Mexico: The importance of a local attorney
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: 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.


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

more from across site and ros bottom lb

More from across our site

Lawyers weigh in on the USPTO’s request for comment on the effects of AI on prior art analysis and obviousness determinations
A vast majority of corporates – especially smaller businesses – rely on a trusted referral when instructing external counsel, according to a survey of nearly 29,000 in-house counsel
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
The Munich Regional Court ruled that Lenovo was an unwilling licensee and had engaged in ‘holdout’ tactics
Technological innovation should play a critical role in advancing sustainable practices, argues Justin Delfino, global head of IP and R&D at Evalueserve
Ewan Grist of Bird & Bird, who acted for Lidl in its trademark victory against Tesco, reveals some of the lessons brand owners can take from the judgment
Dolby’s lawsuit at the Delhi High Court follows a record win by Ericsson earlier this year against the same defendant
Tee Tan, chief information officer at the owner of several IP firms, says to avoid tech just for the sake of it and explains how his company builds in-house tools
Regardless of whether the FTC’s ban on non-competes goes into effect, businesses should stop relying on these agreements
Mary Till, a former legal advisor at the USPTO who has joined Finnegan this week, is looking forward to providing clients with a USPTO perspective
Gift this article