Mrs. Toe Su Aung (INTA) & Mr. Miguel Ángel Margáin (IMPI)

On Monday, May 5th 2013, during the first day of the 135th Annual Meeting of the International Trademark Association -INTA- a Memorandum of Understanding was signed between the INTA and the Mexican PTO, the Mexican Institute for Industrial Property -IMPI. The MoU was signed at a meeting between Mrs. Toe Su Aung, INTA’s President, and Mr. Miguel Ángel Margáin Gonzáles, IMPI’s Director General.

The main goal of the agreement is to assist Mexico in the implementation of the Madrid Protocol, which entered into force in this country on February 19th, 2013. Although neither the IMPI’s press release nor the INTA’s note on the agreement explain the details of such cooperation, it will most likely include an effort towards the implementation of an opposition procedure (which Mexico lacks, significantly increasing the volume of work the IMPI has to deal with in Madrid Protocol-related procedures). Althought the IMPI’s Director General, Mr. Miguel Ángel Margáin, has stated that the opposition system is not a requirement for the Protocol’s implementation, he has also been “talking to the industry associations about whether an opposition system is needed”. For most experts in trademark law, and from a regional perspective, it is our firm’s position that an opposition system would be highly beneficial for Mexico.

During the 3 months of Mexico’s membership to the Madrid Protocol, 12 international applications have been filed by Mexican applicants, and the country has been a designated country in around 100 international applications. These are relatively low numbers for an economy the size of Mexico’s, especially taking into account the high level of economic integration that the country has reached with the implementation of several free trade agreements, and its strong ties to the US economy.

Colombia, which implemented the protocol since August 2012, has been a designated country in 245 international applications, but only 1 application has been filed with Colombia as the country of origin (reportedly the first application was filed in late April). New Zealand, on the other hand, joined the Protocol on December 2012 but it has already been designated in 1400 international applications and has been the country of origin for 100 international applications.

Another feature that the IMPI has been working in, and for which it could receive valuable assistance from INTA, is its online trademark application system -which is a required feature to the protocol’s members-. IMPI’s Director General has established 2014 as the year in which this system should be completely functional and should cover the entire process for trademark registration.

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

PTO to PTO Cooperation

Latin American PTOs have spent several years working on two major cooperation agreements, designed to not only speed up procedures but also to increase the reliability of information and to avoid duplicated procedures, especially in patent examinations. The two projects, known as PROSUR and CADOPAT cover almost the entire continent, and have been the central topic of several high profile meetings between the heads of the Latin American PTOs.

PROSUR – Regional Cooperation System on Industrial Property

Nine South American countries belong to this project; namely: Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Peru, Suriname and Uruguay. The system has been active since August 2011, and its main goal is to become a platform for sharing information from patent examinations between PTOs, therefore reducing the effort of examining the same patent application in several countries.

The project is aimed at easing procedures for creators, entrepreneurs and IP attorneys; and is being funded by the Inter-American Development Bank (IDB). Chile’s PTO, the INAPI, has assumed the presidency of the project. The success or failure of the project is still not clear, since the effects of the agreement will really be visible within the PTOs.

In the earlier stages of this project, possibilities for a regional trademark registry and deeper regional integration of procedures have been discussed. However, these proposals have not been very successful since a regional trademark registry without an integrated regional market would be of little use and could even be unadvisable, since the trademark registry would no longer reflect the reality of the marketplaces.

The project doesn’t look for legal harmonization, but it does create a common platform for systems integration. WIPO has agreed to act as a supervisor of the project, and the experience of the WIPO CASE and the e-PEC (From Brazil’s PTO) platforms is being used for the project.

CADOPAT – Support System for the Management of Patent Applications

This is a web portal created by the Mexican PTO, the Mexican Institute for Industrial Property. It basically shares the information from patent examinations with more than 9 countries from Central America, the Caribbean and Colombia. The Mexican PTO sends its information to Recipient Offices; this means that the information is shared in one direction only, unlike the PROSUR project. Indeed, the CADOPAT system is a unilateral project from the Mexican PTO. It also shares information on searches and other procedures but it is clear that this system has a lot of room for growth.

Current members of the CADOPAT system include Costa Rica, El Salvador, Guatemala, Honduras, Panama, Nicaragua, Dominican Republic, Cuba, Colombia.

WIPO CASE – The Centralized Access to Search and Examination system

The WIPO Centralized Access to Search and Examination (WIPO CASE) system is designed to facilitate the sharing of confidential search and examination information between IP offices, and to help enhance the quality and efficiency of search and examination and minimize unnecessary duplication of work. Using this platform, patent examiners from one group of participating offices can access the collection of patent search and examination reports shared by the office group. According to the Canadian PTO, the launch of the CASE is a significant advancement towards greater cooperation between IP offices in sharing the results of examination work. This will help reduce the time spent on processing duplicate applications filed in multiple offices. The duplication of work is a contributing factor to the growing patent backlog.

The platform is intended for use by groups of IP offices that mutually recognize their search and examination work. Patent documents and data shared though WIPO-CASE can either be hosted by WIPO or the digital libraries of national offices. Initially developed to support the work sharing efforts of the IP offices of Australia, Canada and the UK, WIPO-CASE is now being used or evaluated by other regional groupings of IP offices.

e-PEC – Electronic Platform for Collaborative Examination

Argentina and Brazil have created the e-PEC, which is a trilingual platform allowing the PTOs to exchange information on identical patent applications. The e-PEC aims at enabling patent examiners to perform collaborative examination of patent applications, without the need for physical proximity between the examiners. Thus, the system offers efficiency and quality technical examination which is made in all national institutes. However, to each country remains the ultimate decision on whether or not to grant the patent. Other countries that currently use the e-PEC platform include Chile, Ecuador, Colombia, Paraguay, Uruguay, Surinam and Peru.

Source: Wikimedia Commons

Following the press release of the Mexican Institute for Industrial Property –IMPI-, as of tomorrow, September 28^th 2012, the applicants for Trademark Registration in Mexico will have the possibility of filing their applications and conducting follow-ups on the procedure through a web-based platform.

As stated in previous posts from our blog, the platform will be called Marca en Línea –Online Trademark- and will ease the process for filing applications in a similar fashion to the platforms of the Colombian, the Chilean and the Peruvian PTOs. Indeed, there has been a strong regional trend in moving standard applications to online platforms. IP Law Firms and owners of IP assets have broadly welcomed such changes, since it makes it easier to obtain up-to-date information on their applications.

According to the latest press release from the Mexican PTO, the platform will also support applications for Collective Marks, Commercial Names and Ads. As to the security of the platform, the PTO has incorporated a system for electronic signatures called FIEL (Firma electronica avanzada). The PTO’s goals with the online TM registration include reducing the amount of incomplete applications in up to 90% and speeding up the process for registration.

Requirements for the use of the platform.

-To be a registered user of the platform for payments and online services (PASE) of the PTO.

-To have an electronic signature in the FIEL platform.

-To use the .GIF format for images.

-And to use the .PDF format for all documents.

Step by step use of the platform.

This will be the procedure (as explained by the PTO) to file an application:

1. Access the web page of the IMPI, select the option Marca en Línea or to access the platform directly through: https://eservicios.impi.gob.mx/seimpi/action/inicio
2. Enter the name and password for the PASE platform (Or register, if it’s your first time).
3. Enter the required information and attach all necessary documents.
4. Make online payment of all fees.
5. To include an electronic signature on the application through the FIEL platform.
6. Send application and attachments to the PTO.
7. And you will get a confirmation of receipt of your application.

As suggested before in this blog, the online registration of trademarks is a step forward in easing and simplifying trademark procedures, but the PTO should also learn from the experiences that the Colombian and Peruvian PTOs have with their own platforms. It is a common complain among Colombian applicants that the online platform is not user-friendly enough, and that uncertainty about whether if attached documents have been sent is very common, usually leading to information requirements by the PTO and delays in the registration process. Compatibility issues with new browsers, such as Google Chrome and mobile platforms should also be addressed.

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