MEXICO Law and Practice Contributed by: Victor Adames, Carlos Hernandez, Paola Becerril and Eduardo Saldaña, BC&B Law & Business
The filing of a trade mark application in Mex - ico or a granted registration are the minimum requirements for using the International Trade mark Registration Procedure. On the other hand, there are mandatory require - ments 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 opposition purposes in the Official Trade Mark Gazette, the opponent will have a one-month term to file an opposition against its registration. No requests for extensions of opposition are allowed. If the interested party wishes to file a cancella - tion action based on non-use, they must wait until the trade mark registration in question reaches its third anniversary of validity. 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 identical or confusingly similar and cover identical or overlapping goods and services).
This period is counted from the date of publica - tion of the trade mark in the Official Trade Mark Gazette. Additionally, there is no deadline to file a cancel - lation 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, distributor, 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 simi - lar 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 reg - istration of a copyright to file, as all can be sub - mitted 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 opposi - tion: • 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:
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