Madrid Protocol (IR) Trademarks – Registered Attorney

More and more applicants are indicating Mexico as a designated state for their International Registrations under the Madrid Protocol. However, while the process may be harmonized under WIPO, there are still quirks in the Mexican system that applicants should know about. This is what you need to know:

  • You will only receive notification of your first provisional refusal via WIPO. Except for
    provisional refusals, as of August 2018 all notifications are made via the official gazette as per the IP Law amendments. This means that any notification from Mexican IP Institute (IMPI), such as third party oppositions, will only by issued via gazette.
  • Your trademark registration may be granted, but you must use it to keep it. The amended IP Law indicates that a Declaration of Use must be submitted three years after grant. If not, the registration will automatically be abandoned. Evidence is not required, but a sworn declaration must be submitted.
  • Interested in enforcement? Make sure Mexican Customs knows how to contact you. Mexican Customs actively reviews incoming shipments and occasionally flags those that they deem suspicious. Customs then contacts the registered representative to determine whether these goods should be detained or can be forwarded to their final address.
  • Don’t let your trademark be attacked without the opportunity to fight back. Third parties routinely target registered trademarks that are cited against their new applications. Court notifications are typically delivered in person to the Mexican address of the registered representative. Failure to have a representative of Recortd can result in a trademark registration being lost because no one submitted a defense.

All the above issues can be solved by recording an Attorney of Record at the IMPI. Therefore, if you are thinking about designating Mexico for your International Registration, be sure to let your Mexican Attorney know so that we can help you keep an eye on your trademarks.

If you have any questions, please contact us.