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A return to the Protocol

Adolfo Athié and Santiago Zubikarai of Basham explain that, despite the largely successful return to the Madrid System, foreign applicants in Mexico need to take heed of the challenges it raises

With little more than year since Mexico's ratification of the Protocol relating to the Madrid Agreement, the return of Mexico to the Madrid System has seen satisfactory results. According to the Annual Madrid System Review published by WIPO earlier this year, Mexico has been designated for international applications or registrations over 3,760 times, surpassing Colombia, Croatia, Italy, France and the Philippines. Though the numbers for Mexico as an office of origin are far lower, there has certainly been interest from non-Mexicans in using the Madrid System to protect their trade marks in Mexico.

For IP lawyers practicing in Mexico, this has meant answering many questions from foreign applicants, frequent communications with the Mexican Institute of Industrial Property (IMPI), and of course, answering provisional refusals issued for a wide a variety of reasons. This document will address some of the most common issues we have faced and their possible solutions, and the problems we foresee for the near future.

Reasons for refusal: classification

When our clients started forwarding us the provisional refusals they received for their designations of Mexico, one of the most common reasons for refusal was classification. IMPI states that it may review the translations made by WIPO and determine if the products or services referred to are properly classified, and request further specifications. Foreign applicants who are unfamiliar with IMPI's criteria will often use wording that is subject to objection by IMPI and so provisional refusals that could have been avoided are regularly issued.

"Non-use cancellation actions are very common in Mexico"

Some of the wording that will most often result in provisional refusals is related to parts, fittings, spare parts and other components for other products mentioned in the description. IMPI takes the view that the applicant must name the specific products protected by the trade mark registration. Therfore, it is very common for wording such as 'parts and fittings for the aforementioned products' to be subject to a provisional refusal demanding further specifications. In such cases, the applicant will have to either delete the contentious wording or name each component where protection is required.

Another common issue is the services provided by stores included in International Class 35. IMPI holds that the applicant should state that the services are sales services for the benefit of others provided through a store and that it is necessary to specify the products that will be sold. This will often result in provisional refusals requesting that the services be stated in a different manner.

Translation issues

Provisional refusals based on classifications or descriptions of products or services can at times be considerably more complex.

In particular, we have found over the past few months that it is not uncommon to find provisional refusals based on a more complicated problem. At times, the English version of the description of products and services would have been perfectly acceptable to IMPI, but WIPO sometimes sends a suboptimal or erroneous translation that results in a provisional refusal being issued. On some occasions, the Spanish translation will limit, broaden or simply substitute the original text in English. This is problematic because IMPI is obliged to use the Spanish text it receives from WIPO and cannot make any changes or amendments to it. Instead, the applicant will have to contact WIPO and request corrections to the translation. Obtaining such a correction from WIPO will often take several weeks, while the applicant is under pressure to meet a deadline to specify a description of products or services that was not actually requested.

Of course, all trade mark offices make mistakes in the description of products and services every now and then. But some of the mistakes we have encountered in Spanish translations sent by WIPO to IMPI seem to be similar to those that would be made by using an internet translation service and sending the results without further review, such as the wrong word order. Such mistakes often result in a provisional refusal, since the description of a product or service (which often depends on the word order employed) will generally determine its classification. For example, we received a case in which the original Class 29 description for fruits and vegetables that had been cooked in a specific manner was translated in such way that only the vegetables were described as being cooked but not the fruits. Therefore, the applicant received a provisional refusal requesting a specification of the fruits in order to determine their correct classification between Classes 29 and 31. Such a provisional refusal might have been avoided if the translation had adhered to the original text in English.

Another important observation is that although there may not be an international text of the Nice Classification in Spanish, IMPI publishes its own Spanish version of this classification. The numbers on this version match those in the official English version. Therefore, a Spanish translation that will probably be accepted by IMPI from a description in English can sometimes be obtained by taking the numbers from the original text in English and reviewing the corresponding wording in Spanish. While the Spanish version of the Nice Classification is not binding on the members of the Nice Agreement, it would be very convenient if WIPO would take it into account in doing the translations it sends to IMPI to ensure their accuracy and avoid unnecessary refusals for applicants.

Still, these are cases where a provisional refusal is issued and the applicant may see, through local counsel, that the Spanish translation does not adequately reflect the original English text. What would happen, however, if an error in the translation did not result in a provisional refusal, for example if the error is irrelevant for determining proper classification? Registration would probably be granted and perhaps the applicant would not notice the error. This possibility may present an issue when enforcing the trade mark and more importantly, when faced with a non-use cancellation action.

Non-use cancellations

Non-use cancellation actions are very common in Mexico and constitute an option that is usually available against a cited trade mark registration. Against such actions, the owner of the registration is required to submit evidence of use, comprising the very same products mentioned in the registration certificate. Use of other products, even if similar or related, is not sufficient for a successful defence. In a couple of years, the registrations granted in Mexico under the Madrid System will start to become vulnerable to non-use cancellation actions (three years from the registration date) and then an uncorrected error in the translation may prove to be a serious issue if the Spanish wording does not adequately reflect the products or services identified by the trade mark. Therefore, applicants may benefit from the Madrid System, but the registrations granted through this system may be vulnerable if a translation error goes unnoticed by the applicant.

In this respect, an interesting problem in the future will be exactly how IMPI will give notice to foreign applicants of actions filed against their trade marks, especially in cases where no provisional refusals where ever issued and the applicant therefore has no, in IMPI's official files, recorded agent or domicile for receiving notices in Mexico. In such cases, where we cannot find an agent or domicile for giving notice to a domestic or foreign person of an action filed against their registrations, it is usually sufficient to publish an extract in the Official Gazette and a major newspaper. Will this be the proper mechanism for giving notice, for example, of a non-use cancellation action to the owner of an international registration with no recorded agents or domiciles in Mexico? IMPI has yet to establish its view on this subject.

Other issues

A question we also receive frequently from foreign applicants is whether a power of attorney is required for answering a provisional refusal. The answer is yes. For national applications, the person who signs the application is presumptively authorised to answer any kind of objection that may be raised during the registration process. However, for provisional refusals issued for a designation, we do require an original power of attorney or a duly certified and legalised copy of the same in order to file a response to the provisional refusal. Otherwise, an additional official notice to demonstrate our representation would be issued. Still, it is important to consider that if the provisional refusal comprises several classes, then an original or a certified copy will be required for each class. Mexico is still a single-class system. This means that when IMPI receives a designation, it will create an independent file for each class and each of these files will follow its own independent course. Therefore, when a provisional refusal comprises several classes, the applicant must submit one independent response for each class with its own power of attorney.

Another point of interest usually is the extension of deadlines for answering a provisional refusal. In this respect, the general rule is that the deadline is two months, calculated from the date on which notice of the provisional refusal is received by the applicant. The law provides for a single two-month extension for this deadline. It is not necessary to request the extension in any way as it will be automatically granted so as long as the applicant pays an additional government fee that will not exceed approximately $30.

"Registrations granted through this system may be vulnerable if a translation error goes unnoticed"

As these are the most common questions we receive from foreign applicants, IMPI is working very differently as an office of origin. Mexico has been an office of origin on only 81 occasions according to existing statistics. Although definitely better than Colombia's nine registrations, the disparity in Mexico's numbers reveals that Mexicans have not been too interested in using the Madrid System to protect their trade marks abroad.

This disparity is probably down to economics rather than any legal complications for Mexicans using the Madrid System, for a number of reasons. The most important reason is that obtaining a trade mark application or registration to constitute the basis for an international registration is not particularly difficult. In recent years, IMPI has made significant efforts to make the procedures for trade mark registrations easier and the timeframe shorter. Now, if the mark is registrable and the products or services are properly classified, IMPI will normally grant registration within six months. There are no oppositions, further payments or a necessity to demonstrate use of the trade mark before registration being granted. If a search reveals that the trade mark is available for registration and there are no possible objections on absolute grounds, then the applicant may be confident of receiving the registration certificate within this timeframe. Perhaps due to this, trade mark filings have consistently increased in Mexico from 2010 to 2014, though use of the Madrid System by Mexicans has been scarce.

A successful re-entry

The relatively high number of foreigners designating Mexico may demonstrate, in our opinion, that the re-entry into the Madrid System was the right choice. The System provides the means for facilitating the registration of trade marks, which is certainly helpful for providing goods or services in our country. After little more than a year since Mexico's ratification of the Madrid Protocol, it seems that in spite of the challenges to be met, the system is ultimately fulfilling its purpose.

Adolfo Athié


Adolfo Athié has been a partner at Basham Ringe y Correa since July 2008 in the area of intellectual property. He is actively involved in amparo actions before the federal courts for the protection of IP rights against falsification and unfair competition. He focuses on consulting and administrative litigation, and has a broad experience in the registration and protection of trade marks and in the licensing of IP rights.

Adolfo founded the IP practice at White and Case in Mexico City and also developed his own practice in this area before joining Basham. He graduated from the Universidad Nacional Autonoma de Mexico and has taken postgraduate studies in corporate law and amparo actions at the Universidad Panamericana.

Adolfo is an active member of the Mexican Bar Association, particularly the Constitutional Rights Committee and of the Mexican Association for the Protection of Intellectual Property. He has published numerous articles and essays on different subjects in the United States Review, Privacy Law Adviser, Managing Intellectual Property, World Finance and The Mexican Law Review.

Adolfo is fluent in Spanish and English.

Santiago Zubikarai


Santiago Zubikarai González Mariscal holds a degree in law from Anahuac University, graduating with the Ceneval award of excellence. He has taken several courses at WIPO and is a member of the Mexican Association for the Protection of Intellectual Property. He has worked for over five years in the IP department of Basham Ringe y Correa, in the prosecution and maintenance of trade marks and copyright and in litigation pertaining to intellectual property rights.

Santiago is fluent in Spanish and English.


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