The opposition proceeding permits that any interested party opposes the granting of a trademark during the established term in accordance with the law since the publication of the said grant. The different assessment of the legitimation to exercise this right according to each country, and the different nature of the interests at stake, may make us considering the active legitimization of the absolute and relative prohibitions separately.
Both in Spain and in Mexico, the active legitimization to present opposition based on absolute prohibitions of registration is broadly interpreted. Indeed, the basis of these prohibitions concerns the defense of the competitive system, the consumer protection and the maintenance of the law and order. Even though the examination of the absolute prohibitions in a large majority of the countries of the world is conducted ex officio by the administration, the filing of opposition on the basis of the same forces the administration to determine if the requested trademark falls into any of these grounds for refusal. Therefore, and regarding the contradictory nature of this sort of proceeding, the authority should inform the applicant of the content of the opposition so that the said person submits the suitable allegations before a decision is announced on the merits of the case. All in line with Article 21 of the Singapore Treaty on the Law of Trademarks.
Finally, it is to be pointed out that in certain jurisdictions, the opposition procedeeding does not consider that this kind of actions may be based on absolute prohibitions, being it reserved for relative prohibitions. By way of an example, the EU Trade Mark Regulation takes into consideration an ex officio examination regarding the absolute prohibitions on registration, and a third-party consideration procedure, which is not equivalent to an opposition proceeding where only relative prohibitions can be invoked by the holders of such rights, who as opponents become part of the registration process.
The Mexican opposition system gathers certain peculiarities, in regard to the basis on which relative prohibitions it is based upon: consumer protection, law and order or the protection of private interests. This matter gets greater interest in Mexico by allowing any third party to file an opposition based on a previous right, although it is not their ownership.
In general terms, and basing us on the different existing opposition systems such as the one included in the EU Trade Mark Regulation or in the Spanish Law No. 17/2001 on Trademarks, the opposition allows third parties to participate in the registration process of a trademark, reinforcing in this way the work of the Administration in the examination of registration prohibitions.
In Spain and in the majority of the surrounding countries, the opposition allows opponents to participate in the registration procedure as a party, and force the administration to consider the registration prohibitions used in the opposition. The legitimization for the presentation of absolute prohibitions is interpreted loosely, precisely due to the very nature of the protected interests. To the contrary, with respect to the relative prohibitions based on the protection of particular interests, active legitimation falls on the holders of the previous rights, which serve as a basis.
This leads us to the conclusion that, in these jurisdictions, a real privatization of the relative prohibitions mechanism has occurred, as a result of the loss of the ex officio examination.
As formulated in the preamble of the Spanish Law No. 17/2001 of December 7, 2001, on Trademarks, the opposition system seeks to “to bring our system into line with the majority of systems in the European sphere and, in particular, with the Community trademark system; to avoid the creation by the Administration of artificial disputes through the ex officio reporting of prior trademarks where their owner has no interest in opposing the new application and, finally, making gains in speed and efficiency.”
Prof. Dr. Fernández-Novoa (Manual de la Propiedad Industrial, Second Edition, page 519, Madrid: Marcial Pons) points out the negative and positive aspects of the disappearance of the ex officio examination of relative prohibitions. As a negative aspect, he appeals to “the disappearance of the tutelary function of consumers against the risk of confusion”. Regarding its positive aspect, he underlines that this has “eliminated an unnatural obstacle that sometimes made it difficult to register new trademarks. This obstacle appeared precisely when, despite the fact that the owner of a previous trademark did not oppose himself against the registration of a later trademark, the Industrial Property Registration Office denied the granting alleging the existence of a hypothetical risk of confusion between the later requested trademark and a previous one.”
In Mexico, the opposition proceeding articulated by the Law of Industrial Property after the recent amendments incorporated in said set of laws reinforces the ex officio examination, entrusting to “any third party” the allegation of these prohibitions.
The procedure articulated by the Mexican Law of Industrial Property maintains the substantive examination performed by the Authority, of the relative and absolute prohibitions, allowing likewise any interested party the possibility of filing an opposition to the granting of the trademark, adducing as cause for this action the existence of the aforementioned prohibitions.
Article 120 of the referred Law delimits with great amplitude the active legitimization to initiate oppositions by stipulating that these may be presented by “Any person who considers that the published application is included in any of the provided cases in articles 4o and 90 of this law.” All this in contrast to the provisions regarding the nullity action where a legitimate interest is required.
The ex officio examination maintains its traditional significance. Indeed, although Article 120 of the aforementioned Law forces the Mexican Institute of Industrial Property IMPI to carry out this examination once the term for the opposition has expired, it does not force IMPI to take into consideration this “private” phase of the procedure. It happens because the law states that the “opposition, as well as the demonstrations of the applicant, may be considered by the Institute during the substantive examination of the application.” The use of the verb “may” stands out here. Moreover, the law rejects that the opponent is considered a party or not even affected in the registration process.
In other words, the authority is forced to determine the trademark application by granting or denying it, but is it not forced to determine the opposition? It will be confirmed with the first decisions that the IMPI issues. In the same way, we will be able to experience how this dichotomy is solved and whether they will resolve it together with the granting or denial of the trademark and the arguments used in the opposition proceeding, even when they do not consider them as relevant for the substantive examination.
It is certain that the Mexican system of opposition distanced itself from the idea of privatization – which is the basis of relative prohibitions, maintaining the tutelary function of the interests of individuals as the foundation for the risk of confusion. This can be deduced from the very wording of Article 120 as it rejects the opponent as part of the trademark registration process.
In the same way, although it recognizes the right of the opponent to be notified of the decision regarding the trademark file, it extends the active legitimation to any person, even if that person is not the owner of the rights that he or she invokes, generating an additional obstacle to the registration of new trademarks and decentralizing that way the individual initiative.