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Mexican Trademark Legal Framework Transformation, IP Firms Adapting To Change

By Laura Collada
Posted: 18th November 2014 09:25
Up to date, Mexico has been working more than 18 months with the Madrid Protocol.  Mexico adhered to the Madrid Protocol on 19 November 2012 and it entered into force on 19 February 2013.
Our TM legal framework still lacks an opposing system and we are still working with single class methodology.  The outstanding and surprising thing is that even with these shortcomings the Madrid Protocol system works in our country.  However there are a lot of buts.
"The key to success is often the ability to adapt" (anonymous).  Adaptation has been the name of the game for Mexican IP firms the last 18 months, why?  Because almost everything changed on the way of making business as well as in the way we deliver our services.  The fact is that different realities make us approach the system differently.
Just some figures to explain myself; the Mexican Institute of Industrial Property(IMPI) as an Office of Origin (WIPO Data ) has received very few Mexican applications, mainly 74 international applications (which through the system are equivalent to 662 single class applications, in several jurisdictions.  As of July 2014, 103 applications have been submitted.  On the other hand until July, 2014 there have been 17,560 applications submitted according to the Madrid Protocol being Mexico the designated office.  So as you can see there is no balance at all.
The large amount of Mexican applications filed via WIPO could be a sign of novelty.  I'm sure that many experienced trademark lawyers throughout the world which regularly use the MP would try the international route just because the multi-class option, another reason to use the international route could be to make it less expensive.  Nevertheless we should not forget that those designations will be prosecuted as national applications within the national framework and many of the advantages of the Madrid Protocol system will dilute. 
First and foremost we still do not have an opposition system.  This means in many cases that it will be a must to challenge registered trademarks to overcome anticipations.  Today IMPI's practice, when issuing a provisional refusal, does a comprehensive examination in which both formalities and anticipations and impediments will be cited.  The alternatives for overcoming the office actions are diverse.
While filing a response to the Mexican Trademark Office might be suffice, there are many other cases in which filing a cancellation action might be the way of action depending obviously in a case by case analysis.  Many of such actions require to conduct extensive investigations to verify whether the owner of the cited anticipations or recorded licensee have been using the relevant trademark, also sometimes the evidence needs to be legalized and provided with apostille.  All these factors mean that the prosecution will not be an inexpensive one.  Also it is important to highlight that the Mexican Trademark Office will take from eight to 12 months to issue a decision and it may be appealed before the Federal Court of Tax and Administrative Affairs through their IP Court.
But the twists and turns described in the above paragraphs have been the reality of Mexican trademark practice for many years, so where does the adaptation lead to success?  Once more it will depend on the needs of the client.  Besides anticipations the most important ground for provisional refusals is classification, but as far as I know it is the same all over the world.  So what is the trick?  I think that it depends on the advice of the Mexican counsel analysing the client/holder needs in our country and the advice would be as evident as a different wording in the classifications as to comply with the Mexican practice or as shocking to not file through the international system and file direct.  And here is what I see as that Mexican trademark lawyers have to adapt in the way they advise and deliver their legal services.
So far in Mexico there are three ways to file that coexist meaning the Madrid Protocol, the traditional filing and e-filing and each and every one of them has its own advantages and disadvantages, nonetheless everyway will lead us to the prosecution described in the above paragraphs BUT there are differences that will depend on advice and legal strategies to define which is the best way to file.  We all know the advantages of the MP but we have the 18 month period.  If it is important to secure rights as soon as possible the best way to go is e-filing, if in the prosecution doesn't occur anticipations or impediments the MTO will be granting the trademark in approximately three or four months.
The adherence to Madrid Protocol was very controversial in Mexico but it has proven it works.  Our trademark office has worked hard training examiners but also it has been doing a great job since it has been well publicised and it is new and people want to try it.  Unfortunately there is no balance because in many ways Mexico was not prepared for the Madrid Protocol.  Mexico is still dealing with commodities and even though our manufacturing industry is very strong, they are centered in a domestic market.  The majority of Mexican trademarks that had been filed abroad were filed before this treaty was part of our legal framework and it was a work done basically through corporate teams or in house counsels.
However, and this is a personal opinion, if Mexico wants to be part of "major leagues" we have to start playing like if we are already there.  For many trademark attorneys that are "old" users of the Madrid System all this may seem a little bit off, but for a newcomer is completely understandable, we must adapt or perish.  Also, everyone is paying attention to the "Mexican experience" since we are the spearhead of the countries joining Madrid in Latin America and so far we are a successful example that it can work and that our region can be at the vanguard of IP international practices.
Laura Collada has been the managing partner of Dumont Bergman Bider & Co SC since 2008.  She has many years of experience in the IP field.  Her practice covers the complete lifecycle of IP rights, from consultancy to application, and from enforcement to dispute resolution.  Ms Collada graduated with honours in law from the Instituto Tecnológico Autónomo de México (ITAM) in 1986, and completed further specialties in IP, corporate, civil, constitutional and environmental law (with honours) at the Universidad Panamericana and a specialist course in contracts at ITAM.  She has taught copyright and IP law at different universities in Mexico City, and the Mexican Republic.  She has written about IP for national newspapers and international IP magazines.  Ms. Collada is an active member of national and international professional organisations including IMPI, AMPPI (Mexican Chapter of AIPPI), BMA (Mexican Bar), INTA, AIPPI, MARQUES, PTMG, ASIPI AIPF, and ECTA.  She speaks Spanish and English.

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