Both the old Industrial Property Law and the recently enacted Federal Law for the Protection of Industrial Property, state provisions that pose significant challenges, especially for holders of International Registrations. It is not that the Mexican legislation is particularly hostile to foreign applicants using the Madrid Protocol, but it ignores the special situation of users of the Madrid system before the Mexican legal system, namely, that they are not in Mexico.

The following are the three situations that, in my opinion, imply the biggest risk for Madrid users of losing the trademark protection in Mexico.

1. Oppositions.

Under the new law, if an applicant fails to answer an opposition within a two-month term counted from the day after the MPTO notifies said opposition, the trademark application or request for protection in Mexico becomes automatically abandoned. Right now, the MPTO does not issue an office action informing the applicant about the opposition and the term to answer; it just publishes the opposition in the Official Gazette (see example). If there is no office action, the MPTO sends nothing to WIPO.

The owners of International Registrations designating Mexico should review the Official Gazette (available online at https://siga.impi.gob.mx) to check for possible oppositions or hire someone to do it for them. It is true that the number or oppositions is relatively small if compared with the total number of trademark applications, but it takes only one unanswered opposition to ruin your day.

There is a possibility that, under the new law, the MPTO will issue an office action informing about the opposition, instead of simply publishing a notice in the Official Gazette. If this were the case, there is a chance that the MPTO will also send a notice to WIPO, so WIPO may notify the owner of the International Registration about the opposition. This would greatly benefit Madrid users, but we do not know, at this point, if that is going to happen. The Federal Law for the Protection of Industrial Property entered in force less than a month ago and there are many things we do not know how they are going to work.

2. Declarations of use.

All owners of trademark registrations issued on August 10, 2018 and on, must file a declaration of actual and effective use of the trademark (and a fee) with the MPTO within a short non-extendable three-month term after the third anniversary of registration or grant of protection in Mexico.

Another declaration of use is due when or after the renewal for all trademark registrations, no matter the date of issuance of the registration or if it is an International Registration.

Most likely, owners of International Registrations will not file the declaration of use or the fee simultaneously with the renewal application. Fear not: under the new law, the MPTO must request by mean of an office action the declaration of use if it was not filed with the renewal[1]; but do fear, we do not know yet how the MPTO would notify such an office action[2]. The sensible thing to do would be sending the office action to WIPO, allowing WIPO to notify the International Registration holder. However, there is the risk that the MPTO may decide notifying the request for the declaration of use through a publication in the Official Gazette, as it would happen with a regular domestic trademark registration. If the trademark owner fails to timely answer the office action and file the declaration of actual and effective use, the protection in Mexico will be abandoned.

3. Summons of invalidation and cancellation actions.

Many International Registrations get protected in Mexico without difficulties: there were no oppositions or refusals. Of course, that is good, but there is downside. The lack of intervention of a counsel addressed in Mexico also means that the owner of the International Registration does not have an address in Mexico where the MPTO may serve summons of cancellation or invalidation actions.

When the MPTO cannot serve summons of an invalidation or cancellation at the address of the trademark owner, the statute stipulates that the MPTO must serve summons through a publication in the Official Journal of the Federation and one of the main newspapers in Mexico. As you may imagine, there is a high chance that the owner of the International Registration never actually knows about the invalidation or cancellation action, eventually losing the trademark protection.

The only remedy would be appointing a Mexican lawyer or agent for each International Registration where Mexico was designated.

Update December 2020: This unfavorable situation caused for the lack of an address within the Mexican territory will eventually disappear after the third year of protection in Mexico, as a consequence of the filing of the declaration of actual and effective use. As I stated above, the declaration of use must be filed by an agent or counsel in Mexico, and she/he will state an address in Mexico when filing. It would be up to the trademark owners deciding if they want to wait three years before appointing a lawyer in Mexico.

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The Madrid Protocol is a great mechanism to protect trademarks in several jurisdictions in a cost-effective manner. However, maintaining the protection in Mexico involves some challenges that trademark owners should address. Hopefully, the future Rules of the Federal Law for the Protection of Industrial Property, to be published in a not-so-distant future, will soften some of the provisions that negatively impact Madrid users. Meanwhile, trademark owners should take steps to avoid losing rights on their valuable intangible assets.

[1] Under the old law, the trademark owner had only three months to file the declaration of use and fee, counted from the day after WIPO notifies the MPTO the renewal, with no request or office action.

[2] Actually, there is an inconsistency between the new law and the recently amended (November 11, 2020) Administrative Guidelines for the attention of Madrid filings. The new law expressly states that the MPTO will request the declaration of use if it were not filed with the renewal application, but the Guidelines state that no request will be issued. Of course, the law should prevail over the guidelines, but this kind of inconsistencies are not helpful at all.

La entrada The Mexican Industrial Property Law is tough on Madrid users se publicó primero en Reyes Fenig.

Mexico joined the Madrid Protocol on November, 2012, and started accepting international registrations on February, 2013 (read our article about the accession of Mexico to the Madrid Protocol).

The Madrid Protocol is not perfect and applicants may find problems with the simultaneous examination of trademarks in different countries but, in general, I think it has proven to be a successful tool for international businesses.

Some countries’ legislation may provide specific burdens on right-holders of domestic and international registrations, forcing them to prepare additional filings to maintain the trademark rights in those countries.

The new Federal Law for the Protection of Industrial Property entered in force on November 5, 2020. It provides the filing of a declaration of actual and effective use. Such a declaration was added to the Mexican legislation since May, 2018.

The burden of filing the declaration of actual and effective use will impact, sooner or later, all trademark owners in Mexico, including owners of Madrid international trademark registrations.

The declaration of actual and effective use is due on two different moments:

1) Declaration of use after three years of registration.

The owners of trademark registrations issued on August 10, 2018, and thereafter, must file a declaration of actual and effective use, after the third anniversary of issuance of the registration. In the case of Madrid applicants, the filing is due after the third anniversary of granting of protection in Mexico (read our post about the new declaration of use).

The statutory term to file the declaration of use is very short: three months only, counted from the date the trademark registration (or the granting of protection of the international trademark registration in Mexico) becomes three years old.

One declaration is due per domestic registration. In the case of Madrid international trademark registrations, if the protection in Mexico was granted in more than one Class, one declaration of use is due in each Class; the Mexican Patent and Trademark Office (MPTO) assigns one separate Mexican registration number for each Class of products or services comprised in the International Registration. Further, each declaration of use has to be filed electronically or at the window of the MPTO by a local attorney authorized with a power of attorney. A government fee (about US$85.00) has to be paid with each declaration of use.

Failure to file the declaration of actual and effective use would result in the cancellation of the Mexican trademark registration or international registration, in full or in the Class where the declaration of use was not filed.

Furthermore, the protection in Mexico of the international registration shall be maintained only for the goods or services stated in the declaration(s) of actual and effective use.

2) Declaration of use when renewing.

A declaration of actual and effective use is required for all domestic trademark renewal applications filed on or after August 10, 2018.

In the case of Madrid International Trademark Registrations, a declaration of actual and effective use is due if filed on or after August 10, 2018. Given that it would be very difficult to file the declaration of use and the fee when filing the renewal with the World Intellectual Property Organization (WIPO), the MPTO will issue an office action, requesting the declaration of use and the fee[1]. We do not know if the MPTO will serve the office action through WIPO or if it will notify it through the Official Gazette.

One declaration of use per Class involved in the International Registration is due, and it has to be filed electronically or at the window of the MPTO by a local attorney. A government fee (about US$85.00) must be paid with each declaration of use, regardless any fee paid at WIPO with the renewal application.

The protection in Mexico shall be maintained only for the goods and/or services stated in the declaration(s) of actual and effective use.

[1] Under the old Industrial Property Law, the owner of the International Registration had three months to file the declaration of use, counted from the date WIPO notified the renewal, with no requierement from the MPTO. The notices that WIPO received from the MPTO explaining these, back then, new burden, may be reviewed here and here.

La entrada Madrid users, be warned: Renewing the International Registration is not enough in Mexico (Update 2020) se publicó primero en Reyes Fenig.

On April 28, 2016, the Chamber of Representatives informed that it passed a bill that will amend the Mexican Industrial Property Law and insert an opposition system for trademark applications. The bill was approved by the Senate a few months ago, so all it takes is the publication by the President, which should happen soon. The amendment will be effective 90 calendar days after the publication in the Official Journal of the Federation.

(Update June 7, 2016: The amendments to the Industrial Property Law that introduced the opposition to trademark applications were published in the Official Journal of the Federation on June 1, 2016. The amendments and the opposition system will become effective on August 30, 2016)

The lack of an opposition system did not mean that trademark applications were not examined. The Mexican Patent and Trademark Office (MPTO) conducted the substantive examination ex-officio. If the examiner found obstacles, such as lack if distinctiveness, an identical or confusingly similar earlier registered or applied trademark covering the same or similar goods or services, or a well-known non-registered trademark, he issued an office action and allowed the applicant to answer and argue against the alleged lack of distinctiveness or similarities.

Further, if a third party believed that the approval of the trademark application could harm its rights, it could file an informal opposition. The informal opposition was a more or less short brief, calling the examiner’s attention to the existence of certain rights that could be harmed or infringed if the trademark application was approved. If the informal opposition was filed early in the examination proceeding, it had a good chance of being considered by the examiner and even cause the abandonment or final refusal of the opposed application.

The informal opposition was particularly effective to inform the examiner about the existence of a trademark application with a priority claim that predated the filing date of the examined application. It was not so effective when the ground of the opposition was earlier use in Mexico or abroad of an identical or confusingly similar trademark. If the MPTO approved an application for a trademark that was confusingly similar to another trademark used by a third party in Mexico or abroad to distinguish the same or similar goods or services, such third party could file an invalidation action, provided that it could prove that the use was earlier and continuous.

There has been an actual formal opposition (that has never been called like that) that takes place when a trademark application is subject of a final refusal because of the existence of an earlier registered or applied trademark in Mexico and the applicant files an appeal with the Federal Court of Tax and Administrative Affairs (FCTAA). In those cases, the court would serve a copy of the appeal to the owner of the anticipation, allowing it oppose the appeal by defending the legality of the final refusal, and even filing a final appeal (amparo) if the FCTAA’s decision were against the MPTO (see my earlier post Oppositions to trademark applications in Mexico).

Under the new opposition system, trademark applications will be published within ten business days after the filing date, regardless if formal requirements were meet. Third parties would have a one-month term to file an opposition.

The possible grounds for opposition will be broad, but limited to the substantive causes of non-registrability provided in sections 4 and 90 of the Mexican Industrial Property Law. For example, possible grounds of opposition would be descriptiveness of the trademark, illegal reproduction of the name or pseudonymous of an actual person, or the existence of an earlier identical or confusingly similar trademark registration or application in Mexico to identify the same or similar services.

On the other hand, earlier and continuous use (in Mexico or abroad) of an identical or confusingly similar trademark registration or application in Mexico to identify the same or similar services may not provide grounds for an opposition. Bad faith of the applicant because it was the licensee, representative, distributor or agent of a foreign trademark owner may not be a valid cause of opposition either. In these cases, the only available remedy has been and would be an invalidation action against the Mexican trademark registration.

There will be a government fee for opposing a trademark application. I do not know how much it will cost, but the reason behind the government fee is discouraging frivolous oppositions, thus I would expect it to be around US$150.00.

Oppositions would be published, and the applicant will have one month to answer the opposition and file arguments and evidence to support the application.

The Mexican opposition system intends to be simple and avoid becoming a burdensome time-consuming proceeding, as it happens in some South American countries. The opposition will be more a source of information for the examiner than a contentious proceeding (somehow similar to the ‘Letter of Protest’ in the United States) .

After the MPTO decides issuing the trademark registration or the final refusal of the application, the opposing party will receive a written communication informing about the success of the opposition or the approval of the trademark application. If the opposition were not successful, the opposing part may file an invalidation action.

Would the new opposition system significantly change the state of things in Mexico? I don’t think so.

In my opinion, the new opposition system provides rules and terms to an existing practice, without actually changing it. Trademark applications will continue being examined in the same way they used to. Further, the opposition and the result would not prejudice about third party’s rights or the intrinsic legality of the trademark registration, and the causes of invalidation will be available regardless if there was as opposition.

The lawmakers that supported the bill stated that the adoption of the Madrid Protocol encouraged the creation of the opposition system (I do not see the connection). According to the lawmakers, the opposition will help to reduce the number of invalidation actions, improve the quality of trademark examinations and provide right-holders –especially owners of earlier Mexican trademark registrations and applications- with a very cost-effective tool to protect their rights.

La entrada Mexican Congress approves trademark opposition system. se publicó primero en Reyes Fenig.

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 a 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 is 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: Starting 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.

One declaration of use is due for each Class listed in the Interntional Registration. Failure to file the statement of use would result in the extintion of the protection in Mexico for the particular Class where the declaration was not filed.

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

(Update March 7, 2019) The owner of the international registration must also file a statement of use in Mexico after renewing such an international registration, at the window of the MPTO, within a three-month term after WIPO notifies the MPTO about the renewal. In practice, this filing may be challenging and Madrid users must be carful. More information here.

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.

La entrada Some problems that Madrid users may face in Mexico se publicó primero en Reyes Fenig.

The Madrid Protocol should enter into force, with respect to Mexico, on February 19, 2013, although the text of the international treaty has not been officially published in our country.

Unfortunately, we still do not know if any changes will be made to the Mexican statutes and rules in order to adjust them to the Madrid Protocol. So far, Mexico does not have an opposition system and I have no information if there is the intention of creating one (See update of May 1, 2016 Mexican Congress approves trademark opposition system). The experience in Italy shows that an opposition system is not necessary for the actual operation of the Madrid Protocol. Nevertheless, most practitioners believe that it would be important –not essential- amending the law to create an opposition system.

The creation of an opposition system in Mexico would require the Congress to amend the Industrial Property Law. The Congress should be careful with the design of the opposition proceeding, so it does not become a mechanism that extends the application procedure forever.

I regret to say I am no optimistic about the quality of the possible amendments to the Mexican law associated to the Madrid Protocol. It is no secret that the accession of Mexico to the Madrid Protocol was because pressure of the United States (Mexico’s main commercial partner) and not because the needs of the Mexican businesses, as the Mexican Secretary of Economy himself accepted. Further, the short term in which the Madrid Protocol will become in force in Mexico makes me think that it is likely that the possible amendments will not receive enough care and attention in their planning and drafting. I sincerely hope to be wrong.

Another situation that we should not ignore is the cold reception of the Madrid Protocol among trademark practitioners. It would not be a surprise that the accession of Mexico to this international treaty will be challenged, and that the validity of international applications and registrations will be attacked in the courts with all sorts of arguments. (Update May 1, 2016. So far, I have not heard of such challenges).

An issue that, in my opinion, has not been studied in Mexico is the rank that should the given to the Regulations of the Madrid Protocol in relation with other domestic statues, rules and regulations. We have this same issue with the Regulations of the Patent Cooperation Treaty (PCT). If there is a contradiction between the Rules of the Madrid Protocol or the PCT and a federal statute, which one should prevail? What is the rank of the Regulations of international treaties in the Mexican legal system? A non-binding but widely accepted precedent from the Supreme Court states that international treaties are of higher rank than federal laws, but the Regulations of the Madrid Protocol and the PCT are –technically- not part of the international treaty or some other kind of international agreement acknowledged by our law; certainly they are not federal laws or Regulations issued by the President. I have thought that this problem could be solved by claiming that the domestic statutes and regulations are the general law, and that regulations of the international treaties are specific law, thus the regulations of the international treaties should prevail (Sorry, but I do not know the name of this canon in English or Latin). However, I am not fully comfortable with this solution because the lack of certainty about the rank of the regulations of the international treaties within the Mexican system (it would be either very high or the lowest).

We will probably have to wait for case law from the administrative and judicial courts, but this is such an interesting and potentially relevant problem that Mexican lawyers should start discussing it right now.

La entrada Mexico joins the Madrid Protocol se publicó primero en Reyes Fenig.

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.

La entrada Mexico and the Madrid Protocol se publicó primero en Reyes Fenig.