Madrid Protocol

July 1, 2012
Madrid Protocol

In April 2012, the Mexican Senate approved Mexico’s accession to the Madrid Agreement for the InternationalRegistration of Trademarks, known as the Madrid Protocol. While this may be seen as a step toward improvedharmonization of our international trademark system, the inclusion of Mexico in this agreement also hasdisadvantages, given being that our current legislation is not compatible with the laws of most of the countriesthat form part of this agreement. Examples of this include: that the trademark registration process in Mexico doesnot provide for what is known as a “period for opposition” that most participating countries have; that in Mexicoeach trademark application may request the protection of products or services in one class (in accordance with theNiza classification system) while a “multi-class” application is acceptable in other countries (this allowsrequesting protection in three distinct classes in one application), etc. In addition to the foregoing, the adoption ofthis Madrid Protocol will create a significant increase in processing time that will likely and immediately result inthe possible confusion with trademarks already registered under this agreement and trademarks registered inMexico and, in accordance with the experience of other countries, it is possible that many “idle” trademarks willbe registered in Mexico, representing an obstacle for trademarks easily confused with such. While approval bythe World Intellectual Property Organization (WIPO) is pending, which is a requirement in order for thisagreement to take effect in Mexico, subject to such approval, necessary adjustments to Mexican laws will beneeded in order for such to be in harmony with the Madrid Protocol. The Mexican Institute of IntellectualProperty is carrying out various meetings and consultations with intellectual property specialists in order todetermine the proper amendments to the Mexican laws. The effect of any such changes will need to be carefullyreviewed. While the adoption of the Madrid Protocol may have disadvantages for the trademark registrationsystem in Mexico, it is important to note that the Madrid Protocol applies in the majority of the developed nationsof the world.

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