The Madrid system: Mexico in numbers
The accession instrument was deposited before the World Intellectual Property Organization (WIPO) on November 19, 2012 and it entered into force in February 19, 2013. At the time of writing, seven months have passed since the protocol entered into force in Mexico, and expectations have not been fulfilled.
At the time of the signing of the Madrid Protocol there were several limitations and big challenges for the Mexican Institute of Industrial Property (IMPI), specifically:
• Timing: keeping the timeframes for a straightforward application, while receiving international applications; and
• The opposition system: there has never been an opposition system in Mexico as examiners are given the exclusive faculty to conduct an official search and determine whether the proposed trademark is confusingly similar to a registered or previously filed one, without informing the owner of the right or previously filed application.
It is too soon to make a judgement on whether the Madrid Protocol has been an advantage for trademark owners, as many people are still unfamiliar with it.
Seven months on, the IMPI has been able to maintain the timing with respect to straightforward applications, but it is too soon to tell whether it will be able to do so for international applications.
As for the opposition system, the IMPI has been working with the Mexican Association for the Protection of IP (AMPPI) to establish an opposition system that will allow trademark owners to do exactly that: the system must not delay the prosecution proceeding, but speed things up, and give the opportunity to those whose rights could be affected to speak for themselves.
Unfortunately, as of today, an opposition system has not been enabled, and discussions on how to implement the system are continuing.
The WIPO compared Mexico with Turkey due to their similar GDPs and hence estimated that during the first year following its accession, 500 international applications would be filed in Mexico as a country of origin and that it would be designated on about 10,000 occasions.
Between February 19, 2013 and September 2013, there were 34 international applications filed in Mexico as a country of origin, and Mexico has been designated 3,770 times.
The above numbers do not meet the expectations or the numbers that WIPO had calculated for Mexico. But it is too soon to make a judgement on whether the Madrid Protocol has been an advantage for trademark owners, as many people are still unfamiliar with it, do not know the advantages provided by the system, or simply are reluctant to use it.
Most of the small- and medium-sized companies in Mexico are not necessarily able to export their products to other countries beyond the US and Central and South America, and therefore are not necessarily interested in filing applications through the Madrid system.
There is still a long way to go in Mexico with respect to the Madrid Protocol, mainly from the IMPI, as to whether it will be capable of maintaining its timings with the same quality of service. It is possible that designations will increase in the upcoming months, but the applications filed using Mexico as office of origin will remain low.
In conclusion, although the numbers and statistics do not show what was expected or what it was thought Mexico could produce in terms of international applications filed, we believe it will take some time until the success of the Madrid system can be measured. To date, Madrid is just a new alternative to protect trademarks internationally, but it has been used by only a few Mexican companies, among them brands for traditional alcoholic beverages such as tequila or mezcal, production and consumption of which are increasing in foreign countries.
Victor Adames is the manager of trademarks at Becerril, Coca & Becerril, SC. He can be contacted at: vadames@bcb.com.mx
