This content is from: Trademarks

Further commitment to the Madrid Protocol

Beatriz Martinez Hernandez and Karen Orivio of Goodrich Riquelme suggest ways in which Mexico needs to modify its IP framework to deepen its commitment to the Madrid Protocol and streamline its registration system

Mexico, as a growing country always looking to be among the best modern economies, is intent on being at the forefront of its neighbours and competitors. The Mexican Government has looked to provide nationals and foreigners with the same preferential treatment by embracing systems and legislations which improve the national legal system.

Even though, on September 19 2012, Mexico joined the Madrid Protocol (which entered into force on February 19 2013) Mexico's legal framework (the Industrial Property Law) remains unchanged. In certain cases, this interferes with the prosecution of international registrations received by the Mexican Trademark Office (MPTO) though the World Intellectual Property Organization (WIPO) or simply makes the application of Madrid Protocol regulations impossible.

While the Madrid Protocol allows third parties to formally dispute the validity of a pending trade mark application through the opposition procedure, the Mexican IP Law allows examiners, through substantive examination, to decide if a previous trade mark could be considered a potential obstacle. Therefore, the opposition procedure is an administrative process that allows third parties (natural or legal) to prevent the registration of marks that could be considered confusingly similar to their previously registered trade marks or to applications pending registration.

The opposition proceeding is closely linked to the procedure of registering a mark, as a potential application could be infringing previous rights. In other words, third parties may use these proceedings to oppose the acceptance of a trade mark application after it has been accepted and published for opposition purposes. The benefit of such a proceeding is to determine whether an applicant has the right to register, as against any third party, prior to the acquisition of registration rights.

The time frame to file the opposition depends on each jurisdiction, but is counted from the date in which the mark is published in the Official Gazette. In some countries, extensions of time for filing the opposition are available.

An opposition proceeding is similar to a court proceeding in many respects, except that: (i) it is less expensive; (ii) it is based on a written record; (iii) jurisdiction is limited to the issue of registrability; and (iv) the event that triggers the potential filing of an opposition is the publication of the mark in the Trademark Official Gazette.

The opposition is commenced by the filing of a notice of opposition which gives notice to the applicant of the opposer's basic factual and legal claims. The authority sends a copy of the notice of opposition to the applicant and sets a time for the applicant to file an answer to the notice of opposition. The opposition procedure comprises the notice of opposition filed by the opposer; the answer and any affirmative defences or counterclaims filed by the applicant; and, any answer to a counterclaim (if filed) filed by opposer.

In some countries, oral hearings are available, in case the parties would like to reach an amicable settlement. In such case, the opposition will be withdrawn.

If an opposition is rejected, the trade mark will proceed to registration. Some jurisdictions operate a post-grant opposition system, whereby opposition is not possible until after registration (for example, in Japan).

Even though the opposition system works well in countries in which the IP Law is based on use in commerce, it also dovetails with other countries that have acquired certain treaty obligations, such as Paris Convention filings, protection of unregistered well-known marks and protection of unregistered geographical indications.

Consequently, for Mexico to abide not only by the Paris Convention, but by the Madrid Protocol (among other treaties), it is necessary to modify the legal framework by introducing a complete chapter in the Mexican IP Law. Such chapter would adopt the opposition proceeding and would require the creation of a special section entitling the Mexican Institute of Industrial Property (IMPI) to faculties of reviewing and resolving opposition proceedings.

Mexican system v Madrid Protocol procedure

In terms of the existing legislation, IMPI is obliged to perform a substantive examination to every trade mark application to determine whether the trade mark is eligible for registration under the provisions of the law.

In this sense, if there are anticipations (trade mark registration previously granted in favour of third parties), IMPI will inform the applicant, allowing him a period of two months to make the corresponding arguments or statements in relation to the anticipations cited by IMPI.

After the applicant responds to the office action issued by IMPI reporting the anticipations, such authority will issue a decision granting or rejecting the trade mark registration.

It is clear that, under the existing legislation, the owners of the trade mark registrations cited as anticipations are not notified of the existence and eventual approval of a trade mark registration that may represent a violation to their IP rights.

Therefore, the Mexican legal provisions governing industrial property do not consider the opposition system to prevent the registration of a mark. In practice, it is very common for official files to contain briefs filed by third parties, by means of an informal opposition informing the authority of a previous right that could be affected if the potential mark is registered. Obviously, such briefs are non-binding on the authority as they lack legal basis, but it is undeniable that in some cases they can contribute to the refusal of registration by the authority of the corresponding registration.

Despite the fact that Mexican IP legislation does not regulate the opposition system, the IP Law provides various means by which a natural person or legal entity may enforce its trade mark rights after a trade mark registration has been granted. This procedure should be filed with IMPI.

In particular, for such procedures, the Mexican Industrial Property Law provides several hypothesis by which a third party may request the cancellation of a trade mark registration. Such grounds may be considered relative grounds for refusal of a mark, as the same are based in general on an earlier registered trade mark or previous rights over a trade mark.

Cancellation actions before IMPI involve a full administrative trial. Consequently, such actions involve a lengthy proceeding. The whole proceeding, including appeals, will last around four years, which will incur high costs.

Of course, such procedures may be avoided if Mexico adopts the opposition system under the Madrid Protocol. In this scenario, owners of trade mark registrations previously granted will be able to submit arguments, objections and evidence regarding new trade mark applications that may violate their IP rights.

Outlook

The opposition proceeding is an efficient system for people whose trade mark rights may be affected by the subsequent registration of a mark. Other procedures (such as cancellation actions against trade mark registrations) often involve more time and complexity. In this sense, Mexico must take the opportunity to amend its legislation to improve the existing trade mark registration system; this will provide effective regulation to enable the adequate protection of intellectual property previously granted, without the necessity of proceedings before the Mexican courts.

Karen Orivio
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Karen Orivio specialises in intellectual property and juicio de amparo litigation, regulatory law, and litigations against Cofepris due to the unlawful granting of marketing authorisations that invade IP rights.

She has an LLB from the Universidad La Salle, Mexico City (2009). She specialised in intellectual and industrial property law at the Universidad Panamericana (2010), and in juicio de amparo at the Universidad Panamericana (2014).


Beatriz Martínez Hernández
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Beatriz Martínez Hernández joined the firm in 2008. She specialises in slogan and trade names filing and prosecution, national and foreign trade marks, slogan and trade names maintenance (assignments, mergers, licensing, coexistence agreements, and letters of consent), and trade dress protection.

Beatriz has an LLB from the Universidad Nacional Autónoma de México, Mexico City (1992). She attended seminars on patent substantive exams by IMPI (2005) and the international seminar on community trade marks by the Office for Harmonisation in the Internal Market (2006). She is a member of ASIPI.


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