The Mexican PTO (the IMPI) has released a web page spreading information on the implementation of the Madrid Protocol in this country. Although only available in Spanish, the page is a useful tool for getting first-hand information on this valuable new tool.

Here it is: Madrid Protocol for the International Registration of Trademarks | Mexico

However, if you desire in-deep information or just information in English language, just go to any of our previous posts on the Protocol’s implementation in Mexico or contact us.

Here are our posts on the subject:

• Mexico: Yet another Latin American country to approve the Madrid Protocol.
• How much for an international trademark registration? | Mexico
• Head on to the Madrid Protocol | Mexico

Madrid Protocol in Mexico

Mexico has taken another step towards implementation of the Madrid Protocol. Being the third Latin American country to approve the Madrid Protocol for the international registration of trademarks, Mexico has decided to establish Individual Fees for international applications that include this country as a designated country for trademark registration. These new fees will enter into force on February 19/2013.

The Madrid Protocol, as explained in previous posts, allows for the express registration of trademarks in several countries around the world, with a single international application and a single payment for official fees. This is obviously an enormous step forward from having to file multiple applications with special procedures in each country. The Madrid Protocol is part of the Madrid System, and it’s managed by the WIPO.

Official Fees under the Madrid Protocol

The WIPO has created 4 different fees for procedures under the Madrid Protocol, they are all in Swiss Francs (CHF), and will have to be paid in that currency.

Basically, when approving the Madrid Protocol each country has to choose between getting a share of the standard fees of WIPO –Complementary fees– or setting their own Individual Fees.

The four official fees for 10-years international protection of the trademark, according to Article 8 of the Protocol are:

• WIPO’s Official Fees

In all procedures, the following two fees apply:

• Official fees for designated countries.

Depending on whether the country has established individual fees or not, one of these two fees applies:

Or:

For procedures different than Registration Applications and Renewals, the full schedule of charges can be found here.

Fees for procedures related to Mexico.

This is a brief explanation of how will official fees work under the Madrid Protocol in Mexico. International Applicants applying for international registration that includes Mexico as a designated country the official and professional fees to pay would be:

Useful Tools.

WIPO has created a Fee Calculator, which allows the user to create estimates of Official Fees for registration in each country. It takes Individual Fees and reduced fees into account, so it’s a great tool to get an idea of the cost for international registration (without professional fees, of course). You may find the fee calculator here.

Source:

The World Intellectual Property Organization – WIPO

Mexico becomes third Latin American country in the Madrid System.

It is official: Mexico has formally deposited the ratification instrument of the Madrid Protocol before the World Intellectual Property Organization. This means that the Protocol will enter into force in exactly three months since the date of deposit. As we have previously stated on this blog, Mexico becomes the third Latin American country to enter the Madrid Protocol –After Colombia and Cuba– and the first major Latin American economy to do so.

The ratified treaty was deposited before WIPO on the 19^th of November 2012, and it will enter into force on the 19^th of February 2013. This leaves the Mexican PTO –The IMPI– with three months to prepare and adapt to the Protocol’s procedures. The complete list of parties to the Protocol now rises to 88.

The Mexican game rules.

Along with depositing the ratified treaty, Mexico has set two conditions for its entrance to the Madrid System:

1. The Protocol sets a 12 month period as the default time for providing notice of the provisional denial of an application. Mexico has extended it to 18 months.

2. Similarly to Colombia’s entrance to the Madrid System, Mexico has decided to establish “Individual Fees” for procedures in which Mexico is a designated country, especially in procedures for trademark registration, post-registration country designations and trademark renewals. This means that Official Fees for Madrid Procedures in Mexico will probably be a little higher than usual.

The IMPI is bound to release a new schedule of official fees, including the Individual Fees for the Madrid Protocol in the coming months. We will publish such information on this blog as soon as it’s released.

3. The registration of licenses before WIPO’s international registry won’t have effect in Mexico. Therefore, when licenses are awarded on an international registration that includes Mexico as a designated country, the license will also have to be registered before the Mexican PTO for it to have effects on this country.

Not everything that glitters…

We’ve said it before, and we’ll say it again: The Madrid Protocol is indeed a wonderful tool for easing international trademark registration, but it is not without some worrying problems. When we heard about the entrance of the Protocol in Mexico, one of the first worries that came to our mind is related to a Mexican rarity in Intellectual Property issues: Mexico does not have a procedure for Trademark Oppositions.

Given the rise in applications that always follows the entrance to the Madrid Protocol, this could mean that the Mexican PTO may be flooded with conflicting trademarks, starting cancellations actions against each-other and greatly increasing costs for trademark owners. Law firms with practices in Mexico –Our firm included– will have to keep a closer eye on new trademark applications, and filing amicus curiae for examinators to consider before granting trademarks conflicted to registered ones.

The entrance of the Madrid Protocol will surely make the Mexican trademark market more dynamic and accessible for trademark owners. At B&R Latin America we will also be getting ready for this new tool and will make sure to provide the best legal counseling for our clients in Mexico.

Sources:

WIPO

Accession to the Madrid Protocol: Mexico

Licenses on International Registries for Mexico

Source: Franchiseportal.gr

Finally, after much anticipation from the national and international IP community, the Madrid Protocol is in force in Colombia. The first South American country to enter the Madrid System and the second in Latin America after Cuba. The Colombian PTO, the Superintendency for Industry and Commerce, has marked this day by holding a conference on the implementation of the protocol with representatives from WIPO, the INTA, the ACPI -Colombia’s IP Association- the USPTO and the OEPM -Spain’s PTO-.

The entrance into force of the Madrid Protocol makes possible:

-The filing of applications for international registration of trademarks for Colombian citizens, applicants domiciled in Colombia and businesses with branches in Colombia.

-The designation of Colombia in international applications filed in any of the 86 countries that currently belong to the Madrid Protocol.

Many of the details of how the procedure will work were discussed at the conference, and feedback from the experience of the USPTO and the OEPM was valuable for setting standards for assessing the success in the implementation of the Protocol. The Colombian PTO said it was ready to start procedures under the protocol, and provided some basic information, such as the formats, languages and filing requirements that will be special for procedures in Colombia.

As explained in previous posts, Madrid’s international registrations are notably cheap, and the leading world economies are already members to the Protocol. Colombian entrepreneurs can easily and for very low costs protect their valuable trademarks in the American, Chinese, European and many other major markets. Early estimates predict that the protection of a trademark in the US and China will probably cost the Colombian user an average of USD$2000 (or $4million Colombian pesos), a small amount when compared with the traditional costs of hiring attorneys in these countries and conducting their national registration procedures. That’s why IP-aware entrepreneurs and investors should take this valuable opportunity for expanding their IP protection and consequently the international reach of their businesses.

However, as pointed out by the president of the Colombian Intellectual Property Association –ACPI– the Madrid Protocol is yet to be approved by almost all countries in Latin America. In practice, this means that the markets where more than half of Colombian exports are sold won’t be covered by the Madrid Protocol. This unfortunate situation has been addressed by representatives from WIPO and the Colombian PTO, stating that the goal is to make Colombia the leading country in Madrid procedures, creating regional pressure for updating IP regulation to international standards, such as the Protocol.

At B&R Latin America IP we’ll keep a close eye on how the implementation develops, and we’ll use our experience in international IP management in advising our clients how to best make use of the Madrid Protocol.

Savings in professional and official fees.

On August the 1^st, the World Intellectual Property Organization –WIPO- announced the official fees for international registrations under the Madrid Protocol where Colombia is designated. The Protocol will enter into force on August 29^th 2012, making Colombia the first country in South America to allow the Protocol’s international trademark registrations.

The Madrid Protocol, as explained in previous posts, allows for the express registration of trademarks in several countries around the world, with a single international application and a single payment for official fees. This is obviously an enormous step forward from having to file multiple applications with special procedures in each country. The Madrid Protocol is part of the Madrid System, and it’s managed by the WIPO.

Official Fees under the Madrid Protocol

The WIPO has created 4 different fees for procedures under the Madrid Protocol, they are all in Swiss Francs (CHF), and will have to be paid in that currency.

Basically, when approving the Madrid Protocol each country has to choose between getting a share of the standard fees of WIPO –Complementary fees– or setting their own Individual Fees.

The four official fees for 10-years international protection of the trademark, according to Article 8 of the Protocol are:

-          WIPO’s Official Fees

In all procedures, the following two fees apply:

-          Official fees for designated countries.

Depending on whether the country has established individual fees or not, one of these two fees applies:

Or:

For procedures different than Registration Applications and Renewals, the full schedule of charges can be found here.

Fees for procedures related to Colombia.

This is a brief explanation of how will official fees work under the Madrid Protocol in Colombia. International Applicants applying for international registration that includes Colombia as a designated country the official and professional fees to pay would be:

Useful Tools.

WIPO has created a Fee Calculator, which allows the user to create estimates of Official Fees for registration in each country. It takes Individual Fees and reduced fees into account, so it’s a great tool to get an idea of the cost for international registration (without professional fees, of course). You may find the fee calculator here.

Source: WIPO

On May 7th 2012, the World Intellectual Property Organization -WIPO- has announced the launch of 3 new web-based communication services, designed to improve the management of  international trademark registrations.

The first of these products is the Madrid Real-time Status (MRS):  a tool that provides the status in real time of trademark documents being processed by WIPO.

The second product is the Madrid Electronic Alert (MEA):  a free “watch service” designed to inform anyone interested in monitoring the status of certain international trademark registrations.

And finally, and most notable, is the Madrid Portfolio Manager (MPM):  a web service that allows holders of international registrations and their representatives to access their international trademark portfolios.

Other online services offered include the E-Renewal and E-Payment of fees and a Simulator of the Process for an International Application (Among others)

All of these services make international applications much more user-friendly and help IP Firms to maintain their customers better informed on the status of their applications.

These new web-services are announced shortly after Colombia’s and Mexico’s approval of the Madrid Protocol.

Source: WIPO’s Madrid-related Online Services