Mexican Trademark System: A Work In Progress
By Mrs. Laura Collada
Posted: 21st December 2012 09:57The legal framework of trademarks in Mexico is changing rapidly. The past couple of years have shown a tendency to modernise our Trademark System. However, all these changes raise a very important question; how many amendments can a system take without running the risk of collapsing?
Following the fundamentals of the Roman law and the Napoleon’s Code, the Mexican Industrial Property Law (MIPL) and the procedures provided therein are quite formalistic. Since its issuance, the MIPL (1991) attempted to modernise the entire trademark legal system. The basic reason was to have a body of rules with the same level of rights and venues of enforcement as other jurisdictions because we were about to sign the North American Free Trade Agreement (“NAFTA”). Practitioners, authorities and judges had to interpret a new language that was not common in our legal system, simply because we had to introduce paragraphs from NAFTA and include them in our legislation. We had a hard time doing so, but in the short run it was working, not perfectly, but working at the end.
Recent changes can be seen as subtle, but in fact they are not. One of the most frustrating requirements – at that time – regarding a trademark filing was the power of attorney in which in so many cases it had to be legalised and “apostilled” (Hague Convention). Nowadays, when filing a fresh application, the power of attorney is no longer a necessary subject, that from the very beginning until its granting it is handled by the same attorney, and there is no conflict involved (an invalidation or cancellation action). This simple change encourages more filings in our country decreasing costs significantly in connection with legalisation and the Apostille. This is probably a unique exception within our legal system, where it is practically mandatory to have a valid and formal POA to represent a third person. Without any question, this exception places our trademark system as one of the most advanced and simplified.
The same has happened with priority documents when also filing a trademark. No more certified copies are necessary. Same case, same view. Furthermore, Mexico has recently adhered to the Madrid Protocol and there is a variety of opinions regarding this Treaty as well as the internal process for its adoption.
The most relevant issue concerning this international instrument is that Mexico - in turn as almost all other jurisdictions that had adhered - we do not have an opposition system contained in the MIPL. Furthermore, there are many other modifications within our legal system that should be conducted before the Madrid Protocol is fully in force. At this time the treaty has been deposited with WIPO (19 November 2012) and it seems - according to the last news - that it will fully in force within the next three months.
Unfortunately, now is not the best time to conduct any amendments to our legislation, given that next 1 December 2012, a new President will take office in Mexico and even though the most important Officials will be appointed at the same time, it is uncertain what changes will be made within the Mexican Institute of Industrial Property (IMPI). Also, it is important to bear in mind that our Congress will be discussing in the upcoming months other new pieces of legislations or bills, which according to our current political situation are a top priority. At this moment, there is not a formal project to introduce an Opposition System within the MIPL.
Furthermore, an even though that the Madrid Protocol was approved by the Mexican Senate since 25 April 2012 it is also uncertain if IMPI is administratively ready for the new way of working and the administrative burdens that such international instruments carries with its inception.
It is also well known that in the last two years IMPI was completely transformed. After 19 years a new Commissioner was appointed. Almost all top officers were changed and with them came a new way of working and different criteria. As today, authorities and practitioners were trying to improve the quality of the service provided by IMPI. We had been working in many issues such as classification, official actions, defined and transparent criteria that obviously will have to be redefined with the implementation of the protocol. As a parallel work IMPI was striving to modernise internally and the last major improvement was the online trademark filing (i.e. filing) that started late September of this year without much success taking under consideration the amount of filings done this way in the last couple of months.
The opposition system is not “a must” to implement the Madrid Protocol but, without it, Mexico is in disadvantage compared to the rest of the members of the treaty and because of this, many of the reasons for its adoption - such as making the filing of trademarks easier, cheaper and simpler - would be compromised.
Also, the discussion, approval, adhesion and deposit of the Madrid Protocol is clouded with arguments that this process was not conducted through the correct channels and therefore the validity of all trademarks granted under such legal framework could have the possibility of being considered as null and void. At the time this article is written, there is a Constitutional Appeal addressing this issue and there is not a final resolution from our High Courts (Colegiados) ruling if the process was crystal clear or not.
For all these reasons, I deem that the Mexican Trademark System is a work in progress. Things will definitely change but today the climate of uncertainty is what prevails among the IP practitioners. We really do not know how it is going to work and we do not know what will be the outcome. The only certain fact is that we will have to adapt to whatever situation comes out from all these amendments and modifications. It is not the first time that things have been done in this way and that from a new status quo we have to build all the necessary tools to work and deliver the results that our national and international clients are asking for.
This point of view is not a pessimist one; it is simply the description of the facts that prevail in the trademark practice in our country nowadays. The process was not good; we should have anticipated the approval of the Protocol and work beforehand on all the necessary amendments, administratively and normatively speaking.
Moreover, political times are not the best. Our whole government administration is changing and it is the worst time to speak about continuity, internal knowledge of a government agency, etc. The future seems a little grey but I am sure that we will work it out. I am positive that all IP attorneys and practitioners will do everything in our hands to secure the rights of our clients and work together with the authorities to overcome this grey period. We are completely sure that even if it is a work in progress, the legal certainty on IP rights and a clear and swift enforcement of them is a must in Mexico.
Mrs. Laura Collada is a managing partner at Dumont Bergman Bider & Co. Graduating with honors from the Instituto Tecnológico Autónomo de México(ITAM), Laura has Law Specialisations in Intellectual Property, Corporate, Civil, Constitutional and Environmental Law (all of them with Honors) from Universidad Panamericana and a Legal Specialisation in Contracts from the ITAM.
She has taught Copyright and Intellectual Property Law at different universities in Mexico City, Aguascalientes and Veracruz. She has over 25 years of experience in Intellectual Property and was Director of the Sub-office for the Prevention of Unfair Competition at the Mexican Industrial Property Institute (IMPI). Her practice includes the complete lifecycle of Intellectual Property rights, from consultancy to application, to resolving disputes involving these rights. She has written several articles for a national newspaper on issues related with Intellectual Property as well as in IP magazines and is a speaker at conferences on this subject. She is an active member of national and international professional organisations, including: AMPPI (President of the Trademarks Committee), Barra Mexicana Colegio de Abogados, INTA, AIPPI, Marques, APLF, ASIPI, AIPLA and PTMG. Laura is fluent in both Spanish and English.
Mrs. Laura Collada can be contacted by phone on +52 (55) 5322-6230 or alternatively via email at email@example.com