MEXICO Law and Practice Contributed by: Victor Adames, Carlos Hernandez and Paola Becerril, Becerril, Coca & Becerril
5.4 Opposition or Revocation/Cancellation Procedure The opposition procedure in Mexico begins with the filing of the corresponding writ, which must be filed within one month following the publication of the application. IMPI will study the arguments raised in the opposition and, following the termination of the formal examination, will issue an office action expressing any possible refusals of registration that could be in terms of the opposition filed and will inform the applicant of the same in order for the latter to respond to such offi - cial action and the opposition. The opposition will be resolved through motion practice and after the oppo - sition is responded to by the applicant, IMPI will open an allegations stage so that applicant and opponent may raise their final arguments. The revocation/cancellation actions regarding trade mark registrations can only be brought before IMPI; however, later appeals will be resolved by IMPI or both the FCAA and the FCC. On the other hand, the revocation/cancellation actions regarding copyright registrations can only be brought before the FCAA; however, the later appeal will be resolved by the FCC. Partial cancellations are available for trade mark reg - istrations. IMPI can eliminate products or services for which the trade mark holder failed to prove use or where those products and services overlap with those covered by a prior registered trade mark or by a trade mark that claims a prior use and was filed earlier. However, according to recent criteria issued by IMPI, partial cancellations are only applicable to trade marks filed on or after 5 November 2020. This is the date when the FLPIP entered into force, establishing regulations for such actions. Additionally, the interested party must explicitly request a partial cancellation. If this is not indicated, the procedure will continue as if the cancellation action had been requested for the entire registration. For copyright registrations, there are no partial can - cellations.
5.5 Legal Remedies Against the Decision of the Trade Mark Office Please refer to 3.9 Refusal of Registration and 5.2 Legal Grounds for Filing an Opposition or Cancella- tion for discussion of the appeal process against any decision issued by IMPI. 5.6 Amendment in Revocation/Cancellation Proceedings It is possible to amend a trade mark registration dur - ing a revocation/cancellation proceeding in order to resolve the dispute and reach an agreement beneficial to both parties. In practice, it is common to initiate settlement talks during revocation/cancellation actions. One common approach is to limit the scope of goods or services covered by the trade mark registration. This allows the plaintiff, whose goal is to invalidate the trade mark to facilitate its own registration, to withdraw the action, enabling both trade marks to coexist without covering related or identical products or services. 5.7 Combining Revocation/Cancellation and Infringement In some cases, if both revocation and cancellation affect the same trade mark registration, IMPI may resolve them simultaneously in a single decision. However, if there is an infringement action and the defendant files a cancellation action as a counter - claim, IMPI will first resolve the invalidation action, followed by the infringement case. The outcome of the invalidation action could significantly impact the result of the infringement case. 5.8 Measures to Address Fraud There are no special procedures designed to revoke or cancel trade marks or copyrights filed fraudulently. However, there is a cancellation action based on bad faith, which can be used in cases where fraudulent intent is suspected. This action, though, follows the standard cancellation procedure and is not a special or separate process. The only criminal offences related to trade marks con - cern counterfeiting. Therefore, if an application is filed
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