My foreign colleagues frequently asked if Mexico will join the Madrid Protocol, and when. My usual answer was that I did not know. I thought that Mexico would join shortly after the United States did, but nothing happened. Well, the accession of Mexico to the Madrid Protocol is imminent now.

On April 3, 2012, the Secretaría de Gobernación or Ministry of the Interior submitted the text of the Madrid Protocol to the Mexican Senate for its review, discussion and approval. This legislature will have the last session in a few days, and the rumor is that the senators want to ratify this international treaty before the sessions period is over (Update May 14, 2012: On April 25, 2012, the Mexican Senate approved the accession of Mexico to Madrid Protocol).

Update July 18, 2012: In a private meeting with members of the Mexican Bar, the General Director of the Mexican Patent and Trademark Office clarified that although the Senate approved the accession of Mexico to the Madrid Protocol, the accession instrument has yet to be deposited with WIPO, and such deposit is not scheduled yet, so Mexico is not a party yet of the Madrid Protocol and we do not know when the treaty will enter into force with respect to Mexico.

Update December 23, 2012: On November 29, 2012 the Mexican government deposited the instrument of accesion at WIPO. Read Mexico joins the Madrid Protocol.

The position of the Mexican Chapter of the AIPPI, and of most of my colleagues, is of dismay. They have claimed for many years that Mexico should not join the Madrid Protocol because it does not benefit Mexican businesses and the treaty has serious technical deficiencies.

I do not know the Madrid Protocol well enough to discuss its technical deficiencies; what I know is that the people in Mexico that claimed that the Madrid Protocol is technical deficient did not produce a single paper demonstrating the alleged technical problems. Of course joining the Madrid Protocol will create problems in Mexico: we will have to adjust the Mexican legislation and procedures, create an opposition system and decide how the national trademark registrations will interact with the international registrations, but I do not see these issues as intrinsic deficiencies of the Madrid Protocol. If the Madrid Protocol was so technical deficient, we did a lousy job proving it.

Update July 18, 2012: In a private Seminar held in Mexico City on July 5, 2012, one of the highest rank officials of the Mexican Patent and Trademark Office stated that changes in the Mexican legislation and rules were not seen as essential before depositing the accession instrument with WIPO. Actually, it seems that the Mexican Patent and Trademark Office is not sure if there the law should be amended and how.

People, especially lawyers, do not like changes, and the Madrid Protocol will force us to change law and practices.

However, I do believe that Mexico should not access the Madrid Protocol because it does not seem in the best interest of Mexican businesses.

Although we live in a globalized world and Mexico is a very open economy, Mexican businesses “export” a relatively low number of trademarks. That can be explained because about 80% of our exports are bound to the United States. Therefore, if there is interest in protecting a trademark abroad, in most cases such interest is limited to the United States. On the other hand, Mexico’s policy does not actually intend to diversify the destiny if our exports. On the contrary, the idea is making Mexico more attractive for foreign investors as a way to gain access to the US market by developing local suppliers and taking advantage of the rules of origin provided in the North America Free Trade Agreement.

So, if the Madrid Protocol is not that good for Mexican companies, why would Mexico join? I think the actual reason why Mexico decided to take steps to access the Madrid Protocol is that the Mexican government is convinced that it will make our country more attractive to foreign investments. Although that may be true, I believe that stating that joining the Madrid Protocol will equally benefit Mexican and foreign businesses is very naive.

Update August 3, 2012: Periódico El Economista informed that the Mexican Minister of Economy revealed that the approval of the Madrid Protocol was because it was a condition set by the government of the United States to support the accesion of Mexico to the Trans-Pacific Partnership or TPP.

Update January 2015: Mexico started accepting international designations on February 2013. For a quick view of some practical problems of the Madrid System in Mexico, click here.