InternationalUSRemember you can easily switch between MIP US and MIP International at any time

Mexico: The importance of a local attorney




As we know, the Madrid System is a tool that simplifies the administrative procedure of trade marks through an International Registration which is equivalent to various national registrations by the applicant in the designated contracting parties.

This indeed constitutes a great benefit for trade mark owners. However, in Mexico we have been facing the problem that most of the national trade mark applications and registrations derived from international trade mark registrations do not have a national or local attorney registered as a legal representative. This is a problem because it complicates notifications of official communications and/or legal actions these trade marks may receive, such as those derived from:

  • opposition procedures;
  • nullity or cancellation actions filed by third parties; and
  • nullity trials in which the applicant is being called to intervene as an interested third party.

Therefore, if there were not a national/local attorney registered as a legal representative with a domicile to hear and receive notifications in Mexico, these notifications would have to be served by means of notices in a national newspaper which normally are hard to detect.

Likewise, the failure to detect such official communications and/or legal actions may have the following consequences without the trade mark owner being aware:

  • the annulment or cancellation of the trade mark; and
  • the granting of a confusingly similar trade mark for not intervening as an interested third party in a nullity trial.

In light of the above, it is highly advisable to contact a local Mexican attorney/law firm and ask them to record themselves as legal representatives in the national trade mark files derived from an international trade mark registration which has Mexico as a designated contracting party.

landero
Andrea de Landero

Olivares
Pedro Luis Ogazón No 17
Col San Angel
01000 México DF
Tel: +5255 53 22 30 00
Fax: +5255 53 22 30 01
olivlaw@olivares.com.mx
www.olivares.com.mx


Comments






profile

Managing IP

ManagingIP

ManagingIP profile

One for fans of TV format disputes (addresses copyright, breach of confidence & passing off) https://t.co/Qe1lr1NrSq

Oct 19 2017 02:03 ·  reply ·  retweet ·  favourite
ManagingIP profile

Third time lucky? EDTX awards VirnetX $439.7m in patent infringement case against Apple https://t.co/AmhvSQbMOR https://t.co/GiNRRlcx5X

Oct 19 2017 12:50 ·  reply ·  retweet ·  favourite
ManagingIP profile

USPTO’s Matal on Aqua Products: “Now I’ve read it I wish I hadn’t nagged them to get it out-could have done with another month” #aiplaAM17

Oct 19 2017 12:50 ·  reply ·  retweet ·  favourite
More from the Managing IP blog


null null null

October 2017

Courts grapple with scope of patent protection

The Supreme Court’s decision in Actavis v Eli Lilly introduced a doctrine of equivalents and arguably also established a doctrine of prosecution history estoppel in the UK. We look at the law across Europe, and the impact the decision might have. Kingsley Egbuonu, Michael Loney and James Nurton set the scene



Most read articles

Supplements