In Mexico, several Madrid Registrations lack of a local attorney of record. Therefore, it is unclear how trademark owners will be summoned in case someone executes a cancellation or invalidation action. It is also unclear how a registrant could appear as third interested party in appeals prosecuted at the Special IP Court.
It is possible that the service of summons will be carried out through a publication in the Federal Official Journal or the Official Gazette. However, there is the possibility that the publication is not detected.
In such scenario, the cancellation or invalidation action may be served and decided without knowledge of the registrant. By the time the registrant is aware that the protection in Mexico has been invalidated or cancelled, it could be too late to file an appeal or another legal remedy.
Appointing a trademark attorney in Mexico in all International Registrations will help to prevent the described scenario giving the trademark owner certainty that if someone challenges a trademark registration, a copy of the invalidation or cancellation action will be served to a local attorney instead of being served through a publication.
It is important to mention that while Madrid Registrations are multiple class, the Mexican Trademark system is single class. Therefore, the Mexican Trademark Office will divide the International Registration into a national application, per class. Hence, it would be helpful to appoint a local trademark attorney in each national application.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
