Provisional ex officio refusal of protection
Relative and absolute grounds for non-registrability
In accordance with the provisions of the Industrial Property Law, applicants shall be notified ex officio of requirements/prior art/legal impediment (provisional refusal), which may be based on one of the following provisions: Industrial Property Law
Article 4.- No patent, registration or authorization shall be granted, nor shall any publicity be given in the Gazette to any of the legal authorities or institutions governed by this Law, where their contents or substance are contrary to public policy, morality or proper practice, or if said contents or substance violate any legal provision.
Article 90.- The following may not be registered as trademarks:
I.- Three-dimensional animated or changing names, figures or shapes that are expressed in motion even when visible;
II.- The technical or commonly used names of products or services for which the protection of the trademark is sought, and also those words that have turned into the usual or generic designation of said products or services in everyday language or business practice;
III.- Three-dimensional shapes that are in the public domain or have come into common use, those that lack the originality that readily distinguishes them, and the usual and everyday shapes of products or those determined by their nature or industrial function;
IV.- Three-dimensional names, figures or shapes which, when their characteristics are considered as a whole, are descriptive of the products or services to which they are intended to afford trademark protection. The above shall include descriptive or indicative words which, in trade, serve to identify the kind, quality, quantity, composition, purpose, value or place of origin of the products or the time of their production;
V.- Isolated letters, digits or colors, except where they are combined with or accompanied by elements such as signs, designs or names that give them distinctive character;
VI.- The translation into other languages, the arbitrarily changed spelling or the artificial construction of words not eligible for registration;
VII.- Signs that reproduce or imitate, without authorization, the coats of arms, flags or emblems of any country, State, municipality or equivalent political divisions, and the names, abbreviations, symbols or emblems of international, governmental or non-governmental organizations, or of any other officially recognized organization, as well as the verbal designation thereof;
VIII.- Signs that reproduce or imitate official signs or seals of control and guarantee adopted by a State, without the authorization of the proper authority, or coins, banknotes, commemorative coins or any national or foreign legal tender;
IX.- Signs that reproduce or imitate the names or graphic representation of decorations, medals or other prizes awarded at officially recognized trade shows, fairs, congresses or cultural or sporting events;
X.- Proper or common geographical names and maps, and also gentilic nouns and adjectives, where they indicate the origin of the products or services and may cause confusion or error regarding such origin;
XI.- The names of towns or places known for the manufacture of certain products, to protect those products, except the names of places in private ownership, where they are special and not liable to be confused, and where the consent of the owner has been obtained;
XII.- The names, pseudonyms, signatures and portraits of persons, without the consent of the persons concerned or, if they are deceased, of their surviving spouse, blood relations in direct line and by adoption and collateral relations, both down to the fourth level of relationship, in that order;
XIII.- The titles of intellectual or artistic works and the titles of publications and periodicals distributed, the names of fictional or symbolic characters or real personages portrayed, stage names and the names of performing groups, except where the owner of the corresponding rights has expressly authorized such registration;
XIV.- Three-dimensional names, figures or shapes liable to deceive or mislead the public, understood as being those that constitute false indications as to the nature, components or qualities of the products or services that they claim to protect;
XV. Three-dimensional names, figures or shapes identical or similar to a trademark that the Institute considers or has declared well known in Mexico, to be applied to any product or service.
This impediment shall apply in any case where the use of the trademark for which registration is sought:
(a) is liable to cause confusion or a risk of association with the owner of the well-known trademark; or
(b) is liable to constitute an unauthorized appropriation by the owner of the well-known trademark; or
(c) is liable to discredit the well-known trademark; or
(d) is liable to dilute the distinctive character of the well-known trademark.
This impediment shall not be applicable where the applicant for registration is the owner of the well-known trademark; and
XVbis. Three-dimensional names, figures or shapes identical or confusingly similar to a trademark that the Institute considers or has declared famous under the terms of Chapter II bis to be applied to any product or service. This impediment shall not be applicable where the applicant for registration is the owner of the famous trademark;
XVI.- A trademark that is identical or confusingly similar to another in respect of which an application has been filed earlier and is awaiting registration or to another that is already registered and in force, and is applied to the same or similar products or services. However, a trademark identical to one previously registered may be registered if the application is made by the same owner for use in connection with similar products or services; and
XVII.-A trademark that is identical or confusingly similar to a commercial name applied to a firm or industrial, commercial or service establishment of which the principal business is the manufacture or sale of the products or the provision of the services that the trademark is intended to protect, provided that the commercial name has been used prior to the filing date of the application for registration of the trademark or the date of the declared use thereof; the foregoing shall not be applicable where the application for a trademark is filed by the owner of the commercial name, if no other identical commercial name exists that has been published.
Article 97.- The rules for the use of a collective trademark shall be filed with the application for said trademark.
Article 115.- The copies of the trademark filed with the application shall contain no words or captions that might deceive or mislead the public. When an application is filed for the protection of a trademark without any verbal element or a three-dimensional trademark, the copies of the application shall not contain any words that constitute or might constitute a trademark, except where an express reservation to that effect is included.
Article 116.- Where the trademark is applied for in the name of two or more persons, the rules agreed upon between the applicants regarding the use and licensing of the trademark and the transfer of rights in it shall be filed together with the application.
Purpose of the opposition procedure
The purpose of the opposition procedure is to provide IMPI with more evidence that enables it to conduct the substantive examination and decide whether it should grant protection to marks which are the subject of an international registration. The opposition procedure will be conducted in parallel with the rest of the examination performed by IMPI. The final decision of IMPI will essentially be based on the ex officio examination conducted by this Office.
Accordingly, IMPI reserves the right to grant or withhold such protection ex officio. After performing the substantive examination, IMPI will transmit statements of grant of protection or notifications of provisional refusal, as appropriate.
Opposition to international registration
Under the new procedure, any person may oppose to the granting of protection to a mark that is the subject of an international registration based on any of the grounds set out in the Industrial Property Law of Mexico to refuse the registration of a mark in this country. The person raising the opposition is not considered a third party in procedures relating to that mark.
As from August 30, 2016, IMPI will publish online, in its Industrial Property Gazette, the international registrations and subsequent designations notified to this Office, under their respective national filing numbers. This information will be published within a maximum period of 10 working days, following the date on which IMPI receives such notification.
The opposition must be filed within a non-extendable period of one month, starting from the first working day after the date of the publication indicated in the preceding paragraph. The opposition must be filed directly with IMPI, drafted in Spanish and is subject to payment of a fee. The opposing party may attach to the opposition filing any documents deemed necessary.
Response to an opposition
IMPI will publish online, in its Industrial Property Gazette, a list of marks against which opposition has been filed. This list will be published within a maximum period of 10 working days, starting from the next day after expiry of the deadline for filing an opposition. Documents relating to the opposition will be available online at the IMPI records consultation service.
If they so desire, holders of international registrations against which an opposition has been filed may respond to the opposition within a non-extendable period of one month, starting from the next working day after the date of publication of the list referred to in the preceding paragraph. The response to the opposition is not a response to a provisional refusal.
The response may be filed by the holder of the international registration or his local representative and should bear an address in Mexico for the purpose of receiving notifications. The response must be filed directly with IMPI, drafted in Spanish and is exempt from payment of a fee. The holder may attach to the response any documents deemed necessary.
Failure by the holder of an international registration to respond to an opposition is not construed by IMPI as tacit acceptance of the claims made by the opposing party.
The opposition does not suspend the IMPI procedure for determining whether it should grant protection or prolong the time limit for reaching that decision.
Upon expiry of the opposition period and of the response period, where appropriate, IMPI will conduct the substantive examination, during which it may consider the claims made by the opposing party and the holder during the opposition proceedings, as well as any other material deemed relevant to the examination.
Upon completion of the substantive examination, IMPI will send a statement of grant of protection or an ex officio notification of provisional refusal, as appropriate, to the International Bureau of WIPO, and also communicate its decision to the opposing party. The International Bureau of WIPO will transmit a copy of the notification or statement to the holder of the international registration.
If they so desire, holders of international registrations or opposing parties may rely on the remedies provided for in the Mexican legal framework to appeal against IMPI decisions.
The Industrial Property Law of Mexico is available in Spanish at the following link: http://www.gob.mx/cms/uploads/attachment/file/130285/Ley_de_la_Propiedad_Industrial.pdf
The Industrial Property Gazette of IMPI is available in Spanish at the following link: http://siga.impi.gob.mx/content/common/principal.jsf
The Records Consultation Service of IMPI can be accessed in Spanish through the following link: http://marcanet.impi.gob.mx/marcanet/controler/home
General information on the opposition procedure in Mexico can be accessed in Spanish through the following link:
For more detailed information on the opposition procedure in Mexico, holders may contact IMPI directly.
|Time Limit for Responding to Provisional Refusal
Two months beginning from the date of ex officio notification of requirements/prior art/legal impediment (provisional refusal),
Article 122 of the Industrial Property Law. Without a response from the holder, the Office abandons the registration procedure. The time limit may be extended by a period of two months, provided the corresponding fees are paid, in accordance with Article 122BIS of the Industrial Property Law.Article 122 BIS.- The person concerned shall be allowed an additional period of two months within which to comply with the requirements referred to in the previous Article, without having to request it, subject to proof of payment of the fee applicable in the month of compliance.
The additional period shall run from the day following that of the expiry of the two-month period provided for in Article 122 above.
The application shall be considered abandoned if the applicant fails to comply with the requirements specified within the initial period or the additional period referred to in this Article, or fails to provide proof of payment of the relevant fees.
In other words, the applicant may have a total period of four months beginning from the ex officio notification of requirements/prior art/legal impediment (provisional refusal), to respond thereto, and where this is not done the trademark registration procedure with IMPI shall be considered abandoned.
Article 31 of the Agreement providing details of the fees for services provided by the Mexican Institute of Industrial Property shall apply together with its respective heading: for the fulfillment of a requirement of the Institute within the additional two-month period provided for in Article 122bis of the Law; for each of the additional months.