FEATURE MADRID PROTOCOL IN MEXICO Four years on – how Mexico stepped up to Madrid It is now four years since Mexico officially ascended to the Madrid Protocol. We examine how local practitioners have been adapting to this new trademark ecosystem and see what common issues are arising

The Madrid Protocol is designed to help rights holders AUTHOR class must be responded to individually. to protect their trademarks in several countries, ALONSO It is true that renewals and changes in ownership particularly in terms of centralised management and cost CAMARGO for multiple classes via Madrid filings are more effectiveness. Since Mexico ascended to the system four straightforward, provided that a single petition is years ago, various practical and legal issues have emerged sufficient to renew registrations or record a change which should be considered by rights holders before in ownership against several national registrations they choose whether to apply for a trademark in Mexico derived from the Madrid System. However, until local via the Madrid System or directly with the Mexican registrations are finally granted by the MTO, the costs Trademark Office (MTO). for prosecuting national applications derived from an international registration can increase substantially. Multi-class filings The first issue to consider is the fact that the Industrial Goods and services identifications Property Law does not allow for multi-class trademark A second issue to consider is that although Mexico is applications. Consequently, an international registration part of the Nice Agreement and thus the MTO applies designating Mexico but covering more than one class will the Nice Classification system, it often requests automatically be split into separate Mexican applications amendments to product and service identifications (one per class). Each of these separate applications will be in international registrations which designate Mexico subject to individual examination on both formalities and despite the fact that these have been already accepted PICTURE: FER absolute and relative grounds for refusal. This naturally GREGORY/ by the World Intellectual Property Organisation (WIPO) leads to higher costs as any provisional refusal in each SHUTTERSTOCK.COM with no objections.

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This is due to the Industrial Property Law’s extremely claim may preclude the defendant from pursuing a formalistic and rigid provisions, as well as the narrow counterclaim where there is only a short statutory term criteria adopted by the MTO for the formalities for asserting one. examination. If particular products or services do not In practice, there have been only a few cases where appear exactly as they are listed in the latest edition of claims filed by third parties have been served through the Nice Classification of Products and Services, MTO a publication in the Official Gazette and a national examiners have been known to issue provisional refusals, newspaper in the absence of a local agent appointed in requesting that the applicant clarifies the nature of the the Mexican application (Article 154, Industrial Property products or services, and the language used to identify Law). Even so, such procedures can be extremely risky them in order to match precisely the alphabetical list of for rights holders, as publications in both the Official products and services set out in the Nice Classification. Gazette and a national newspaper can be easily missed. For instance, if an application is filed through the Consequently, if an invalidation or cancellation claim Madrid System designating Mexico for a trademark was served by such means and not detected by the covering vegetable juices in Class 32, the MTO would defendant, the registration in question would be likely issue a provisional refusal requesting that the declared cancelled before the rights holder had the applicant clarify the nature of the vegetable juices opportunity to defend itself. WIPO is obliged to advise in order to assess whether they have been correctly the affected party of only a final decision declaring the classified, or otherwise suggesting rewording the cancellation or invalidation of a registered mark, not products (eg, as “vegetable juices (beverages)”) in order to the existence of the claim nor the deadline for filing a match them precisely to the description used for Class 32. response (Rule 19, Common Regulation of the Madrid However, an application filed directly with the Agreement and Protocol). MTO by an experienced local counsel should be able to Applicants for Mexican trademark registrations filed sidestep such objections – not because the examiner’s directly with the MTO, on the other hand, have already criteria is any different, but because an experienced local had to appoint local counsel in case an invalidation or counsel will be aware of the peculiarities of local practice non-use cancellation filing is issued. and be able to suggest to the client that it reword the identification of goods or services accordingly. As a result, Additional legal issues there is typically a delay in prosecuting an application Some additional legal issues have been discussed in derived from a Mexican designation of an international Mexico in connection with the Madrid System, particularly registration, as well as increased costs associated with with regard to constitutionality, based on certain clear having to engage local counsel to file an office action violations of the so-called ‘national treatment’ principle response to the MTO. (Article 133 of the Constitution in relation to all of the Similarly, where a provisional refusal is issued provisions established in Chapter I, as well as in relation requesting that the applicant clarify the nature of goods to all international treaties signed by Mexico). or services to be covered as a result of a clear mistake in the translation of such goods or services by WIPO, the MTO refuses to amend such mistakes, thus forcing the applicant to request the pertinent correction from WIPO. Practitioners are still learning about the In addition, the applicant must respond to the provisional refusal and point out WIPO’s mistake in order to ensure system’s functionality and efficiency in that the application (or at least the Mexican designation) is not abandoned, which of course means further delays Mexico and additional costs. The national treatment principle establishes that all laws and treaties which apply in Mexico should grant Appointing local agents foreigners (individuals or companies) the same treatment The third and arguably the most important issue to and benefits granted to nationals and vice versa. take into consideration is that while a large number of However, in practice there are certain situations where Mexican local applications derived from international users of the Mexican trademark system have higher registrations designating Mexico have been successfully burdens imposed on them than users of the Madrid granted with no provisional refusals, it is nevertheless System. There are also certain benefits for users of the highly advisable for registrants to appoint local agents for national trademark system compared to users of the service in those registrations. Madrid System. Under the current legal framework, if a Mexican For example, the Industrial Property Law requires registration obtained through the Madrid System is applicants for national trademarks to indicate the date challenged by a third party and no local agent has been that the mark was first used in Mexico or else confirm recorded for service, the service of such a claim is effected that the trademark has not previously been used. This through letters rogatory, with all the inconvenience that requirement does not apply to users of the Madrid System this involves in terms of time and cost (Article 550, Code (Article 113(III), Industrial Property Law). of Civil Procedures). While use is not a requirement for obtaining Serving a claim through letters rogatory involves an registration in Mexico, this information becomes relevant extremely formal international legal procedure, which if use has commenced before an application is filed. In can take several months or even years to be concluded particular, if an interested party attempts to cancel a effectively. In some cases, the delay in serving the registration where a date of first use was declared based

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Few Mexican efficiency in Mexico. However, rights holders are trademark owners, advised to take all these issues into account when especially small making their decision. to medium-sized businesses, have used the Madrid System to Use of Madrid system by foreign users versus protect their brands Mexican users in foreign countries One aspect to consider is the poor take-up of the PICTURE: BLACKDAY/ Madrid System by Mexican companies and individuals, SHUTTERSTOCK.COM compared to foreign users. According to the ROMARIN database, since Mexico adopted the Madrid Protocol in February 2013 until September 5 2017, the statistics of use of the Madrid system by Mexican users versus foreign users is as follows: • International registrations with Mexico as a base country – 326. • Mexican designations in international registrations based on foreign registrations – 43,338

These statistics clearly demonstrate that the Madrid System has been beneficial for foreign rights holders looking to protect their marks in Mexico. Regrettably, it does not appear to have been so helpful for Mexican rights holders looking to protect their trademarks abroad, as only a few big Mexican companies have used the system to protect their marks in foreign countries. There are two factors which may have caused this situation. on an alleged prior use, it must demonstrate prior use not only in respect to the application’s filing date but also in respect to the date of first use declared in that application (Article 151(II), Industrial Property Law). This option is The fact that only Cuba and Colombia in not available to users of the Madrid System, since there is no requirement for them to declare a date of first use Latin America have joined the Madrid when designating Mexico in an international registration. Second, for renewal purposes, the Industrial Property System means that there is little point in Law requires registrants to declare under oath that the trademark being renewed has been used in Mexico Mexican rights holders using it to gain within the three years preceding the renewal application date – this is the only legal requirement for a trademark protection throughout the region to be renewed (Article 134(II), Industrial Property Law). This requirement is not imposed on users of the Madrid First, most small and medium-sized enterprises System when they renew registrations derived from their (SMEs) do not consider IP protection as a priority Mexican designations. investment, but as an expense which they try to avoid for Third, when applying for recordation of any change as long as possible. In most cases, Mexican SMEs start of ownership (eg, assignments, mergers or changes of protecting their marks in Mexico and other countries only names), the Industrial Property Law requires applicants after they have begun to commercialise their goods or to submit either original signed assignment documents services, and in most cases once they discover obstacles. or certified and legalised copies of the assignments, along Second, the fact that only Cuba and Colombia in Latin with the merger or change of name documents. Users of America have joined the Madrid System means that there the Madrid System need not provide any documentation is little point in Mexican rights holders using it to gain when applying for recordation of such changes (Articles 9 protection throughout the region – which is naturally the and 10, Regulations to the Industrial Property Law). most interesting application for Mexican manufacturers, To date, no constitutional claims have been filed merchants and service providers. before the Mexican courts in connection with any of these Hopefully, this situation will change as more Latin situations. It would be interesting to see the consequences American countries accede to the Madrid System, although of an eventual constitutional claim in the future and so far no other Latin American countries have openly whether that would help to clarify the situation. showed any interest in this. While Brazil and Canada have In conclusion, there is still no clear answer to the expressed their intention to join the international system, issue of which method – whether applying via the WIPO this will not take place until 2019 at the earliest. or the Mexican national system – is more beneficial for rights holders. Mexico’s accession to the Madrid Alonso Camargo is a partner at Olivares Protocol is still relatively recent and practitioners are [email protected] still learning about the system’s functionality and

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