Mexico: Disadvantages of the Madrid Protocol
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Mexico: Disadvantages of the Madrid Protocol

The prosecution of trade mark applications under the Madrid Protocol is increasingly common among foreign clients. However, as far as it concerns to Mexico, there are some disadvantages for Madrid users:

1) Once a trade mark application is filed directly before the Mexican Institute of Industrial Property (under the national system), it is assigned to an examiner, who will conduct a formal examination and then an official search report. If no official actions are received, the estimated time of achieving registration is about five months, otherwise, it could vary from 12 to 18 months.

On the other side, if the application is filed and prosecuted through WIPO, it is necessary to wait between eight and 18 months until the International Office turns the application to the Mexican Institute of Industrial Property for its examination. Thereafter, it may take from 14 to 18 months for the Mexican Trade Mark Office to examine the application and either grant registration or issue a provisional refusal.

As readers will realise, assuming that no provisional refusals are issued in the trade mark applications filed through WIPO, the applicant may obtain its registration in at least 14 months. While under the same scenario but through the Mexican Institute of Industrial Property, the applicant may obtain its registration in five months.

2) In trade mark registrations prosecuted under the Madrid system, there is not an appointed attorney of record nor an address for service in Mexico. Therefore, if a third party contests the validity of those registrations (based on nullity or cancellation actions), these communications/actions could not be served to an attorney in Mexico; thus, in the absence of a national attorney, any communication/action would have to be served by means of a notice in a newspaper which normally is hard to detect.

Regarding the certificates of registration, in trade mark applications prosecuted under the Madrid system, the original documents are kept in the files of the Mexican Institute of Industrial Property.

3) In our country, each trade mark application can only cover goods or services comprised in one class as we follow the so-called principle of specialty of trade marks and there are no multi-class applications.

Therefore, if an international registration designating Mexico is filed for multiple classes, the Mexican Institute of Industrial Property splits the International Registrations into individual national applications, one for each designated class, and each designated class will be handled under a separate national application number and faces independent examinations, paying government fees separately.

While the Madrid Protocol has certain advantages, it is advisable to analyse each case to determine which system is best for the applicant's needs.

Garcia_Mariana

Mariana García


OlivaresPedro Luis Ogazón No 17Col San Angel01000 México DFTel: +5255 53 22 30 00Fax: +5255 53 22 30 01olivlaw@olivares.com.mxwww.olivares.com.mx

more from across site and ros bottom lb

More from across our site

A 36-member team from Zhong Lun Law Firm, including six partners, will join the newly formed East IP Group
The Delhi High Court sided with Ericsson against Indian smartphone maker Lava, bringing the companies' nine-year dispute to a close
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Tennessee has passed the ELVIS Act, a law that fights against AI models that mimic the voice and likeness of music artists
Rob Stien, chief communications and public policy officer at InterDigital, says the EU has forgotten innovators while trying to solve an issue that doesn’t exist
As Australia’s Qantm IP leans towards being acquired by a private equity company, sources discuss what it could mean for IP firms
Law firms that are conscious of their role in society are more likely to win work, according to a survey of over 23,000 in-house professionals
Nghiem Xuan Bac Pham, managing partner of Vision & Associates, discusses opportunities created by the US-China rift as well as profitability issues facing IP practices
Douglas Leite and two of his colleagues were intrigued by Bhering Advogados’s mission to grow its patent litigation practice
Each week Managing IP speaks to a different IP practitioner about their life and career
Gift this article