July 1, 2012

Madrid Protocol

By Antonio Campero

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


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Issue 103–July 2012