An amendment to the Industrial Property Statute published on January 2010, and to the guidelines of the Mexican Patent and Trademark Office (MPTO) for the filing of new trademark applications will make the trademark filing process less formal than it used to be.

Mexican law was already quite liberal, when compared with most Latin American countries, regarding the formal requirements for power of attorney documents for trademark and patent filing, prosecution and maintenance. Mexican law does not demand notarization, consular legalization or Apostille on such documents. Now, the law is going a little further

The MPTO will no longer request a power of attorney document in most trademark filing cases.

Instead, the MPTO will consider that the agent is authorized to file the trademark application on behalf of the applicant if the agent states under oath that it has such an authority. Of course, the MPTO will continue accepting the power of attorney document if the agent files it, but the examiners will no require it, and the lack of filing of the power of attorney would no longer delay the formal examination of the trademark application, the renewal application or an application to record an assignment or license.

Starting April 1st 2010, the new templates for trademark applications and renewal application will be mandatory; these new templates reflect the amendments to the law concerning the power of attorney.

It is a great thing that the trademark filing procedures in Mexico are becoming less formal. However, many Mexican lawyers and practitioners are worried about the consequences of such amendments in the long term, especially in connection to the validity and enforceability of trademark registrations issued without filing a power of attorney with the MPTO.

As I see it, the documentary evidence of the authority to file a trademark application or renew a registration on behalf of a third party –the applicant- is a different thing from the authority itself. Under the current amended statute, a trademark registration may not be invalidated due the lack of the filing of the power of attorney or due formal flaws in the document. However, a trademark registration or renewal could be invalidated due the absolute lack of authorization (verbal or written) to file the trademark or the renewal application. It may seem a very thin distinction, but technically speaking it is a huge difference.

It also seems that the MPTO will only consider the individual that actually signs the trademark or renewal application as attorney of record. If later, another professional from the same firm has any intervention in the prosecution of the application, the MPTO will not acknowledge him/her as attorney-of-record and will demand a written power of attorney, if it has not been filed, or payment of the government fee for the appointment of a new attorney of record. This will be an extremely delicate situation for firms that allow different professionals to intervene in the prosecution of trademark applications, and from my perspective, such a practice would be absolutely unfair and illegal.

Therefore, although no longer essential for the approval of the trademark application, I strongly recommend executing a written power of attorney and filing it with the MPTO at some point during the prosecution of the trademark application, or even after the issuance of the trademark registration or renewal, in order to secure evidence of the existence of the authority to do such filings.

Although less publicized, the amendments to the filing guidelines of the MPTO will introduce some changes in the practice of trademark filing and prosecution in Mexico. The most obvious change is that now there are mandatory templates for the most relevant filings with the MPTO; before the amendment, there were templates only for trademark and patent applications and for trademark renewal applications. Agents and lawyers prepared their petitions for all the other filings, in the way they better thought it suited the law and their needs. I would assume that the use of templates should help the MPTO to expedite the recordation of assignments, licenses and changes of name.

However, the MPTO is not only changing the guidelines; it is also changing some of its own practices, and not for good. An important change in the MPTO’s practice is that it will no longer allow applicants to request the issuance of certified copies of documents previously filed with the MPTO, at the same time that the applicant is fulfilling a certain requirement associated to a record or application different from the ones the documents were filed.

For example, let’s assume that there are two separate trademark applications for the same mark but in different classes, claiming the same priority from a multiple-class foreign application. In the past, one certified copy of the foreign trademark application was enough to have the priority rights acknowledged in both Mexican trademark applications. When requesting the MPTO to acknowledge the priority rights in one application, the applicant filed the original certified copy; in the other application, when requesting the acknowledgement of the priority, the applicant could ask the MPTO to issue a certified copy of the priority document just filed in the first application, in order to evidence the existence of the priority right.

Now, with the change in the practice of the MPTO, if there were two separate trademark applications for the same mark but in different classes claiming the same priority from a multiple-class foreign application, the applicant’s agent will have to obtain as many certified copies of the priority document as she/he may need, before requesting the acknowledgement of the priority rights, and file each request of acknowledgement of priority rights with its own priority document.

A similar situation will take place with the recordation of assignments, licenses, franchises, mergers, changes of name and securities, when they involve more than one trademark registration/application. Basically, the change of the MPTO’s practice will be reflected in an increase of the out-of-pocket expenses and in many cases it will jeopardize the timely filing of documents when there is a non-extendable deadline.

It is odd to see how, on one hand, the filing and prosecution of trademark applications are becoming less formal, and at the same time, the MPTO changes its practice to make the filing and prosecution of trademarks less expedite. It does not make any sense, and I believe it will be just a matter of time before some applicants start appealing the MPTO’s refusals to issue certified copies or to allow the intervention of more than one professional in the prosecution of a trademark application.