MEXICO Law and Practice Contributed by: Victor Adames, Carlos Hernandez and Paola Becerril, Becerril, Coca & Becerril
A five-year term applies for cancellation actions based on other grounds, such as: • prior use (either national or abroad); • false data (eg, the declared first use is untrue or cannot be proven by the holder); or • mistake, oversight, or difference in judgment (eg, there is a pending application filed earlier or an existing valid registration, and the marks are identi - cal or confusingly similar and cover identical or overlapping goods and services). This period is counted from the date of publication of the trade mark in the Official Trade Mark Gazette. Additionally, there is no deadline to file a cancellation action if: • the trade mark was granted in violation of the IP law provisions in force at the time of its application; • a third party, such as a legal agent, user, distribu - tor, or any other individual with a prior relationship with the legitimate holder of the trade mark abroad, applied for and obtained registration of the mark (or a confusingly similar one) without the express consent of the foreign holder; or • the trade mark was obtained in bad faith. There is no compulsory timeframe after the registra - tion of a copyright to file, as all can be submitted at any time considering the timeframe for filing the nullity appeal. 5.2 Legal Grounds for Filing an Opposition or Cancellation The legal grounds for filing a trade mark opposition: • likelihood of confusion or association; • dilution of a well-known or famous trade mark; • lack of distinctiveness; • bad faith filing; • violation of prior rights; • contravention of public order or morality; • misleading nature; and • improper use of protected elements. A decision cancelling a trade mark registration can be appealed through one of the following instances:
• Review recourse: An optional remedy that must be filed before IMPI (for trade marks). It will be resolved by the hierarchical superior of the gov - ernment official who issued the decision. This recourse must be submitted within 15 working days from the date the refusal was served. • Nullity appeal: This appeal must be filed before the FCAA. It must be submitted within 30 working days from the date the refusal was served. • Amparo appeal: The decision issued by the FCAA can be challenged through an amparo appeal filed before the FCC. This remedy must be submitted within 15 working days from the date the FCAA’s decision was served. The ruling issued in this instance is final and not subject to further appeal. In Mexico there is no expungement or re-examination procedure available. If a trade mark or a copyright has been cancelled, an appeal against said decision must be filed or a new application must be filed in order for re-examination. 5.3 Ability to File an Opposition or Revocation/Cancellation Any person who may be affected by the registration of certain trade mark may file an opposition against a published application. The government fees associ - ated with an opposition are MXN4,300. According to the FLPIP, any cancellation action for trade mark registrations can be initiated either: • ex officio by IMPI; or • by any third party with sufficient legal standing, such as in cases where in an application IMPI cites an earlier registration as anticipation, and its can - cellation is necessary to proceed with the registra - tion process or in cases where a new registration was granted disregarding the provisions of the FLPIP or a prior existing application or registration. Similarly, the FCL establishes that cancellation actions for copyright registrations can be initiated: • ex officio by the INDAUTOR; or • by any third party with sufficient legal standing to do so.
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