MEXICO Law and Practice Contributed by: Victor Adames, Carlos Hernandez and Paola Becerril, Becerril, Coca & Becerril
from a certain application runs the risk of constituting a brand-new application. 4.9 Incorrect Information in an Application Considering that trade mark registrations in Mexico constitute exclusive rights for the owner, and that the FLPIP states that a trade mark must be used as it was registered, having an incorrectly granted registration may lead to problems around that registration’s use, if it is not the trade mark to be used, if it does not cover the exact goods/services that it distinguishes in commerce, or if the correct titleholder may not have a certain exclusive right for the use of such trade mark if its name were erroneously provided. The incorrect information may be contested by third parties that may detect that the mark used is not the one that obtained its registration, or that its owner is not the person/entity entitled to use it. Those prob - lems normally arise through litigation. It is possible to correct some information such as the name of the applicant if a clerical error or typo was made, the number of the class of interest covered by the trade mark, the registrant’s domicile, and/or pri - ority. 4.10 Refusal of Registration Article 173 of the FLPIP states a full catalogue of 21 provisions for the refusal of registration of trade marks on absolute grounds. These include: • technical or common names; • public domain three-dimensional forms; • public domain holograms or those that are not distinctive; • descriptive signs; • isolated letters, digits and names; • translation, transliteration or artificial construction of unregistrable words; • signs consisting of imitations of government emblems or flags; • signs identical or similar to denominations of origin and/or geographical indications; • confusingly similar signs; • identical and/or confusingly similar signs to well- known or famous trade marks; and • bad faith signs.
It is important to mention that the official action issued by the authority may be responded to by the applicant, which can seek to overcome the objection. Therefore, the official action of the refusal of the registration is not conclusive. As previously mentioned, the official action whereby IMPI provisionally refuses the registration of a trade mark based on any of the provisions set out in Article 173 of the FLPIP may be responded to through argu - ments to try to overcome the obstacle. However, if the same is not successful, the denial of registration of a trade mark may be appealed before IMPI or the FCAA. 4.11 The Madrid System Mexico approved its adhesion to the Madrid Protocol on 25 April 2012 and the same came into force on 19 February 2013. The filing of a trade mark application in Mexico or a granted registration are the minimum requirements for using the International Trade mark Registration Pro - cedure. On the other hand, there are mandatory requirements for the filing of a declaration of use of international registrations in full force in Mexico on the third year of its registration or after the communication made by WIPO to the IMPI of a renewal petition. 5. Trade Mark Procedure for Inter Partes Proceedings 5.1 Timeframes for Filing an Opposition or Cancellation Once the trade mark application is published for oppo - sition purposes in the Official Trade Mark Gazette, the opponent will have a one-month term to file an oppo - sition against its registration. No requests for extensions of opposition are allowed. If the interested party wishes to file a cancellation action based on non-use, they must wait until the trade mark registration in question reaches its third anniversary of validity.
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