As of 19 February 2013, Mexico became the fourth territory to join the Madrid Protocol for the International Registration of Trademarks within the last year.
The system allows Trade Mark owners to register their Trademarks in up to 88 countries under a single Application system. Provided the Applicant has a local or “base” Application to rely upon, the scope of protection can be extended to a number of leading commercial territories that may be of interest, including Mexico. That said, certain significant countries such as Canada, India and South Africa remain outside the Madrid Protocol system and require local national Applications in these countries, if of interest.
Having joined the Madrid system, it is anticipated that Mexican business will be aided internationally and encouraged to compete more effectively. Similarly, Mexican trade and competition will also benefit given the influx of international business. The main benefit of the Madrid Protocol is its harmonised and simplified procedure. Applicants will benefit from reduced registration costs as local trademark attorneys will need to be instructed at the outset. The simplified procedure will impart administrative certainty as just one renewal date will be given to any International Application made under the Madrid system. Renewals can be instructed centrally every 10 years
In order to designate Mexico within the Madrid Protocol system, a UK company or resident must have a “home” Application/Registration that can be used as the basis of the International Application. The UK Intellectual Property Office will forward the Registration to the World Intellectual Property Office (WIPO) who will complete an examination of the formalities. Once this stage is complete, WIPO will pass details of the Registration on to the respective national trademark office(s). At this stage, each Trademark Office will examine the Application in line with national law and practice and report any issues to the Applicant or their representative.
Once the home or base Application has been filed, the Applicant will be able to claim “priority”, providing the Madrid Protocol registration is filed within a period of 6 months from the filing date of the home Trade Mark Application. Where “priority” is claimed, the Applicant is able to claim the earlier filing date from the Application that is being relied on. Since most countries operate a “first come first serve” system, filing based on priority will allow the Applicant to predate a later filed Application. That said, a ‘Madrid’ can still be filed outside of the “priority” period but the actual date of filing will be granted.
The main disadvantage of the Madrid Protocol system is the doctrine of “central attack”. Put simply, the existence of the Madrid Protocol Registration relies upon the continued validity of the “home” Registration for a period of 5 years following receipt at the International Application. If for any reason, the UK or “home” Trademark Registration is revoked or invalidated, the Madrid Protocol Registration and all subsequent designations will fail and must be transformed into national Trademark Applications if they wish to be retained, although this comes at a cost.
As an alternative to the Madrid Protocol system, the option of filing separate national Trademark Applications and appointing local representation in countries of interest remains. If this option is utilised instead of the Madrid system, the Applicant is likely to incur additional costs but will avoid their reliance upon the “home” Registration.
Since 19 February 2013, trademark owners in the UK and Europe are beginning to designate Mexico under the Madrid system, increasing their international protection and broadening the potential market size. Existing owners of Madrid Protocol Registrations have started to make “subsequent designations” to cover Mexico.
If registered protection in Mexico or any other International country is of interest to you, talk to the team at Albright IP who will use their experience to advise how to achieve comprehensive international protection in a cost effective manner.
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