MADRID PROTOCOL
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. T e user can even fi le 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. T ere 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 fi led 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.
T e 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 diff erent 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. T ese 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
106 World Intellectual Property Review Annual 2013
“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.”
Consuelo Gonzalez is a senior partner of Uhthoff Gomez Vega & Uhthoff , SC. She handles the trademark portfolio of Mexican and international companies at both domestic and international level. She has been a specialised IP lawyer for more than 30 years.
Gonzalez is an active member of
several IP organisations including the Mexican Association for the Protection of
Association of Intellectual Intellectual Property (AMPPI),
International Association for the Protection of Intellectual Property (AIPPI), the Inter- American
Property (ASIPI), the Pharmaceutical Trade Marks Group (PTMG), the National Association of
Corporate Lawyers (ANADE) among others.
Gerardo Parra obtained his law degree in 1998 from the Universidad Panamericana, Mexico. He also holds a postgraduate qualifi cation from the same university and graduated with honours from the John Marshall Law School in Chicago, where he obtained a LLM degree in intellectual property law.
www.worldipreview.com
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