In the balance: is Madrid good for Mexico?

Like many countries, Mexico adopted the Madrid Protocol rather than the Madrid Agreement. Th e reason is very simple: while the Madrid Agreement establishes only French as offi cial language, the Madrid Protocol opens the possibility of using three languages, including Spanish. Additionally, the time frames for prosecution under the Madrid Protocol are far more flexible.

Finally, the consequences of a central attack, which constitutes the main concern of users, are completely diff erent. In both the protocol and agreement, central attack is a risk that lasts fi ve years. Under the protocol is possible to convert international registrations into national registrations, while under the agreement this is not possible.

The Madrid Protocol certainly provides advantages to users, such as a single payment for renewal, a single recordal for an assignment, changes of domicile, etc. However, is using the protocol right for everybody?

Major concerns have arisen since Mexico became a member of the Madrid Protocol. For instance, users designating Mexico cannot claim a date of prior use in the application.

Under Mexican law, the applicant can claim a date of prior use under oath. Consequently, there is no need to support this date with evidence.

In Mexico the exclusive right to use a mark derives from its registration and not its use as in common law countries. However, use without registration provides certain rights, including the right to declare a date of fi rst use in the application, which plays an important role.

The date declared has an important impact against third parties. A person or company who claims to have a prior use and is seeking a cancellation action on this basis, must prove that his prior use precedes the date of fi rst use declared in the application.

On the other hand, if prior use is not claimed, a third party only has to prove prior use to the date in which the application was fi led.

But claiming prior use is more than merely declaring a date. In fact, a common strategy to cancel a registration in which prior use was claimed is to argue that the date is false and as a consequence the registration should be nullified.

In view of this, it is always important to have the documents supporting the date of prior use claimed. Under Mexican law, invoices are among the best type of evidence, provided they contain certain information, such as a date, mark, and owner. On the other hand, it is important to consider that this use has to be conducted by the applicant and not related companies.

It may be considered that by using the Madrid Protocol, counsel in the designated country has limited participation. However, in our opinion, before designating any country the applicant has to discuss with local counsel whether filing the application using the Madrid system is a good alternative.

In Mexico a trade or service application matures into registration in less than six months, provided there are no objections.

On the other hand, the time frame under the Madrid Protocol is much longer. Once Mexico is designated, the Mexican Institute of Industrial Property (IMPI) has 18 months to issue a decision, which does not necessarily mean it will be final and conclusive.

Overleaf is a chart that contains an overview of the proceeding that follows a registration in which Mexico has been designated.

Considering the timings of prosecution, using the Madrid Protocol is definitely not a good decision when the product or service bearing the mark is already in the Mexican market, since the applicant will face a risk of infringement for a longer time. If the product or service is about to be in commerce in Mexico, it is a far better decision to use local counsel and file a national application.

Local counsel should be considered before filing the designation, since for instance there are countries in which including the class heading is allowed, and other countries where specific goods in which the mark is used should be included.

Considering the timings of prosecution, using the Madrid Protocol is definitely not a good decision when the product or service bearing the mark is already in the Mexican market

In Mexico, trade and service mark applications are subject to two exams, the formal exam and novelty exam, which are conducted by different examiners and not simultaneously. Consequently, office actions may be issued during both exams.

A formal exam will be conducted in Mexico even if WIPO has already done one. Consequently, it is very important to use local counsel in order to avoid office actions during the first exam addressing issues such as the description of goods and services that would delay the prosecution of the application and make it even more costly.

Due to global expansion, companies are using tools that help them to maximise financial resources and make it easier to handle a global trademark portfolio. Using the Madrid System may in some cases meet these requirements.

However, it has been proved that saving money is not always the first aspect to consider. For instance, the importance of a certain local market has to be considered; in some cases filing national applications may be justified.

In Mexico’s case, the use of broad descriptions or even claiming the class heading is allowed; this action would prevent the registration of a similar mark by a third party for a related product. For example, even if a mark is used for a specific ophthalmic preparation, by using a broad description a third party intending to use a similar mark for another type of drug would be thwarted.

The possibility of using a broad description prevents the dilution of the mark by coexistence admitted by the IMPI when similar marks are registered in the same class.

In addition to the above, in Mexico it is possible to renew a registration even if the mark is used in a single product, and keep all the goods covered by the registration. The user can even file a registration in related classes and renew, for example, a registration in Class 32 based on the use of the same mark in Class 33.

Another aspect where local counsel plays an important role is in the inherent registrability of the mark. There are famous marks that started being non-registrable and due to acquired distinctiveness they have now the benefi ts derived from a registration.

In Mexico the standard criterion for registration is inherent distinctiveness, which means that the doctrine of secondary meaning is not admitted. Consequently, an application filed through the protocol will be considered as a national application, and even when an international registration has been granted under Mexican practice, it will be refused.

In view of the above, using local counsel before designating Mexico is very important, since it may save money and time by providing a general scenario of what to expect of the mark for which registration is sought.

The Madrid Protocol has arrived in Mexico before the law has been amended to deal with aspects that now remain unclear, such as duplicity in registrations. Owning two registrations for the same mark covering the same goods or services, under the current dispositions of the Industrial Property Law is not admitted.

Is not clear if the law will be amended to address the duplicity aspect. However, this duplicity may not be positive, since litigation on any grounds or a cancellation action on grounds of non-use will become more complicated, because two or more registrations would have to be cancelled in different proceedings, which will increase the costs.

Global commerce is the motor for changes in IP practice; new tools are being created to simplify processes and maximise fi nancial resources.

Each country has its own legal framework and consequently diff erences in its laws and practice. These diff erences have to be considered and kept in mind by a company in order to approach a local counsel of the country designated to advise when taking the decision whether a new tool such as the Madrid Protocol is a good alternative for protection.

Consuelo Gonzalez is a senior partner at Uhthoff Gomez Vega & Uhthoff SC. She can be contacted at: conniegonzalez@uhthoff .com.mx Gerardo Parra is an associate at Uhthoff Gomez Vega & Uhthoff SC. He can be contacted at gparra@uhthoff .com.mx.