In recognition of its role supporting the Mexican government’s efforts to join the Madrid Protocol, INTA was invited to participate in an official ceremony on February 19, 2013, to commemorate Mexico’s entrance to the Madrid Protocol. Pan Bimbo became the first Mexican trademark owner to file for extension of protection—in nearly 50 new jurisdictions—using the system.
High-level authorities Rocio Ruiz Chavez, Undersecretary of Competitiveness and Standardization at the Secretariat of Economy, and Miguel Margain, General Director of the Mexican Institute of Industrial Property (IMPI) observed that the Madrid Protocol is an important tool for the growth of the Mexican economy, because it supports Mexican entrepreneurs and facilitates the export of products to foreign markets. Binying Wang, General Director of Trademarks and Design at WIPO, said that IMPI ranked as one of the top trademark offices in the world.
The ceremony was followed by a series of seminars in Mexico City, Guadalajara and Monterrey sponsored jointly by authorities from the Secretariat of Economy, IMPI and WIPO. Panelists representing different roles and perspectives discussed the opportunities and challenges of using the Madrid System.
Speaking on INTA’s behalf at the seminar in Mexico City was Laura Cruz, External Relations Manager for Latin America. Ms. Cruz commended Mexican authorities, particularly IMPI, for their efforts in preparing for Madrid accession through consultations, the legislative process and the development of regulations and guidelines. She pledged that INTA would continue to work with the Mexican government throughout the implementation phase.
Ms. Cruz emphasized the Protocol’s significance for trademark owners, noting that it harmonizes and streamlines trademark registration procedures and substantially cuts costs. Attendees also heard about INTA’s mission to represent international trademark owners, and Association members in attendance were invited to get involved with the work of relevant policy subcommittees, including the Trademark Office Practices—Madrid System Subcommittee, the Harmonization of Trademark Law and Practice—International Classification Subcommittee, and the Enforcement—Opposition & Cancellations Standards & Procedures Subcommittee, among others. In addition, the Practitioner’s Guide to the Madrid Agreement and Madrid Protocol
, prepared and maintained by the Publications Committee, was presented as a useful online benefit, particularly for members in regions where the Madrid System is expanding.
Changes to IMPI Regulations and Procedures
Consultations leading to Mexico’s entrance to the Madrid System generated substantial debate as to the need to introduce new administrative, regulatory or even legislative changes to Mexico’s trademark laws in order to harmonize internal proceedings to comply with requirements under Madrid. Some of these concerns related to Mexico’s entering Madrid without first introducing an opposition system, which would have required substantive amendments to Mexico’s IP law.
Ultimately, IMPI introduced new implementing regulations without making changes to legislation. At the seminars, IMPI Deputy Director General Alfredo Rendon and Director, Trademark Divisions, Eliseo Montiel discussed IMPI’s new application requirements and office procedures
How Accession to Madrid Affects the Practice of Trademark Law
The seminars included presentations from attorneys in the EU and the United States, who discussed how their trademark practice changed when their jurisdictions joined the Madrid Protocol.
Giulio Martellini (IP Skill, Italy), member of the Madrid System Subcommittee of INTA’s Trademark Office Practices Committee, explained that the trademark scenario in the European Union is rather complex given the European Union itself is a Madrid Protocol member, as are all Member States of the Union (with the exception of Malta). Thus, applicants seeking trademark protection in EU countries may get coverage in one of three ways: via individual national registrations; via a single registration through the Madrid System; or via a Community Trade Mark (CTM) registration, covering the entire EU.
Mr. Martellini said this added complexity is advantageous for trademark applicants, as they are provided with a number of different tools to obtain trademark protection in the EU territory and can customize their filing strategies as necessary in each case. It also has a remarkable impact on the trademark profession overall in the European Union, since a substantial amount of legal analysis needs to be conducted at a preliminary stage, when such filing strategies are being developed.
Mexican trademark owners now enjoy benefits similar to those of their European counterparts and will benefit from the additional registration route offered by Madrid. However, in order to take full advantage of these new options, increased attention to strategy at the preliminary stage is advisable.
Speaking from the U.S. perspective, former INTA Board of Directors member Frances Jagla (Lane Powell, USA) advised that Madrid filings designating Mexico would increase the need for the expertise of local counsel, who will be needed to help respond to rejections based on goods and services designations as well as perceived similarities to third-party marks. In addition, it is anticipated that the number of cancellation actions in Mexico will increase and that oppositions—when they become available—will be plentiful.
Ms. Jagla also shared strategies on how and when best to use the System. She explained, for example, that if there is a strong mark and there is no possible opposition, the Madrid System is the easiest and least expensive way to obtain protection.
Recent Madrid Expansion in Other Countries
When Mexico began accepting trademark applications under the Madrid Protocol on February 19, 2013, the international registration system became available in a total of 89 contracting jurisdictions. Other countries recently joining or announcing their accession include Colombia, India, New Zealand and the Philippines. It is expected that Brazil may be next in line, as Brazil’s Foreign Trade Chamber, CAMEX, approved accession in early April. The proposal was sent to the Executive Branch and will be debated by Congress.
This wave of accessions to Madrid has been referred to by WIPO officials as the Third Generation Expansion, and is particularly notable in that emerging economies make up many of the new member countries.
For more information, visit the Madrid in Latin America
page in the Policy and Advocacy section of www.inta.org.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers
are urged to check independently on matters of specific concern or interest.
© 2013 International Trademark Association