The Madrid Protocol: what are the benefits to Mexico?

After more than a decade of debate, on April 25, 2012, the Mexican Senate approved the Madrid Protocol concerning the International Registration of Trademarks (the Protocol), a treaty that facilitates the filing, registration and maintenance of trademarks in multiple jurisdictions around the world.

The Madrid Protocol is an international mechanism that allows trademark owners in a member state to apply for trademark protection in their country of origin and in any and all other member states by filing one single application.

The resulting international registration is a single registration with one registration number that covers numerous countries and is valid for 10 years with the possibility of renewal. As long as the international registration is maintained, the owner can expand the geographic scope of protection at any time by filing a request for subsequent designation in any other additional member state.

The overall benefit of Mexico’s adherence to the Protocol is that it can reward trademark owners with extensive trademark protection and notable time and cost savings. This international filing system allows for one single application and one filing fee; one language, hence, no translation of documents required; one single registration which involves only one renewal application with one renewal fee; one single form to record transfer of ownership or changes in owners’ names and addresses.

The above clearly constitutes more efficient, expeditious and cost-effective filing and post-registration procedures. In addition, it is easier to extend protection to foreign countries.

Despite the above benefits, many Mexican trademark practitioners regard the approval of the Protocol with dismay.

For many years, they have claimed that the Protocol is not in the best interests of Mexican businesses and that accession entails a series of amendments to the Mexican Industrial Property Law and its Regulations, which Mexico is not ready to implement.

Among the most relevant amendments are the adoption of multiple-class trademark applications and the implementation of an opposition proceeding into the Mexican trademark system. Implementation of the Madrid Protocol in Mexico necessitates the adjustment of Mexican legislation and procedures to harmonise the way national trademark registrations interact with the international registrations under the Protocol.

"The protocol constitutes an important new alternative filing tool and Mexico will benefit from it by assisting international trademark owners to bring their products and services to the country."

Mexico’s decision demonstrates its readiness to embrace change, and these adjustments have the potential to improve and strengthen Mexico’s trademark system.

For instance, implementing an opposition procedure would constitute an important step forward in adding a certain degree of democratisation to the trademark system by allowing the interaction of applicants and opponents.

This will also improve settlement prospects. National traders and companies, especially those with limited budgets, will benefit from simplified and standardised procedures. Currently, there are more international trademarks registered in Mexico than domestic companies internationalising their trademarks. Many Mexican businesses find it extremely expensive to expand elsewhere in the world given the costs of protecting their trademarks within numerous different jurisdictions.

The Protocol will greatly benefit Mexican traders and companies, facilitating the development of strategies to market their products and services abroad in order to gain access to foreign markets, by simplifying and reducing the costs of international trademark protection.

By the same token, foreign traders and companies will benefit from a mechanism that facilitates protection and maintenance of their trademarks in Mexico. This will attract foreign investment and the introduction of new branded products and services into the country.

For instance, applicants who seek trademark protection in Mexico tend to run into problems with classification criteria currently applied by the Mexican Patent and Trademark Office (IMPI) in which examiners are afforded a wide degree of discretion and usually require applicants to amend specifications of goods or services to match the IMPI’s own version of the Nice Classification.

However, under the Protocol (once implemented in Mexico), an international applicant requesting a specification of goods or services that has been admitted to a certain class by the international bureau in association with the office of origin will be admitted in the first, formal examination by the IMPI.

As regards the posterior substantive examination, international applications will be examined by the IMPI using the same criteria normally employed for a national application. However, the Protocol imposes time restrictions to expedite the examination process and requires member states to justify the reasons for refusing an application.

As a result, the IMPI will have to provide timely responses within specific time frames and to adopt coherent and justifiable criteria when assessing grounds for refusal. This will reduce the numerous challenges for registering trademarks in Mexico owing to the overly-strict criteria currently applied by the IMPI in examining and granting trademark applications.

It is important to bear in mind that although Mexico has decided to adopt the international filing system, the traditional national system will not disappear.

Before deciding which route to take to registration, trademark owners will have to consider the vulnerability of a ‘central attack’; the likelihood of ownership changes (as trademarks registered under the Protocol can be assigned only to citizens of other member states); and the likelihood of modifying the trademark in the future (alterations are not allowed under the Protocol).

A cost/benefit assessment will have to be made to determine whether applying via the international filing system is in the owner’s interest. In any event, the Protocol constitutes an important new alternative filing tool and Mexico will benefit from it by assisting international trademark owners to bring their products and services to the country and helping Mexican trademark owners who are interested in a simplified and cost-efficient way to register their trademarks abroad.

Mexico’s accession to the Protocol will also benefit applicants applying via the traditional route given that Mexican legislation and procedures will need to be harmonised to ensure the same treatment is given to national and international applications, resulting in shortened time frames and modified assessment of registrability. Due to its recent ratification, it has not yet been defined when the Protocol will enter into force in Mexico.

The next step will be for Mexico to deposit its instrument of accession with the World Intellectual Property Organization (WIPO). However, Mexico has joined the international filing system and certainly its implementation will constitute significant changes and improvements to Mexican trademark practice.