Introduction
New rule
Analysis
Comment


Introduction

Under Mexican law, there are two ways in which an affected party can appeal a Mexican Institute of Industrial Property (MIIP) decision:

  • by filing for administrative review before MIIP within 15 working days from the date on which the decision was served to the affected party; or
  • by filing an appeal before the Federal Court of Tax and Administrative Affairs (FCTAA) within 45 working days of the date on which the decision was served to the affected party.

While the affected party can select either of these options, in most cases it is advisable to file an appeal before the FCTAA as this allows more time to prepare a proper defence. In addition, as MIIP usually confirms its previous decisions, the latter option is advisable only in specific cases.

New rule

MIIP recently adopted a new rule for cases in which a rights holder does not file for administrative review before MIIP or appeal the decision before the FCTAA following the cancellation of a registered trademark. In such cases, MIIP will grant the registration of the pending trademark within 45 working days from the date on which the cancellation action was issued, despite the fact that the cancellation action will still be subject to appeal and will therefore be sub judice (ie, under judicial consideration and therefore prohibited from public discussion elsewhere).

Analysis

Under the new rule, it seems that affected parties must either opt for an administrative review – which in most cases is fruitless – or file an appeal and request suspension of the newly registered trademark within 15 working days of the date on which the decision was served, even though by law they have 45 working days to do so.

In addition, it is unclear what would happen if the affected party did not request the suspension of the newly registered trademark and the FCTAA revoked the cancellation action. In such case, MIIP would have granted the new trademark registration on the basis that there was no longer an infringement and the conflicting trademarks would coexist.

If the FCTAA revokes the cancellation of a registered trademark after a pending trademark has been granted, parties could face two possible scenarios:

  • The owner of the original trademark could file a cancellation action against the validity of the new trademark on the grounds that it was incorrectly granted as MIIP had disregarded the existence and validity of the original trademark; or
  • MIIP could exercise its ex officio rights and file a cancellation action against the validity of the new trademark on the above grounds. However, although IP law acknowledges these ex officio rights, it is highly improbable that MIIP would take this course of action.

While it is logical for MIIP to try and execute its decisions, it should arguably wait at least 45 working days to do so if:

  • the affected party has filed an appeal;
  • the affected party has expressly requested the suspension of the newly registered trademark; and
  • the FCTAA has granted proper suspension to the affected party.

Comment

As this is a new rule there is currently no precedent regarding these matters. It will be interesting to see how the courts interpret it – especially as MIIP may be overstepping its capabilities by introducing a rule that appears to conflict with IP law.

For further information on this topic please contact Rodrigo Navarro at Becerril, Coca & Becerril SC by telephone (+52 55 5263 8730) or email ([email protected]). The Becerril, Coca & Becerril website can be accessed at www.bcb.com.mx.