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December 1, 2013 Vol. 68 No. 22 Back to Bulletin Main Page

INTA Launches Examiner Training Partnership with IMPI


INTA staff and members of the Government Officials Education and Training Committee joined leaders from the Instituto Mexicano de la Propiedad Industrial (IMPI), the judiciary and other government departments in Mexico last month for a training event and roundtable discussion on nontraditional marks and the Madrid Protocol. The event, which marks INTA’s first such partnership with IMPI, builds upon existing training programs with OHIM and the USPTO. It was strongly supported and encouraged by IMPI Director General Miguel Ángel Margáin Gonzalez, who succeeded José Rodrigo Roque Díaz in January 2013.

IMPI suggested the topic of nontraditional marks as the focus for the training seminar because Mexico will be obliged to accept applications for nontraditional marks under the Trans-Pacific Partnership (TPP) Agreement. The Agreement is currently being negotiated by Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, the United States and Vietnam. If TPP passes, Mexico will need to change its legislation to accommodate marks that are not visually perceptible, such as sound and scent marks.

In response to IMPI’s suggestion, INTA volunteers Federico Berger (Ferrer-Reyes, Tellechea & Bouche, Argentina), James Cady (Hogan Lovells, USA) and Alina Morris (Christensen O’Connor Johnson Kindness, USA) conducted a seminar for 80 examiners and other officials focusing on trade dress and nontraditional marks in other jurisdictions. The presentation identified best practices for examiners based on international case law and office practices, and gave attendees an opportunity to ask questions. Vianey Romo de Vivar Gutierrez (Saucedo, Romo de Vivar y Asociados, Mexico), who moderated the event, said that the examiners seemed most concerned about how applicants will provide effective descriptions of nontraditional marks. The panelists offered examples of ways to navigate the difficulties. In one example, Mr. Cady explained that the sound mark for the roar of the MGM lion could be described using a word mark in some jurisdictions, but in others it required a graphic to comply with the requirement of trademarks needing to be “visible signs.”

Joel Beres (Stites & Harbison, USA) was particularly impressed by the number of judges and other government representatives who attended the event. In addition to members of the Attorney General’s office, the Ministry of Economics and ProMexico, the three magistrates who preside over Mexico’s specialized IP court (Maria de Los Angeles Garrido Bello, Maria Teresa Olmos Jasso and Luz Maria Anaya Dominguez) were also present. “I was overwhelmed by the broad interest from other government departments,” said Mr. Beres.

Later, an evening roundtable discussion with IMPI representatives focused on implementation of the Madrid Protocol, which entered into force in Mexico in February of this year. That discussion, which generated many questions, included a presentation by members of IMPI explaining how the office has fared so far with Madrid filings. Mr. Margáin told the INTA Daily News at the Annual Meeting in Dallas this year that IMPI “had to implement some changes to the law to accommodate the Madrid Protocol.” These included allowing multiclass applications, updating the data system and considering implementation of an opposition system. “We are talking to the industry associations about whether an opposition system is needed,” Mr. Margáin said.

Ms. Romo de Vivar Gutierrez said that IMPI was enthusiastic about the outcome of the event and looked forward to working with INTA on future training sessions. INTA is particularly grateful to Mr. Margáin, who went above and beyond to provide resources and support to make the event possible.

For information about future training events, contact Ryan O’Donnell, INTA Senior Corporate Programs Coordinator, at rodonnell@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