INTERNATIONAL REGISTRATIONS: NATIONALTREATMENT PRINCIPLE AND DECLARATION OF USEIN MEXICO - Uhthoff

INTERNATIONAL REGISTRATIONS: NATIONALTREATMENT PRINCIPLE AND DECLARATION OF USEIN MEXICO

The Madrid System, comprised by the Madrid Agreement and the corresponding Protocol, to which Mexico is part (hereafter “Madrid System”), establishes and makes it possible to protect a mark in a large number of countries by obtaining an international registration that has effect in each of the designated Contracting Parties, through the deposit of a single application before the International Bureau.
In other words, the Madrid System allows to protect a mark in several countries by the use of an International Registration that takes effect in each Contracting Party that the holder of said Registration has designated to extend its protection, this, as mentioned above, by a single application in a single language.


This Agreement is based on principles established in the Paris Convention for the Protection of Industrial
Property, which are:

  • National Treatment
  • Priority rights
  • Territoriality
  • False indications and unfair competition

According to article 2 of the Paris Convention, national treatment refers in regards to the protection of
industrial property, to the fact that a national of any country of the Union shall enjoy in all the other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals.


Consequently, users of the Madrid System, without distinction, must have the same treatment as nationals of the countries they designate and no isolated, different or exclusive rules or requirements must be applied, and each Contracting Party will guarantee the same protection it grants to their own nationals.

Thus, the principle of national treatment is not only fundamental for the Paris Convention, but also for the
Madrid System, being one of the pillars of the system, subsequently, without this principle it would be
impossible to have adequate protection, guarantee rights and would even threaten the proper use of the
figure of the International Registration.

Although the Paris Convention establishes exceptions to the principle of “national treatment”, these are only in relation to judicial, administrative and competition proceedings, as well as the choice of a domicile or the constitution of a representative whenever these are required by the local industrial property laws.
In Mexico, as of the reform of the Industrial Property Law that entered into force on August 10, 2018, it became mandatory to file a Declaration of Use of a trademark registration, same that will need to be filed in these specific moments: on the third-year anniversary counted from the date of registration of the trademark in Mexico, and at the time of the renewal of the registration.

The foregoing applies as well to national designations derived from International Registrations, in which case, the declaration of use on the third anniversary works in the same way, that is, it must be filed on the third anniversary counted from the date of registration in Mexico; Subsequently, it must be filed along with the renewal of the International Registry, however, this cannot be filed before the International Bureau and must be submitted before the Mexican Institute of Industrial Property (hereinafter “IMPI”).
In accordance with the rules of the Madrid System, each country reserves the right to determine or establish the filing rules in accordance with domestic legislation, so that the IMPI can establish the forms in which it requires the presentation of the Declaration of Use.

However, in the practice we have noticed some points that directly affect the holders of International
Registrations with designations in Mexico, actions that even question whether the principle of national
treatment is being respected.

Those who are familiar with the Madrid System recognize that, once the mark has been granted in a
designated country, the office of said country prepares a letter informing the International Bureau that the mark has been granted in one, several or all of the classes, depending on the case. This document must contain the registration date, the class and the national registration number.

The IMPI in the letters or official notices where it communicates that the national designation has been
registered is not indicating the exact date of the registration in Mexico, instead, it only indicates the date on which the official notice was prepared, which is normally a date after the actual registration. This is the first and probably one of the most serious violations of the principle of national treatment, since, for trademarks filed and granted in Mexico, the registration certificates do mention the actual date of registration. Recalling then that the declaration of use must be filed before IMPI on the third year anniversary counted from the date of registration of the trademark in Mexico, then, the official notices that IMPI sends to the International Bureau are indicating a date that does not correspond to that of the registration, and if the users of the Madrid System are guided by it, they could miscalculate the deadlines for the filing of the corresponding declaration and even cause a national designation to lapse.

Regarding the declaration of use that must be filed along with the renewal, I have found an additional
difficulty for users of the Madrid System.

Initially and for a short period of time, IMPI allowed that, once the renewal of the International Registration was filed, the corresponding declaration of use could be filed immediately after in the Mexican designations.

This criterion has changed and now it is necessary to wait for the International Bureau to notify IMPI of the filing of the renewal of the International Registration, and later IMPI prepares an official letter where grants the holder of the International Registration a non-extendable deadline to file the declaration of use, taking into consideration that, if it is not filed within the granted deadline, the national registration will expire ex officio.

In this action we can observe two clear violations of the principle of national treatment; The first is that, in this precise case, the declaration of use that must be accompanied by the renewal is being treated as an
omission, that is, as if the holder of the international registration had not submitted it as a result of an error, however, it has been the proper IMPI that has not allowed to file the declaration of use consecutively and immediately after the renewal of the International Registration has been filed.

Such is the point that the official letter issued by IMPI notifying that the declaration of use must be submitted indicates the non-extendable term of two months to respond file a response with the declaration of use, and in addition to paying the government fees corresponding to said declaration, government fees must also be paid for responding to an official action.

For users of the Mexican trademark system, this type of official letter is only seen when for some reason the declaration of use was not duly filed or payment was omitted, which is frankly difficult since the renewal form contains the declaration of real and effective use.

Consequently, users of the Madrid System are forced to wait for a national official letter that is not notified to the International Bureau, and also make the payment for the response to an official action, which increases the costs of the declaration of use.

Secondly, since the document prepared by IMPI is not notified to the International Bureau, the holders of
international registrations are required to constantly monitor their designations in Mexico, which also
translates into an implicit obligation to designate a legal representative. It is important to mention that the Federal Law for the Protection of Industrial Property in none of its articles establishes the obligation to indicate a legal representative for the filing of trademark applications, declarations of use and renewals.


Although the figure of the declaration of use in Mexico is to a certain extent new, and that currently there are many issues found in the practice that the Federal Law for the Protection of Industrial Property does not specify, it is essential that the Authority in Mexico takes proper measures to ensure that users of the Madrid System are applied the same rules and procedures as nationals, and thus guarantee national treatment.


Claudina González
claugonzalez@uhthoff.com.

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