27 Dec
2018

Mexican trademark registrations under Madrid System – convenient solution, but no guarantee

Uhthoff, Gómez Vega & Uhthoff

The Madrid System can be used as a simple solution for registering trademarks worldwide. However, it does not guarantee that a trademark will be accepted in all designated countries.

Globalisation has led companies and business professionals to seek broader IP protection. Meanwhile, an increasing reliance on e-commerce is forcing trademark owners to pursue registration in multiple countries, since goods or services may be available in different locations. In this regard, the International Trademark System – known as the Madrid System – has become a convenient solution for registering trademarks worldwide. However, using the Madrid System does not necessarily mean that a trademark will be accepted in all the designated countries. The Mexican Trademark Office (IMPI) has specific criteria that sometimes differ from other jurisdictions, which can lead to issues for applicants seeking registration in Mexico.

Unlike other countries, Mexico’s Industrial Property Law does not allow multi-class applications. If an international registration designating Mexico covers more than one class, it will be sub-divided into national applications (one per class) and subject to individual formal and substantive examination.

In light of this, the IMPI sometimes grants protection for certain classes but issues provisional refusals for others. A provisional refusal may also refer to all the classes covered by the international registration, in which case the applicant must file a response for each designated class. This may raise the costs for the applicant, because government fees are charged for each national class, not for the international registration.

Possible objections during prosecution

Description of goods or services

Although WIPO examines the list of goods and services according to the Nice Classification, when designating Mexico there may be some discrepancies regarding the description requested, either because of a mistranslation of the goods made by WIPO or because of the strict criteria that some examiners apply regarding the specification of goods and services. Recent amendments to the Industrial Property Law no longer allow an application to be covered by a class heading, but require the applicant to be specific in the products and services descriptions.

Transferring goods or services between classes in an international registration designating multiple classes

Another situation is when the goods or services are duly specified, but the trademark examiner considers that they fall into a different class. In this case, if the international registration covers the class in which the goods or services belong, the IMPI may transfer them ex officio to the corresponding class and notifying the rights holder. Otherwise the examiner may request that the objected goods be deleted. The issue arises when the transfer of goods or services occurs following a mistranslation by WIPO. In such event, the applicant will have to file a writ at the IMPI, requesting the amendment of the descriptions involved. Sometimes these errors come from a mistranslation, which has passed unnoticed by the examiner, resulting in an improper description and protection of the mark.

Objections based on absolute or relative grounds

Regarding the substantive examination, objections may arise in connection with the inherent registrability of the mark (including lack of distinctiveness, descriptive trademarks and duplicity grounds) or due to the existence of prior trademark registrations or applications which the trademark examiner considers confusingly similar.

In relation to prior trademark rights, one recent amendment to the Industrial Property Law states that the IMPI will, in exceptional cases, grant protection to trademarks that are confusingly similar to prior registrations or applications if the rights holder expressly consents to their coexistence and protection. Notwithstanding this, the final decision regarding the allowance of a registration based on a consent document remains at the discretion of the authority once the merits of the case have been studied.

Related companies

The IMPI may issue a provisional refusal on grounds of the existence of similar prior registrations; however, it is common for similarity between marks to stem from the fact that the applicant and holder of the prior registration belong to the same economic group. In this sense, the IMPI does not allow the coexistence of identical or confusingly similar trademarks in the name of different entities, even if they are related companies that belong to the same economic group.

On the objections of the examiner on the basis of either formal or substantive grounds, the applicant is given the opportunity to submit arguments in an attempt to overcome these objections within the two-month term (which can be extended for an additional two months). The response to the provisional refusal must be filed directly through the IMPI in order to avoid the abandonment of the application, for which the applicant would have to appoint a local agent.

Even if the applicant filed a partial cancellation through WIPO in relation to the goods objected to by the IMPI, a response to the provisional refusal must be filed through IMPI, otherwise the application will be deemed abandoned.  

Declaration of use

A declaration of use is now mandatory. The consequence of not complying with this obligation is that the trademark will be considered lapsed by the IMPI on an ex officio basis.

The declaration of use has raised an array of questions and confusion, especially concerning international registrations, since specific rules apply. Unlike renewal applications which may be filed through WIPO, declarations of use must be filed directly through the IMPI by the rights holder’s authorised representative, which must have an address in Mexico. The declaration of use will be filed at different times:

  • For trademarks granted from 10 August 2018, a declaration of use must be filed within the three months of the third anniversary from the date on which the national registration was granted.
  • On submitting a renewal petition, declaration of use must be filed within the three months following the renewal notice by the WIPO International Bureau. There is an exception for filing a declaration of use when the renewal of the international registration happens to be before the third anniversary of the registration of the national application, in which case the declaration of use will be filed within the three months of the third anniversary from the date on which the national registration was granted.

In order to keep track of deadlines, applicants should appoint a legal representative in Mexico, especially considering that not all national registrations derived from an international registration necessarily have the same grant date.

Filing a trademark application through the Madrid System may have some benefits for trademark owners attempting to obtain protection in several countries; however, if the applicant is unaware of the issues that may arise in each designated country, the procedure may become time consuming and costly.

Giselle Ruiz Balcázar

Associate

gruiz@uhthoff.com.mx

Giselle Ruiz Balcázar has more than four years’ experience in IP matters and has been an associate in Uhthoff Gómez Vega & Uhthoff’s trademark department since October 2017. She has a law degree from Universidad Panamericana and a master’s degree in business law from Centro Universitario Villanueva in Madrid, Spain. Ms Ruiz Balcázar is an active member of the Mexican Association for the Protection of Industrial Property and is fluent in Spanish and English.