MADRID PROTOCOL
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. Tis 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. Te 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.
Karla Crespi is an associate at Creel, García- Cuéllar, Aiza y Enríquez, SC. She can be contacted at:
karla.crespi@
creelmx.com
Karla Crespi advises clients on IP rights in Mexico, including their protection, licensing and transfer. She advises on the clearance, filing and prosecution of distinctive signs (trademarks, slogans, trade names) and with copyright registration and protection. Crespi assists clients with IP aspects of corporate transactions and IP transactional matters including due diligence and drafting and negotiation of assignment, licence and franchise agreements.
www.worldipreview.com
World Intellectual Property Review September/October 2012
53
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