MADRID PROTOCOL
Now that the Madrid Protocol has been signed the Mexican trademark offi ce will be facing many limitations and concerns relating to trademark applications, say Victor M. Adames and Eugenio Ruiz.
During the past 10 years, the accession of Mexico to the Madrid Protocol was a constant source of discussion between the Mexican government, the Mexican Institute of Industrial Property (IMPI) and, of course, the Mexican Association for the Protection of Intellectual Property (AMPPI). T e debate focused on whether Mexican companies would experience any real benefi ts, and if the country itself was ready to join, but mainly on whether the trademark offi ce’s personnel were capable of maintaining the service quality and time frames.
In a surprise move, on May 25, 2012, the Mexican Senate approved the accession of Mexico to the Madrid Protocol. T e accession instrument was deposited before the World Intellectual Property Organization (WIPO) on November 19, 2012 and it entered into force in February 19, 2013, the date on which Mexico could be a designated country in an international application.
Now that the Madrid Protocol has been signed there are many limitations and concerns/ challenges that the Mexican trademark offi ce is facing and will face, which can be summarised as follows:
• Currently, a straightforward application
takes approximately six months to achieve registration; in some cases, it is even less. Now that the Mexican trademark offi ce will start receiving international applications it will be a challenge to maintain such a timeframe, as Mexico decided to adopt the 18-month period, to issue a resolution for each international application.
• Another big challenge will be to maintain a strict
internal control to comply with
the established deadline of certifying the international application (when Mexico is the offi ce of origin). T is can get out of hand, once international applications start fl owing, and a lack of strict control and supervision may lead
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to delays and backlog, since the number of employees working at the trademark offi ce is limited and they are already assigned to other, specifi c tasks.
• Another important issue is that Mexico’s trademark offi ce has a very strict formal examination process regarding the proper classifi cation of goods and services, which will most likely lead to the issuance of several offi cial actions about being more precise on the description of some of them, or on deleting some goods and/or services that may have been accepted by other offi ces.
Mexico follows the Nice Classifi cation for International Goods and Services (currently in its 10th edition); if a description of a trademark does not recite the goods or services in the same manner as they appear on the list of goods and services of such classifi cation, however, an offi cial action requesting a more precise list of such goods or services is almost guaranteed. T e latter turns out to be a more complex issue when dealing with translating the description of goods and/or services that may change from one language to another and a mere translation of the same good can trigger an offi cial action.
Although WIPO will conduct a formal examination of
the international applications
when they are received, once they are returned to the designated offi ces, since the applications will be subject to the laws of each country, the designated offi ce (in this case Mexico) will be entitled to conduct another formal examination. In this case, further offi cial actions can be issued in accordance with the strict criteria of proper classifi cation of goods and/or services explained, which makes this situation both a limitation and one of the biggest challenges for IMPI.
• Another issue is that Mexican examiners consider that
some orthographic symbols may constitute a design, while other offi ces
around the world do not. T is situation can convert a word mark application into a design application, which takes special account as to use of the mark itself. T e Mexican Law of Industrial Property (MLIP) establishes that a trademark must be used as it was registered. T erefore, if a trademark is used by the holder as a word mark, but the Mexican trademark offi ce considers an orthographic symbol as a design, the mark should be used in Mexico exactly as it is refl ected in the certifi cate of registration. T at is, it should be limited to a specifi c type or font as shown in the certifi cate and not in any style or size as it applies to word marks.
Needless to say this can become a real problem when dealing with a cancellation action on the grounds of lack of use, as any third party could use the examiner’s criteria to try to prove there is no use of a certain trademark.
• T e distinctiveness examination is very strict compared with other offi ces around the world and, thus, examiners may deny registration for marks that were considered distinctive in other jurisdictions.
Likewise, some offi ces may accept certifi cates of registration issued by other offi ces that argue that a mark is distinctive, and the offi ces will grant the registration. However, this is not the case with Mexican examiners, as submitting a certifi cate of registration for a trademark that is being objected in Mexico from another country may not persuade a Mexican examiner to accept it.
• Another big challenge for IMPI and its examiners is the failure to update its database in a speedier manner, which prevents examiners from citing abandoned trademarks (either due to the lack of renewal, response to offi cial actions or because they were withdrawn) against an application.
World Intellectual Property Review Annual 2013 77
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