Posts Tagged ‘Madrid protocol’


Under the Madrid Protocol, filing for an international trademark application is made a piece of cake.  A single application can be filed for two or more countries if members of the Madrid Protocol. Only two countries; Colombia and Mexico in Latin America (Brazil is heading to it) are members of the Protocol. After the procedure of the protocol, the trademark gets filed after the examination of the application. This procedure has to be replied by each trademark office in each country. If everything goes by plan the application gets accepted and filed. Or the examination can result in rejection of the application.


A notification of provisional refusal forms a declaration stating the grounds on which the particular trademark office decides that protection cannot be granted in the contracting party (“ex officio provisional refusal”) or a declaration that protection cannot be granted in the contracting party because an opposition has been filed (“provisional refusal based on an opposition”) or both.



The grounds of the refusal may be absolute or relative.


  • Absolute grounds include the lack of any distinctive character of the mark, the inclusion of generic marks as a trademark, the indication of quality or quantity in the trademark, marks that carry any deceiving names, that offence morality or that are contrary to honest practices
  • Relative grounds may exist when the trademark that is applied for is in conflict with an earlier mark.


A notification of provisional refusal must relate to one international registration and must be dated and signed by the trademark office making it. Refusal of registration of a trademark must be provided in writing, in three languages or English, Spanish or French, which may be done by electronic means.


If a trademark office issued a provisional refusal of an application, a trademark specialist in Colombia or Mexico will need to be instructed to deal with the rejection before the local office.  When a mark is subject of refusal, measures should be taken quickly. This refusal can be caused because of several reasons, it is important to find out how and when to respond to the decision of refusal. There comes the trademark specialist to the rescue. Because it would be a mistake to assume that trademark office practices and requirements are the same in every country.


A request for reexamination can be applied for by the proprietor of the mark before the office of the contracting party that has notified the refusal. Always consult with a local agent to be certain that an application conforms to local laws and practices. B&R could help you to overcome these issues and help you to register your trademarks in the fastest possible way.





WIPO: Refusal of an international registration

INTA: Fact Sheets: Selecting and Registering a Trademark




IP Development and Innovation | Events

March 1st, 2014 by Geraldine Peeters


The past year has been a successful year for IP in Colombia if we may believe the Colombian Patent and Trademark Office.


To start the new year, Mrs. María José Lamus Becerra, the director of the bureau on Distinctive Signs of the Superintendency of Industry and Commerce of Colombia, The Colombian Trademark Office, gave a lecture at the first IP Committee of the Colombo-American Chamber of Commerce (AMCHAM).


Dra. María José Lamus Becerra updated us on the latest developments and newest projects on the intellectual property agenda of the Superintendence on Industry and Commerce (SIC) regarding trademarks. First topic was the evaluation of the year 2013 what has been a good year for patent and trademark registration. In comparison with the previous year, there has been noted an increase of requests for filing trademarks in Colombia. This growth can be largely acclaimed to the Madrid Protocol. It has almost been one year and a half since Colombia became member of this international trademark filling system. This membership definitely contributed to the attraction for foreign investment in Colombia.

Jose maria Becerra


Regarding the goals for this year, the SIC informed us that they want to keep improving the quality for the Intellectual Property right users and to keep Colombia on top of IP. From now on their Gaceta de la Propiedad Industrial will be published every 10 days. Another project for improvement is the COLIPRI project of the Colombian and Swiss government that started in January 2013 and that is still running. They are investing in specific technology to make it easier to find information on specific searches. The project wants to contribute to a higher competitiveness and make a positive impact on Colombia´s social and economic development.


Next stop was the Iowa Commercial Mission. This meeting was organized by AMCHAM to strengthen the relationships between the Iowa state and Colombia. Iowa is a state with a lot to offer, they are active in multiple sectors in agriculture and are one of the biggest producers of pork meat in the USA. This meeting was a nice initiative from the Colombian chamber of commerce to generate business opportunities between both countries.



On February 19 the American IP consul for Latin America, Mr. Albert Keyack, was in Bogotá, Colombia. He visited Bogotá to talk about “Innovation & the Intellectual Property law of the USA”. The enactment of patent laws among Western countries is associated with higher rates of scientific discoveries, inventions and innovations.  IP should work as an incentive for innovation. IP laws should encourage and facilitate innovation and invention, he concluded. However a big challenge for IP is the way how the valuation of IP assets is done. This is something that still is precarious and needs to be worked on.  Mr. Albert Keyak concluded his speech with his congratulations for the Colombian approach to IP.


To finish the month we attended the Pre-INTA meeting at Cavelier Abogados. They organized a meeting among colleagues and for the occasion they invited Dr. Natalia Tobón for a presentation about the professional responsibility of a practicing Lawyer. She shared some nice words with us about the profession.


We wish IP a year full of development and innovation.




Changes to Come: The T.P.P. on Trademarks | Chile – Mexico – Peru

December 10th, 2013 by Danny Grajales Pérez y Soto

Trans-Pacific Partnership Agreement Negotiations Latin America

Negotiations of the TPP Agreement.

The Trans-Pacific Partnership Agreement –TPP– is the most ambitious free trade agreement under negotiation at this moment, with 12 negotiating parties in the Asia-Pacific área including Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, the United States and Vietnam. This includes 3 major Latin American economies (Chile, Mexico and Peru), all of them also parties to the Pacific Alliance negotiations, and 2 of the top three economies in the global economy (The US and Japan). Although the agreement includes provisions on many trade-related topics, it has become notable for the controversy surrounding its Intellectual Property provisions.


Negotiators of the TPP. Source:

The confidential draft of the agreement was leaked by the Wikileaks organization on November 13th 2013, and has lighted up the discussion regarding Trademarks, Patents, Copyrights and Geographical Indications provisions of the. Although most of the controversy has focused on Patents, the section on Trademarks has also stirred both praise and criticism from IP experts. Although the final text of the agreement is yet to be seen, the outlines of the final provisions on Trademark Law are already visible:


Non-traditional Trademarks. The very first provision of the agreement’s section on trademarks is the prohibition of requiring “visual perceptibility” for the registration of trademarks. This would make visual and sound trademarks available for registration in all member countries, such as the roar of the MGM lion or the “I’m loving it” jingle of the McDonald’s corporation.


Collective and Certification Marks. The agreement states that collective and certification marks shall be protected under every country’s trademark law.


Use of Identical or Similar Signs. The agreement provides that the owner of a registered trademark shall have the exclusive right to prevent third parties not having the owner’s consent from using in the course of trade identical o similar signs, for goods or services that are related to those good or services in respect of which the owner’s trademark is registered.


Well-known Trademarks. The recognition of a trademark as a “Well-known trademark” can no longer require that trademark to have been previously registered.


Opposition and Cancellation. All member countries shall provide an opportunity to oppose the registration of a trademark or to seek cancellation. According to this draft, the agreement will not make it mandatory to have an opposition procedure (which Mexico lacks) as long as cancellations are allowed.


Examination. Refusal of registration of a trademark must be provided in writing which may be done by electronic means.


Electronic Trademarks System. All member countries must provide a system for the electronic application and maintenance of trademarks and have a publicly available electronic information system. This is a requirement that has been already met by the three Latin American negotiating parties of the TPP. Mexico’s online platform is specially notable for its flexibility and the openness of its databases, which are shared with all major international databases.


Non-Mandatory License Recordal. The recordal of licenses may not be required to establish the validity of the license, as a condition for use of a trademark by a licensee, or as a condition for the right of a licensee to join infringement proceedings initiated by the holder.


Madrid Protocol. All members of the TPP will have to ratify and implement the Madrid Protocol. This would mean that Chile and Peru would have to modify their legislation to include the possibility of Madrid Protocol trademark registrations.


The International Trademark Association –INTA– one of the most influential institutions on Trademark Law Practice in the world, has been actively advocating for the negotiating parties of the TPP to conform by their Model Free Trade Agreement, which is meant to be a guide to what would be desirable trademark provisions in free trade agreements. Furthermore, INTA has already started training of PTO officials in Mexico as part of partnership programs focused of non-traditional marks and the Madrid Protocol, in order to prepare government officials for the changes to come





PTO Information on Madrid Protocol | IP Info Nuggets

March 19th, 2013 by Danny Grajales Pérez y Soto

Mexican PTO

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:





How much for an international trademark registration? | Mexico

February 22nd, 2013 by Danny Grajales Pérez y Soto

Madrid Protocol in 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:


Payable: Not payable/reduced: Amount in CHF:
The Basic Fee Payable in all international applications. Increases when the TM includes colors. Is reduced to as little as 65CHF when country of origin is a Least Developed Country –LDC– according to the UN. Application, no color:


Application, colored:


LDC Country, no color: 65CHF

LDC Country, colored: 90CHF

Renewal: 653CHF

Supplementary Fees Payable per additional class when application includes more than 3 classes from the Nice Classification. Not payable when only Contracting Parties with Individual Fees are designated. 100CHF per additional class.



  • Official fees for designated countries.


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



Complementary Fees Payable per designated country. Not payable when the designated country has established Individual Fees. 100 CHF per designated country.






Individual Fees Payable in respect to each designated country that established Individual Fees (instead of Complementary Fees) Not payable when both the Country of Origin of the application and the designated country belong to the Madrid Agreement. Complementary Fees apply for this case. Click here to see the full Schedule of Fees for countries with Individual Fees.



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:



Official Fees of the Mexican PTO for national application for registration of the trademark. (The base application on which the international application is supported)
The Basic Fee for International Registration.
Supplementary Fees (If more than 3 classes).
The Individual fee for Mexico:


193 CHF (Aprox. USD$208)



Professional Fees for national application.
Professional Fees for international application.



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.





The World Intellectual Property Organization – WIPO




Head on to the Madrid Protocol | Mexico

November 29th, 2012 by Danny Grajales Pérez y Soto

Mexico - Madrid Protocol

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 19th of November 2012, and it will enter into force on the 19th 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.






Accession to the Madrid Protocol: Mexico

Licenses on International Registries for Mexico