When designating Mexico for extending protection of an international trademark registration under the Madrid System, it is very common for a designation in Mexico to be issued with a partial or total Provisional Refusal of Protection.
A Provisional Refusal of Protection is mainly a preliminary opinion issued by a designated office to extend trademark protection –in this case, the Mexican IMPI–, which may be raised either on formal requirements, substantive aspects involving the trademark in question or raised on both aspects.
A common example of a provisional refusal based on formal requirements is when the Mexican application’s proposed description of goods or services for a specific class is considered by a trademark examiner to belong to a different class under Mexican trademark classification standards for certain goods or services, which even though may be recognized by WIPO and other trademark offices, they might not be accepted with the exact same wording by the Mexican IMPI.
Other cases for provisional refusals are based on substantive aspects of confusing similarity with a former registered and/or pending application and likelihood of goods or services.
When a provisional refusal of protection is issued to a Mexican designation of an international registration, Mexican TM law grants a 2-month preliminary deadline, plus an additional 2-month term for the applicant to file a response.
From our end, (besides receiving your professional instructions) we only need a non-formal Power of Attorney to act locally on behalf of the international applicant.
Failure to respond to a provisional refusal within the preliminary or final deadline results in the abandonment of the application, thereby leading the Mexican designation linked to the international registration to cease all legal effects in one or more classes.
FAQs:TRADEMARK PROVISIONAL REFUSALS UNDER MADRID SYSTEM
When Mexico's IP authority (IMPI) examines an international trademark under the Madrid System, it can issue a provisional refusal, which is a temporary objection based on either absolute (e.g., descriptiveness, lack of distinctiveness) relative grounds (e.g., similarity to earlier marks) or formality grounds (e.g.,correct classification of the proposed mark).
Once notified, you typically have two months from the day after receiving the refusal to respond, with an automatic extension of two additional months if the required extension fee is paid at filing.
Responses to provisional refusals must be filed directly with IMPI, not through WIPO, or the application risks being considered abandoned
Yes. You must appoint a licensed Mexican representative with a local address to handle the response. Though representation isn't required for filing, it becomes mandatory for addressing refusals. A non formal Power of Attorney (POA) is required (scanned copies are sufficient enough).
- Absolute (e.g., descriptiveness, lack of distinctiveness)
- Relative grounds (e.g., similarity to earlier marks) and/or
- Formality grounds (e.g.,correct classification of the proposed mark).
Failure to respond in time results in automatic refusal and abandonment of the designation in Mexico. You’d then have to file a new national application to seek protection, starting from scratch.
Mexico requires a Declaration of Actual and Effective Use in two scenarios:
Within three months after the third anniversary of registration.
When filing a renewal: After filing a petition before WIPO for the international registration’s renewal, an official notice shall by published by the Mexican IMPI, granting the interested party a 2-month term for filing a Declaration of Use regarding the Mexican designation, before the Mexican IMPI..
However, this official notice will not be served to the international registration and Mexican designation holder, but it will only be published in the IMPI trademark gazette and on its official trademark database, and therefore, it is very important to rely on the services of a local trademark agent in Mexico to monitor for the publication of this official notice, and for filing a Declaration of Use for the Mexican designation of the international registration.
IMPI has up to 4 months from the starting of the reception of the international application in its national Mexican phase.
There are no fines, but IMPI deems the application abandoned if the response is not submitted timely, effectively forfeiting your Madrid designation for Mexico.