MADRID PROTOCOL
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.
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.
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
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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.
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.
Te 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.
World Intellectual Property Review Annual 2013 105
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