Federal Law for the Protection of Industrial Property – Relevant changes on trademark prosecution

October 12, 2020

As you know, a new Industrial Property Law was published in Mexico on July 1, 2020 with the purpose of updating our local legislation to commitments made by the Mexican Government during the negotiations of the USMCA, the treaty which replaces NAFTA.

This new Federal Law for the Protection of Industrial Property will come into force on November 5, 2020. The most relevant changes to the trademark area are the following:

1.-The validity of the trademark registrations will be 10 years as of the granting date. The previous law also granted registrations for trademarks for 10 years, but as of the filing date. Please note this change will only be applicable to trademarks filed on or after November 5, 2020.

2.-This new law establishes that if the declaration of use is not filed with the initial renewal petition, then the Mexican Intellectual Property Office known as IMPI will require it through an official action and grant a 2-month term to file the declaration. This change is especially relevant for the trademark registrations obtained through the Madrid Protocol, because the renewal format used in the Madrid System does not contain a declaration of use, which resulted in uncertainty about the term to file said declaration. However, by issuing a requirement, the trademark owners will now have certainty about the term to file the declaration of use.

3.-The new law provides that the association between trademarks for the purposes of assigning them can be dissolved if a letter of consent between the assignor and the assignee is submitted.

4.-The new law provides that the term to respond to an opposition will be 4 months from the date the opposition is served to the applicant.

5.-Another relevant change in connection with oppositions is that if an opposition is filed, the opposer’s prerogative to file an invalidity action (at a later stage) against the adverse trademark (once registered) on the same grounds, arguments and evidence used in the opposition, will preclude.

6.-The term to file allegations in the opposition proceeding also changes from 2 days to 5 days.

7.-If the filing date changes during the prosecution of a trademark application for any reason, then the application will be published again for opposition purposes.

Under separate and successive communications, OLIVARES will be focusing on each one of the items above, providing you with the analysis and details of these new actions and changes implemented in the Federal Law for Protection of Industrial Property.