MADRID PROTOCOL
Mexican examiners also tend to issue more than one official action when making the official search, as they may cite a trademark registration as a bar. Once overcome, examiners have issued further official actions citing new trademarks as bars, as the systems did not reveal them during the first search or they simply missed them.
Tis latter situation can be extremely harmful for applicants, as, besides triggering additional costs and time to the prosecution proceeding, their trademark can be refused based on the second official action, even aſter successfully overcoming a citation.
• Last but certainly not least, in our opinion the biggest challenge of all is the implementation of an opposition system. Tere has never been an opposition in Mexico: examiners conduct an official search and determine whether the proposed trademark is confusingly similar to a registered or previously filed one, without informing the owner of the registered or previously filed application.
Some consider that this examination procedure gives too much power to a single entity; whether this is true or not,
it is clear that examiners
do not use the same criteria when, or have an appreciation or
capability of, analysing
two trademarks. As a result, examiners can adopt, and have adopted, different approaches when analysing whether two trademarks are confusingly similar or not.
Tis results in a considerable problem for trademark owners, as different criteria for similar cases may hinder their trademark rights. For instance, two trademarks that can cause confusion among consumers, due to their graphical similarities and scope of protection, may be allowed to coexist if the examiner perceives that confusion between them is not likely. Te owner of the registered right may have to then challenge the validity of the granted trademark through a cancellation
“THE BIGGEST
CHALLENGE OF ALL IS THE IMPLEMENTATION OF AN OPPOSITION SYSTEM.”
Tere is discussion about whether a pre-registration opposition system or a post- registration system should be adopted. It will take some time and further discussion to decide which one is better in accordance with Mexican laws and practice. What is certain is that it will not take many months before an opposition system is enabled in Mexico.
Mexico now has the opportunity to create a unique opposition system, as it can learn from the experience of other countries regarding pre-registration opposition systems and post- registration opposition systems, their flaws, as well as their advantages. Terefore, Mexico can create an original opposition system according to its needs and that applies to and is beneficial for the Mexican trademark system and that prevents some of the known flaws in Mexico.
Tese are some of the limitations and biggest challenges IMPI will face in the coming weeks, in order to continue operating as an efficient office and making the designation of Mexico a normal procedure rather than a nightmare.
action,
incurring considerable costs and time trying to expunge the granted trademark from the registry.
Te opposition can cure this system, as it will allow any person who feels its trademarks rights have been invaded by the granting of a certain trademark expressly to say so. In the end, it is the trademark owner whose rights can be invaded.
IMPI is working with AMPPI to establish an opposition system allowing trademark owners to oppose marks. Te system will not delay the prosecution proceeding or make it more expensive, but will speed things up and give the opportunity to those whose rights could really be affected to speak for themselves.
Now Mexico has signed the Madrid Protocol, it is hard to say how many designations to expect, as just a short time has passed since the protocol entered into force. However, WIPO has compared Mexico and Turkey, based on their similar gross domestic product (GDP) and expects that during the first year 500 international applications will be filed using Mexico as their country of origin and that our country will receive about 10,000 designations per year. Tis is a small amount in comparison with the applications that are filed in Mexico per year (about 100,000). In addition, about 70 percent of
the applications filed in
Mexico are filed by Mexican nationals, who are mainly small or medium companies that are not necessarily interested in using the Madrid system.
Te most important fact or number should be if the Madrid Protocol really aids Mexican companies and nationals to
protect their
trademarks globally in a fast and cost-effective manner.
78 World Intellectual Property Review Annual 2013 Eugenio Ruiz is an attorney at law.
He joined Becerril, Coca & Becerril, SC in 2009. He is a member of AMPPI and INTA. As an attorney in our Trademarks Department, Ruiz focuses his practice in trademark filing and prosecution. He also provides advice in trademark litigation matters.
In conclusion, the accession to the Madrid Protocol in Mexico needs to be seen as just another alternative by which to obtain protection for a trademark. In the end, it will depend on the commercial strategy of a company and its economic capacity, as well as immediate needs of each, to determine whether to file through the Madrid Protocol or to file directly in each country through an agent.
Victor Adames is the manager of trademarks at Becerril, Coca & Becerril, SC. He can be contacted at:
vadames@bcb.com.mx
Eugenio Ruiz is attorney at law at Becerril, Coca & Becerril, SC. He can be contacted at:
eruiz@bcb.com.mx
Victor M. Adames is an attorney at law. He joined Becerril, Coca & Becerril, SC in 2004. A member of AMPPI and INTA, he participates in several forums on IP matters and publishes articles in different media. As Trademarks Manager, Adames focuses his practice in trademarks, copyrights, and domain names prosecution in Mexico and abroad.
www.worldipreview.com
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