- within Intellectual Property and Antitrust/Competition Law topic(s)
IN SUMMARY
- As the opposition system evolves in Mexico, the trademark-litigation landscape is changing fast.
- While oppositions appear increasingly central, they may also narrow future avenues of defence if not carefully structured.
- The traditional path for protecting trademark rights has shifted; ignorance of these changes can leave marks insufficiently protected.
- The IP-specialised chamber of the Federal Court for Administrative Affairs (SEPI) is now empowered to declare trademark invalidity.
The lack of uniform criteria among the Mexican Institute of Industrial Property (IMPI), SEPI and the Federal Circuit Courts (FCC), together with IMPI's new formalistic standards on powers of attorney, creates serious procedural pitfalls that can lead to dismissals regardless of the merits.
IMPI's current handling and communication of opposition decisions and grants or refusals can produce contradictory outcomes unless managed with a coordinated, parallel appeal strategy.
DISCUSSION POINTS
- Evolution of the opposition system
- Precedent-setting legal cases
- The new role of SEPI in trademark invalidations
- Impact of the estoppel provision (article 259)
- Res judicata of reflected efficacy doctrine
- Lack of uniform criteria between authorities handling oppositions
- Relevant procedural hurdles
REFERENCED IN THIS ARTICLE
- Case IX-P-SS-85 (Superior Chamber of the Federal Court for Administrative Affairs): established that it is possible to challenge both the ruling in failed oppositions and the validity of the trademark registration.
- Amparonumber 232/2024 (Federal Circuit Court): ordered SEPI to declare the invalidity of the trademark registration after IMPI's failure to do so.
- Federal Law for the Protection of Industrial Property (2020)g>: introduced significant changes to the opposition system, including an estoppel provision (article 259) that prevents invalidity actions based on failed oppositions.
- Article 27 of the Federal Law for the Protection of Industrial Property: regulates the formalities for powers of attorney for oppositions and invalidity actions.
- Article 259 of the Federal Law for the Protection of Industrial Property: states that an invalidity action cannot be filed on the same grounds and evidence as those used in a failed opposition.
- Mexican Industrial Property Law (pre-2020): the previous legal framework, under which the opposition system was less structured and developed.
- Mexican Institute of Industrial Property (IMPI): the authority responsible for processing trademark applications, oppositions and issuing trademark-related decisions.
- SEPI: a specialised body within the Federal Court for Administrative Affairs responsible for reviewing IMPI's rulings.
- Federal Court for Administrative Affairs (TFJA): the court tasked with handling appeals concerning IMPI's decisions, including those arising from opposition proceedings.
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Originally published by World Trademark Review.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
