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.