Some problems that Madrid users may face in Mexico

December 17, 2015 at 8:26 AM Leave a comment

On November 19, 2012, Mexico’s Secretary of Economy deposited the country’s accession document to the Madrid Protocol for International Registration of Marks. Mexico started accepting International Registrations three months later.

Almost three years have passed since the implementation of the Madrid Protocol in Mexico, and I can now explain some of, in my opinion, the most usual problems for Madrid applicants when filing in Mexico.

Translations of goods and services.

It seems silly, but mistranslations seem to be the most common issue with Madrid Registrations in Mexico. Needless to say, a mistranslation can be a serious problem.

I do not know how the World Intellectual Property Organization (WIPO) translates the descriptions of goods and services (i.e. if it uses software without human intervention), but the fact is that errors in translations are not uncommon, and they may cause an objection from the Mexican examiner because the translated word does not make sense in the context of the application or because it creates a conflict with the Class stated in the application. Then, the applicant has to retain a Mexican attorney to explain the Mexican Patent and Trademark Office (MPTO) that there was a translation error by WIPO and provide the examiner with the correct description in Spanish.

The intervention of the local counsel requires filing an original power of attorney from the applicant, so answering an office action demands more paperwork that just preparing a response.

In the worst-case scenario, an error in the translation may go undetected by the Mexican examiners, causing that the trademark rights granted in Mexico do not include the product or service the applicant actually wanted to be covered by the trademark and was incorrectly translated into Spanish. Of course, errors in translations are not exclusive of International Registrations; they may also happen with regular trademark applications, but the local counsel would be supposed to be more cautious.

Mexico is one of the countries that allow the use of the Class headers to describe the goods or services covered by a trademark application, although there is no actual “full-class” coverage (Update September 17, 2018: Startung August 20, 2018, using the header of the Class is no longer acceptable in Mexico. See Mexico starts a new era in Trademark Law (the amendments of May, 2018)).

However, some expressions used in many jurisdictions, such as “accessories and parts thereof” may be objected by the Mexican examiners, due lack of specificity. Actually, this is a problem for all trademark applicants, not for Madrid users only. The applicant has to delete “accessories and parts thereof” or provide a list of all the “accessories and parts thereof” covered by the registration in the same Class.

Multiple-Class Applications.

Mexico does not allow multiple-Class applications, but the Madrid System allows multiple-Class International Registrations.

In order to deal with this inconsistency, the MPTO “divides” multiple-Class International Registrations in as many applications as International Classes are involved, and examines each of this “applications” independently. When the MPTO approves the protection in certain Class, it issues a local trademark registration for that Class. A local trademark registration is also issued in case of single-Class International Registrations.

Sometimes the examiner disagrees about the classification of the goods and services listed in the International Registration. If the International Registration is multiple-Class, the examiner may simply “move” the relevant goods or services to the “correct” Class, if the Registration includes such “correct” Class. If not, the examiner will request the applicant to delete the goods or services that do not belong in the Class stated in the Registration.

The applicant has a two-month term to answer the office action, with a two-month automatic extension.

One big inconvenient of the MPTO’s practice of dividing mutiple-Class International Registrations in as many local applications as Classes are involved, would be related with the appeal against a final total refusal. Instead one overall refusal, the MPTO will issue one refusal per Class and the applicant would have to file one appeal per refusal, multiplying the number of appeals and increasing the costs.

Substantive Examination

The substantive examination of International Registrations is basically the same than with regular trademark applications. However, examiners may check the decisions of other Trademark Offices, looking for absolute grounds of rejection that may not be evident for the Mexican authorities.

The applicant has a two-month term to answer a provisional rejection related to the substantive examination, with a two-month automatic extension.

(Update September 17 , 2018) Statement of use

International Trademarks that have been subject of a declaration of protection in Mexico issued on August 10, 2018, and thereafter, will have to file with the MPTO a statement of actual and effective use in Mexico at the third year after the issuance of the declaration of protection in Mexico.

The window is quite narrow, three months only. It starts on the day of the third anniversary of issuance of the declaration of protection and ends three months later. For example, if the declaration of protection in Mexico was issued on August 11, 2018, the window to file the statement of actual and effective use would open  on August 11, 2021 and close in November 11, 2021.

Of course, this burden also affects nationally filed trademark registrations issued on August 10, 2018, and thereafter.

Invalidation and Cancellation Actions.

This is still a theoretical risk, because I have not seen such a case yet, but we will have to deal with it sooner or later.

When a cancellation or invalidation action is filed against a Mexican trademark registration owned by a non-resident, the MPTO will serve summons through the local attorney of record that filed the trademark application, the last renewal or the last assignment.

However, a lot of Madrid Registrations do not have a local attorney of record, so it is no clear how these trademark owners will be summoned in case a third party files a cancellation or invalidation action. It is possible that the service of summons will be carried out through a special publication in the Official Journal of the Federation and/or the Official Gazette.

Summons served through publications in the Official Journal of the Federation are expensive and no easy to detect, especially for a foreign trademark owner. In that case, the invalidation or cancellation action may be served and decided without the actual knowledge of the registrant. By the time the owner of the International Registration finds that the protection in Mexico has been invalidated or cancelled, it could be too late to appeal or file some other legal remedy.

One way to prevent such an unfavorable scenario is appointing an attorney of record in all International Registrations and in each Class (remember, the MPTO will issue one trademark registration per Class) valid in Mexico. Of course it will cost money, but the trademark owner will have the certainty that, if someone challenges the validity of the trademark registration, a copy of the invalidation or cancellation action will be served to local attorney instead of being served through some hard to detect publication.

Hopefully, the more familiar the Madrid Protocol becomes for Mexican authorities and attorneys, better tools and remedies will be developed to make the system more efficient and reduce unfair situations as the one described above.

Entry filed under: Trademark law. Tags: , , , , , , , , , , , , , .

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