The registration of a trademark gives companies the security and protection of the same. By registering a trademark, it ensures that those distinctive elements with which the trademark is identified, maintain that distinction in their services or products in contrast to other similar ones in the market. The registration of a trademark protects what is known as its intellectual property.
Now, what happens with the registration of trademarks when they seek protection in a foreign country? In the case of Mexico, trademarks are protected by the Mexican Institute of Industrial Property (IMPI) and similarly, each country has a government agency in charge of everything related to trademarks and industrial property. Likewise, there are several international treaties on Intellectual Property and one of them was created specifically for the purpose of registering a trademark abroad, in a simplified manner and without having to go to the offices of the foreign country to apply for registration.
For example, Mexico is a party to the Madrid Agreement Concerning the International Registration of Marks, as well as to the Protocol Relating to the Madrid Agreement since 2013, both of which have the purpose that the party countries constitute a particular union for the international registration of trademarks, that is, the nationals of each of the contracting countries can obtain in all the other party countries the protection of their trademarks registered in the country of origin through the deposit of the trademark in the World Intellectual Property Organization (WIPO).
However, it should not be understood that the international registration of a mark automatically and simultaneously protects it in all the States party, but rather that the owner of the mark in the country of origin may request that the protection be effective in one or more contracting countries by filing a single application. In other words, the owner of a trademark may register it in another country party without having to file its application directly with the governmental body of that country.
The international registration subject to the Madrid Agreement produces the same effects as if the trademark application had been filed directly in each of the contracting countries that were specifically designated by the applicant.
In order to obtain trademark protection, the application for registration must comply with the following requirements:
Even when WIPO receives the application for international registration of a trademark for meeting the above mentioned requirements, this does not guarantee that the protection of the trademark will be extended to all the countries applied for, since such protection is subject to the study that each State must carry out according to its internal regulations, since there are some contracting countries that from the beginning set additional requirements for the registration of an international trademark in their country. WIPO is responsible for ensuring that the application meets the aforementioned requirements and once the application is accepted, it only acts as an intermediary between the offices of the country of origin and the offices of the country in which protection is sought, so that the actual territorial extension of the registration depends on the study and approval made by each State in particular.
Notwithstanding the foregoing, if the application meets all the requirements set forth in the Madrid Agreement, States Parties may not refuse registration except in the following cases:
In the event that a State denies the extension of protection, it must give the reasons for its decision in accordance with the exceptions, however, under no circumstances may it refuse to grant protection on the grounds that its domestic legislation only authorizes the registration of a limited number of classes or for a limited number of goods or services. It is also important to point out that the interested party will have the same means of recourse as if the trademark had been filed directly by him in the country where protection is denied.
The international registration before WIPO has a duration of 20 years with the possibility of renewal for another 20 years counted from the expiration of the preceding period, and the procedure is carried out upon payment of the basic fee and, if applicable, payment of the supplementary fees as well as of the complementary fees; however, the renewal may not entail any modification with respect to the preceding registration.
On the other hand, the holder of the international registration may at any time renounce protection in one or more of the Member States by means of a declaration submitted to the intellectual property organization of his country of origin, to be communicated to WIPO, which in turn notifies the countries concerned of the renunciation.
In the case of seeking to register a Mexican trademark in a foreign country, the application must be filed with the Mexican Institute of Industrial Property in person, by means of an online mailbox, postal service or specialized courier service. Once the application has been reviewed by IMPI, it forwards the application to WIPO, which in turn analyzes the application and forwards it to the corresponding country offices.
According to the Madrid Agreement, the international registration produces the same effects as a trademark application filed in another contracting country. Consequently, international marks registered in a State party are on the same level of protection as national trademark registrations, which implies that the application for a trademark registration in the country of origin cannot affect the protection that has been granted to an international mark.
In fact, it may be the case that a foreigner has a preferential right when registering his trademark against a third party in the country of origin of the latter, which is known as priority right. The right of priority allows the owner of the trademark to apply for its protection directly in Mexico, without the need to obtain an international registration. However, in order for this to be possible, it is necessary that it be done within six months after the date of the original application. In such case, the date of the application is recognized as the date that was first, that is, the date of the original application, for which the applicant must only comply with:
Consequently, if a person with Mexican nationality, with domicile or establishment in the country, has an interest in registering a trademark identical or confusingly similar to an international trademark or considers that he/she has a better right over it, he/she has at his/her disposal the legal means provided by law, such as the administrative procedure for the registration of a trademark. forfeiture, nullity or cancellation (*each action is applicable in different cases, which will be explained in another video*). The protection of the international trademark ceases to have effect in Mexico.
It is vital that the importance of trademark registration is recognized, not only at the national level, but also at the international level, so that the intellectual property of trademarks is protected in their country of origin, as well as in any other country in which the brand has an interest, so that the brand is able to position itself against its competitors in the market of different countries simultaneously.
Written by: Andrea Solano
References and sources of information:
Digital registration: 2019951
Instance: Collegiate Circuit Courts
Tenth Epoch
Subject(s): Administrative
Thesis: I.10o.A.100 A (10th.)
Source: Gaceta del Semanario Judicial de la Federación. Book 66, May 2019, Volume III, page 2649.
Type: Isolated
WELL-KNOWN TRADEMARKS. SCOPE OF ITS PROTECTION IN THE INTERNATIONAL REGULATIONS SUBSCRIBED BY THE MEXICAN STATE.
The fact that some trademarks reach a level of notoriety in commerce that goes beyond the borders of the country in which the trademark registration exists, has motivated their protection at the international level, as can be seen in articles 6 bis and 10 bis of the Paris Convention for the Protection of Industrial Property and 16 of the Agreement on Trade-Related Aspects of Intellectual Property Rights, signed by the Mexican State, from which derives a mandate that constrains the member states to refuse or cancel the registration and prohibit the use of a trademark that is susceptible of creating confusion with another well-known trademark in a member country, This evidences the special protection that must be granted to trademarks with this characteristic, even when they are not registered, and makes it clear that the principles of territoriality and specialty do not apply, since the purpose of the internationally agreed measures is to avoid the registration and use of a trademark that may create confusion with another well known in the country of registration or use, in order to avoid acts of unfair competition that harm the interests of the consumer public that may be induced to error, regarding the origin or quality of the products protected with that similar trademark.
TENTH COLLEGIATE COURT IN ADMINISTRATIVE MATTERS OF THE FIRST CIRCUIT.
Amparo directo 639/2018. Pintucom, S.A. de C.V. and another. March 22, 2019. Unanimous vote. Speaker: Alfredo Enrique Báez López. Secretary: Mayra Susana Martínez López.
This thesis was published on Friday, May 31, 2019 at 10:36 a.m. in the Semanario Judicial de la Federación.
Digital registration: 2019952
Instance: Collegiate Circuit Courts
Tenth Epoch
Subject(s): Administrative
Thesis: I.10o.A.99 A (10th.)
Source: Gaceta del Semanario Judicial de la Federación. Book 66, May 2019, Volume III, page 2650.
Type: Isolated
WELL-KNOWN TRADEMARKS. THE NUANCES OF THEIR SPECIAL PROTECTION AT THE INTERNATIONAL AND NATIONAL LEVEL.
Well-known trademarks are considered to be those which, due to their permanence in the market, in advertising or due to any other factor, are known to the majority of consumers and, generally, enjoy special protection at the international level against signs that seek their reproduction, imitation or translation, provided that there is a risk of creating confusion in the relevant sector of the public; hence, they are usually protected, regardless of whether they are registered, with respect to products and services that are identical or similar to the point of creating confusion in those who form the basis of their reputation. In some countries, under certain conditions, they are also protected with respect to products or services that are different, in order to avoid their exploitation in bad faith or without just title, derived from their high degree of exposure. In the Mexican case, such special protection against identical or confusingly similar signs is contained in article 90, section XVI, of the Industrial Property Law, in order to avoid acts of unfair competition and to ensure an effective protection of the trademark registration.
TENTH COLLEGIATE COURT IN ADMINISTRATIVE MATTERS OF THE FIRST CIRCUIT.
Amparo directo 639/2018. Pintucom, S.A. de C.V. and another. March 22, 2019. Unanimous vote. Speaker: Alfredo Enrique Báez López. Secretary: Mayra Susana Martínez López.
This thesis was published on Friday, May 31, 2019 at 10:36 a.m. in the Semanario Judicial de la Federación.
Digital registration: 2019951
Instance: Collegiate Circuit Courts
Tenth Epoch
Subject(s): Administrative
Thesis: I.10o.A.100 A (10th.)
Source: Gaceta del Semanario Judicial de la Federación. Book 66, May 2019, Volume III, page 2649.
Type: Isolated
WELL-KNOWN TRADEMARKS. SCOPE OF ITS PROTECTION IN THE INTERNATIONAL REGULATIONS SUBSCRIBED BY THE MEXICAN STATE.
The fact that some trademarks reach a level of notoriety in commerce that goes beyond the borders of the country in which the trademark registration exists, has motivated their protection at the international level, as can be seen in articles 6 bis and 10 bis of the Paris Convention for the Protection of Industrial Property and 16 of the Agreement on Trade-Related Aspects of Intellectual Property Rights, signed by the Mexican State, from which derives a mandate that constrains the member states to refuse or cancel the registration and prohibit the use of a trademark that is susceptible of creating confusion with another well-known trademark in a member country, This evidences the special protection that must be granted to trademarks with this characteristic, even when they are not registered, and makes it clear that the principles of territoriality and specialty do not apply, since the purpose of the internationally agreed measures is to avoid the registration and use of a trademark that may create confusion with another well known in the country of registration or use, in order to avoid acts of unfair competition that harm the interests of the consumer public that may be induced to error, regarding the origin or quality of the products protected with that similar trademark.
TENTH COLLEGIATE COURT IN ADMINISTRATIVE MATTERS OF THE FIRST CIRCUIT.
Amparo directo 639/2018. Pintucom, S.A. de C.V. and another. March 22, 2019. Unanimous vote. Speaker: Alfredo Enrique Báez López. Secretary: Mayra Susana Martínez López.
This thesis was published on Friday, May 31, 2019 at 10:36 a.m. in the Semanario Judicial de la Federación.
Digital registration: 203005
Instance: Collegiate Circuit Courts
Ninth Epoch
Subject(s): Administrative
Thesis: I.4o.A.60 A
Source: Judicial Weekly of the Federation and its Gazette. Volume III, March 1996, page 972.
Type: Isolated
ITS REGISTRATION IN A FOREIGN COUNTRY SUPPORTED BY THE PARIS CONVENTION MUST BE EXAMINED WHEN APPLYING FOR ITS REGISTRATION IN MEXICO.
Pursuant to the provisions of Articles 117 and 118 of the Law for the Promotion and Protection of Industrial Property (Industrial Property Law in force), the application for the registration of a trademark in Mexico formulated based, among other aspects, on the fact that in other countries, according to the Paris Convention, it is registered is a transcendental circumstance that the administrative authority must examine in order to decide whether or not the registration requested is appropriate, in compliance with the guarantee of hearing established in Article 14 of the Mexican Constitution.
FOURTH COLLEGIATE COURT IN ADMINISTRATIVE MATTERS OF THE FIRST CIRCUIT.
Amparo in review 1684/95. C.H. Robinson Company. August 9, 1995. Unanimous vote. Speaker: Jaime C. Ramos Carreón. Secretary: Luis Enrique Ramos Bustillos.
Supreme Court of Justice of the Nation
Digital registration: 2000251
Instance: Second Chamber
Tenth Epoch
Subject(s): Administrative
Thesis: 2a./J. 39/2011 (10a.)
Source: Judicial Weekly of the Federation and its Gazette. Book V, February 2012, Volume 2, page 1244.
Type: Jurisprudence
IN ORDER TO SATISFY THE LEGAL INTEREST TO SUE FOR THE REVOCATION OF A REGISTERED TRADEMARK, THE APPLICATION FOR THE RESPECTIVE REGISTRATION MUST BE ACCREDITED.
Pursuant to articles 152, section II, 155 and 188 of the Industrial Property Law, the revocation of a trademark registration may be obtained in a proceeding that is initiated, among other cases, at the request of a party, which must be understood to refer to any person who is the holder of a legal interest, thus necessarily excluding those who only have a de facto interest. Therefore, the legal interest to enforce the revocation of a trademark registration does not necessarily derive from a subjective right per se, but also includes persons who have a right opposable to third parties, that is to say, those who request the registration of a trademark or, because having a registered trademark, it is similar to another that could be revoked; hence, such request constitutes an indispensable requirement to sue for the revocation mentioned above.
Contradiction of thesis 357/2011. Among those sustained by the Twelfth and Ninth Collegiate Courts, both in Administrative Matters of the First Circuit. October 26, 2011. Five votes. Speaker: Margarita Beatriz Luna Ramos. Secretary: Juan Pablo Rivera Juárez.
Case Decision 39/2011 (10a.) Approved by the Second Chamber of this High Court, in private session of November twenty-third, two thousand eleven.
