Preliminary note: On August 30, 2016, the amendments to the Industrial Property Law stipulating an opposition procedure became effective. The issues stated in this post are now mainly academic. For a current explanation about the opposition system, you may check some more recent posts here and here.

The Mexican Supreme Court recently published three non-binding precedents* concerning the right of third parties to oppose a trademark application when said third parties think that the issuance of the trademark registration may somehow harm their acquired rights.

It is important to keep in mind that in Mexico, unlike other countries and regions, there is no opposition procedure (This changed; Mexico has oppositions now. Please read my update of May 1, 2016, Mexican Congress approves trademark opposition system). The Instituto Mexicano de la Propiedad Industrial or Mexican Patent and Trademark Office (MPTO) does not publish trademark applications (Update April 5, 2017. With the approval of the opposition proceeding in 2016, trademark applications are now published within a ten days term after the filing of the application). If the MPTO issues a trademark registration and a third party believes it harms its rights, it has the possibility of filing a trademark invalidation action with the MPTO to remove the trademark from the registry (Update Aprl 5, 2017. This has not changed and the right to file the invalidation action is not affected by the filing or lack of filign of the opposition).

Although trademark applications are not published (Update April 5, 2017. With the approval of the opposition proceeding in 2016, trademark applications are now published within a ten days term after the filing of the application), a trademark search in the database of the MPTO may reveal the existence of unpublished pending trademark applications. If a person thinks that the approval of a pending application may somehow negatively impact her/his interests, he/she may file a written “opposition” by filing a document stating the reasons why the application should be rejected (similar to an informative leter) (Update April 5, 2017. “Informal” oppositions are now supposed to be dismissed by the exmainers; the only oppositions that examiners may review are the ones filed within the one-month term provided for oppositions, counted from the day after the trademark application was published).

Given the lack of a statutory opposition procedure, it is up to the MPTO’s examiner to take the opponent’s objections in consideration. If the opponent’s arguments do not convince the examiner, and the MPTO issues the trademark registration, then the opposer may file the invalidation action.

There was the case of an “opponent” that successfully filed an appeal because the MPTO did not pay attention to his arguments against the approval of a pending trademark application**. Such case opened the possibility for the courts to provide the right (not stated in the statute) of opposing a trademark application and intervening in the application procedure as a party.

However, the precedents from the Mexican Supreme Court, even if they are not binding yet, have enough authority to virtually end the discussion about if a third party may have intervention as a party in the trademark application procedure with the MPTO. Among other issues, the Supreme Court decided that third parties are not entitled to oppose the issuance of a trademark application (they may still file briefs though), and that such lack of right to oppose trademark applications is not against due process, given that such “opponent” is entitled to file an invalidation action against the trademark registration when granted, if it harms an acquired right of the “opponent”.

From my point of view, the most interesting side of the precedents of the Supreme Court would be their possible impact in the current practice of the Tribunal Federal de Justicia Fiscal y Administrativa or Federal Court of Tax and Administrative Affairs (FCTAA). The appeals against the rejections of trademark applications by the MPTO due the existence of earlier applied or registered trademark applications/registrations owned by third parties (among other causes) are filed with the FCTAA.

The appeal against the rejection of a trademark application would be decided in Mexico City. The FCTAA in Mexico City is divided in eleven “Metropolitan” Salas or Chambers, of three judges each, and there is also a Highest Panel of eleven judges (Update December 2010: On January 2009 all new IP cases and some older ones have been concentated in the new Chamber specialized in IP Law of the FCTAA).

The opinion of most of the Metropolitan Panels of the FCTAA -and of the Specialized Chamber in IP cases- is that the owners of the registered/applied trademarks that were cited as anticipations in the administrative application procedure with the MPTO, and that caused the rejection of the appellant’s trademark application, have legal standing to intervene as a third interested party in the appeal against the rejection of the trademark application. Such intervention allows the third interested party even to file the final appeal (amparo) against the FCTAA’s decision if unfavorable.

I have always been against the above-described FCTAA’s practice. Under the current statute, the owner of the trademark registrations/applications cited as anticipation was not, and did not have the right to be, a party of the application procedure that ended with the rejection of the trademark application. If the FCTAA decides to invalidate the MPTO’s rejection and orders it to issue the trademark registration, such decision would not limit any of the rights of the prior trademark holder. If such trademark holder thinks that the issuance of the trademark registration harms its trademark rights, it may file a cancellation action against the trademark registration on whatever available grounds.

Now, the rulings of the Supreme Court somehow support my opinion, by confirming that third parties have no right to oppose the pending trademark applications, because the eventual approval of the application would not invalidate or limit any of their existing rights. If the issuance of the trademark harms the rights of such third parties, there is a procedure available to defend them. Following these same ideas, it is not justifiable either that the FCTAA summons the owners of the trademarks cited as anticipation as third interested parties in the appeal against the rejection of a trademark application, because the eventual invalidation of the rejection would not limit or invalidate the earlier trademark rights of said third parties; if the issuance of a trademark registration as a consequence of the FCTAA’s decision harms a third party, there is an invalidation action procedure available to cancel the registration and defend the earlier trademark rights.

* Ninth Era; Second Chamber; Weekly Judicial Journal of the Federation; XXVII, February 2008; Page 730; Ninth Era; Second Chamber; Weekly Judicial Journal of the Federation; XXVII, February 2008; Page 731; Ninth Era; Second Chamber; Weekly Judicial Journal of the Federation; XXVII, February 2008; Page 732.

** Ninth Era, Federal Courts of Appeals; Weekly Judicial Journal of the Federation; XXV, January 2007; Page 2265.