

• Author: John M. Murphy
• Position: John M. Murphy is of counsel with Arochi & Lindner S.C. in Mexico City.
• Pages: 56-59

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

Association.

The New

Trademark

Opposition

System in

Mexico

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.

Background

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.