ISSUES SURROUNDING TRADEMARK REGISTRATIONS IN MEXICO UNDER MADRID

I.Globalization has lead companies and business people to look for broader intellectual property protection, including that available for trademarks.

Ecommerce for instance, due to its nature, forces trademark holders to seek 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, this does not necessarily mean that the trademark will be accepted in all the designated countries. In this sense, the Mexican Trademark Office (IMPI) has very specific criteria that sometimes differ from other jurisdictions, which can lead to some issues for the applicant when choosing Mexico as a designated country.

First, it is worth mentioning that unlike other countries, the Industrial Property Law in Mexico does not allow multi-class applications. If an International Registration designating Mexico covers more than one class, the same will be sub-divided into national applications, one per class, and the same will be subject to individual formal and substantive examination.

In light of the foregoing, it sometimes occurs that IMPI grants protection for some classes but issues provisional refusal for others, or the 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. The aforementioned may raise the costs for the applicant because government fees are charged not for the International Registration but for each national class.

II.In connection with the above, some of the objections that the applicant may eventually face during the prosecution of an international registration designating Mexico are the following:

-Description of goods or services: Even though 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/services. Now, even more, recent amendments to Mexican IP Law do no longer allow to cover a class heading, requiring 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, IMPI may transfer them ex officio to the corresponding class notifying such transfer to the holder, otherwise the examiner may request to delete the objected goods.

The issue arises when the transfer of goods or services was produced as a consequence of a mistranslation of the same by WIPO, in such event, the applicant will have to file a writ at IMPI requesting the amendment of the descriptions involved.

Sometimes these errors derive from a wrongful translation pass unnoticed by the examiner having as a result an improper description and consequently protection of the mark.

-Objections on the basis of either 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, duplicity grounds, or due to the existence of prior trademark registrations or applications which the trademark examiner considers confusingly similar.

In relation with prior trademark rights, it is important to mention that one of the recent amendments to our IP Law now states that IMPI will exceptionally grant protection to trademarks that are confusingly similar to prior registrations or applications if the holder expressly consents the coexistence and protection of the same. Notwithstanding the aforementioned, 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 are studied.

-Related companies: As mentioned before, IMPI may issue a provisional refusal on grounds of the existence of similar prior registrations, however, it is very common that the similarity between the marks comes from the fact that the applicant and the holder of the prior registration belong to the same economic group. In this sense, IMPI does not allow the coexistence of identical or confusingly similar trademarks in the name of different entities, even if these are related companies that belong to the same economic group.

III.Upon the objections of the examiner on the basis of either formal and/or substantive grounds, the applicant is given the opportunity to submit arguments in attempt to overcome the same within the term of two months, which can be extended for two additional months. The response to the provisional refusal must be filed directly through IMPI in order to avoid the abandonment of the application, for that cause, the applicant will have to appoint a local agent.

In light of the foregoing, even if the applicant files a partial cancellation through WIPO in relation with the goods objected by IMPI, a response to the provisional refusal must be filed through the Mexican Trademark Office, otherwise the application will be deem abandoned.

Besides the above mentioned issues, from the recent amendments to our IP Law, a Declaration of Use is now mandatory. The consequence of not complying with this obligation is that the trademark will be considered lapsed by IMPI on an ex officio basis.

The aforementioned amendment has raised a lot of questions and confusion, especially concerning International Registrations, since there are some specific rules applied to these. For instance, unlike renewal applications which may be filed through WIPO, Declarations of Use must be filed directly through IMPI by the holder’s authorized representative with address in Mexico. The Declaration of Use will be filed at two different times:

1)For trademarks granted as from August 10th 2018, the Declaration of Use must be filed within the three months following the third anniversary from the date on which the national registration was granted.

2)Upon submitting a renewal petition, within the three following months after the renewal notice is made by the International Bureau of WIPO. Additionally, there is an exception for filing the 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 as mentioned in the previous paragraph.

IV.For the purpose of keeping this brief we will not enter into this issue profoundly, however, it is important to consider that in order to keep track of the deadlines, it is highly recommended to appoint a legal representative in Mexico, even more considering that not necessarily all the national registrations derived from an International Registration have the same granting date.

In light of the above, filing a trademark application through Madrid System may have some benefits for trademark holders attempting to obtain protection in several countries, however, if the applicant is not aware of the issues that may arise in each designated country, this procedure could become time consuming and costly.

Giselle Ruiz Balcázar has more than 4 years’ experience in IP matters, and has been an Associate at Uhthoff Gómez Vega & Uhthoff, since October 2017 at the Trademark Department. She has a Law degree from Universidad Panamericana and a Master’s degree in Business Law from Centro Universitario Villanueva in Madrid, Spain. Ms. Giselle is an active member of the Mexican Association for the Protection of Industrial Property and is fluent in Spanish and English.