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REFRESH ON THE IP PRACTICE IN MEXICO

15 de mayo 2019Por: Emilio Albarran - BC&B.

Emilio Albarran explores the new practice regarding the notification of actions of Trademarks in Mexico.


The Mexican Industrial Property (IP) Law was recently amended on past May 18, 2018 and entered into force as from August 10, 2018. 

Derived from these recent amendments and based on the established by Articles 6th, 8th, 127th and 164th, the Mexican Trademark Office has implemented the publication of an electronic the Official Gazette for notifying different communications including requirements, objections and anticipations, as well as the certificates of registration.

The first Gazette was issued on March 19, 2019 and has been published on a daily basis from that date until today.

As result, there are some benefits and challenges within the Mexican IP practice to be aware of.

BENEFITS

The first and most important benefit of the publication of official actions and the certificates of registration through the Official Gazette is the internal time and efforts saving derived from the automation of the notification process which will avoid the delay in the physical delivering of files and office actions.

On the other hand, the electronic notification of official actions and certificates of registration through the Official Gazette will also make easier the entire notification process for individuals and companies from local provinces who have filed their applications before the regional offices and will avoid the physical shipment of documents through the traditional channels which may take from fifteen days in a normal case up to months for those cases in which the authorized person is not found at the registered address.

This automated process within the Mexican Trademark Office is faster and will allow the quick publication of requirements, objections and anticipations, as well as the certificates of registration to the interested parties.

Besides, the publication of official communications through the Official Gazette will assure the notification of those communications and to start with the involved deadlines either for those applicants who are attending the publications and will response or those applicants that are filing protection marks to delay other procedures.

Mainly, these publications will allow the Mexican Authorities to clean the formal registry and abandon those applications due to the lack of response or to prevent the current problem in the delivering of official actions through the Mexican Postal Service.

Specifically, in the previous notification system the Mexican trademark office could hold the notification of an official communication in case of not finding an authorized person within the registered address in order to proceed with a second or even a third try through the same via.

Lastly, the process automation and the publication of official communications within the Official Gazette will, in conclusion, allow the Authorities and applicants to obtain quick response to trademark petitions.

CHALLENGES

The Mexican Trademark Office manages the IP matters in the entire country. It uses the regional offices to provide the users with the necessary information and assistance to complete the filing process. Unfortunately, many individuals in Mexico have no access to technology and it is not easy for them to keep a close watch on the publication of the Official Gazette to follow up their cases.

For those International Registrations granted without intermediate official communications and without registered legal representatives in Mexico, the Mexican Patent Office sometimes provides the information to the WIPO even before the National notification starts.

Otherwise, derived from the publication of official communications (in particular national registrations linked with International Registrations) through the Official Gazette, the times will be inverted creating some uncertainty regarding the defense actions in the name of foreign applicants precisely because they are not going to be timely served with the official communication as they are not yet represented in Mexico.

Regarding the publication of pleadings within the opposition procedure through the Official Gazette, the Mexican Authorities will grant the parties a two days period to file arguments. Therefore, for cases filed through the Madrid Protocol it will be very difficult to serve the owner of the application with this deadline without delaying the trademark procedure.

CONCLUSION

To include the official communications and certificates of registration within the Mexican Official Gazette is a big success of the automation of the IP procedures in Mexico since it will permit to achieve a healthier IP system in our country.

The Mexican Authorities are capable of surpassing the current challenges with sights to improve our IP practice. Therefore, despite there are many challenges to face ahead, this is one solid step to take us in the right direction.

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