Madrid Protocol comes into force


On February 19 2013 the Protocol relating to the Madrid Agreement concerning the International Registration of Marks entered into force in Mexico. The process of incorporation into the Mexican legal framework began with the approval vote of the Senate on April 25 2012, as set out in the decree published in the Federal Official Gazette on May 25 of the same year.

The instrument of accession to the protocol, signed by the president on November 7 2012, was deposited with the director general of the World Intellectual Property Organisation (WIPO) on November 19 2012. On February 8 2013 the Decree Promulgating the Madrid Protocol was published in the Federal Official Gazette, and on February 12 2013 the Agreement Establishing the Guidelines for handling applications, requests and filings under the Madrid Protocol before the Mexican Institute of Industrial Property (IMPI) was published.

This agreement was issued for the following reasons:

  1. According to the notifications submitted on the occasion of the deposit of the instrument of accession, IMPI is the agency responsible for the registration of trademarks pursuant to the Common Regulations under the Madrid Agreement and the Madrid Protocol; and
  2. There is a need to make available to the general public the guidelines and specific requirements according to which IMPI will examine applications, requests and filings, as well as the annexed documents submitted in accordance with the protocol.

The guidelines aim to regulate international applications, requests and filings. These must be filed before IMPI under the Madrid Protocol.

Each Madrid Protocol application, request or filing submitted before IMPI shall comply with the formalities and guidelines established by the protocol, the Common Regulations (which, at the time of writing, had not been published in the Federal Official Gazette or the Industrial Property Gazette) and the International Bureau of WIPO.

The application, request and filing process under the Madrid Protocol will be governed by the Industrial Property Law and its regulations, the Agreement on fees for services provided by IMPI and the Agreement establishing the rules and criteria for the resolution of various procedures for the registration of trademarks before IMPI, as long as no statute provides otherwise.

Each Madrid Protocol application, request or filing submitted before IMPI shall be submitted in typed text and drafted in Spanish. Payment of the corresponding fees must be made and any annexed documents submitted in a language different from Spanish must be accompanied by an official translation into Spanish.

To file an international application before IMPI, as well as any other request or filing regarding the Madrid Protocol, the official valid format must be used and the requisite number of copies and annexes must be provided; these must comply with the guidelines issued by WIPO.

Upon receiving an international application, and for the purposes of certification, IMPI will assess whether the application meets the following requirements:

  1. the application has been submitted in the form prescribed by the Common Regulations;
  2. the applicant is entitled to file an international application.
  3. the indications contained in the international application match those included in the basic application or registration, pursuant to the protocol;
  4. the international application includes the date and number of the basic application or registration, as the case may be; and
  5. a receipt of payment of the fee corresponding to the establishment of a certified extract from the international register and the transfer of the international application, request or other documents before WIPO have been submitted.

If an international application meets the requirements set forth in the agreement published on February 12 2013, this shall be considered as the filing date of the application; otherwise, the filing date will be the date on which these requirements are fulfilled, within the time limits prescribed by law. Once the filing date has been acknowledged, IMPI will certify that the indications included in the international applications match those included in the basic application or registration, and will sign the application so that it can be forwarded to the International Bureau of WIPO. IMPI will notify the applicant of the date on which the international application was forwarded to WIPO.

Roberto Arochi, Arochi Marroquín & Lindner SC, Mexico

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