Associate attorney at VILA Attorneys at Law
There have been two transcendental amendments to the industrial property law of Mexico, which are important to keep in mind for those EU SMEs who are planning to invest in our country.
The first amendment was published on March 13 2018, mainly in the field of Industrial Designs and Geographical Indications.
Industrial designs refer to the appearance of a product, namely any element or combination of flat elements, with aesthetic or ornamental nature such as shape, colour, design, texture, with or without relief, that incorporated into an industrial or craft product (two-dimensional object), may serve as a pattern for industrial or handicraft production.
Most countries demand novelty as a minimum requirement for design protection.
- Main changes: The concept of “new” is clarified for the effects of the registration of industrial designs, since previously it was stipulated that only designs created independently and that were different in a significant degree would be considered new, with no definitions given for “independent creation” and “significant degree”, now a creation is considered independent when no other identical industrial design has been made public before the filing date of the application or before the priority date, and an industrial design will be considered identical to another one, if it differs only in irrelevant details; the term “significant degree” is now stipulated as the general impression that and expert in the subject has on the industrial design, which should be different from the general impression caused from any other industrial design.
- The validity of industrial designs has been modified, which was previously of 15 non-extendable years and that has changed now to 5 renewable years for equal periods of time up to a maximum of 25 years.
It is important to mention that, industrial designs registered before the entry of the mentioned decree will maintain their validity until the 15 years come to an end, and they will be able to be renewed for 2 successive 5 year periods, without exceeding the maximum of 25 years.
However, industrial designs’ applications submitted but not granted yet, could benefit from the new extension provided that the applicant opts in no later than 30 days after the entry into force of the reform.
Appellations of Origin and Geographical Indications:
Geographical Indications (GI) refer to signs that identify products by the name of their particular provenance, and stand out because of their quality, reputation or other characteristics which are essentially attributable to that geographical origin.
Appellations of Origin (AO) are similar to GI as long as both identify the geographic origin where a product is produced, and stand out by their quality, reputation or other characteristics, which are essentially attributable to that geographical origin as well. However, the main difference is that AO also take in consideration, the human and/or natural factors of the significant environment.
These two forms of protection are not mutually exclusive, thus they could coexist.
- Unlike the Appellations of Origin, the figure called Geographical Indication is now included, which had been left out from the Mexican legislation.
- The figure of expiration based on the lack of use for a period of 3 years is included regarding Appellations of Origin and Geographical Indication.
- The Mexican Institute of Industrial Property (IMPI), will now recognize Appellations of Origin and Geographical Indications protected abroad, through a registry created by the Trademark Office.
- Opposition is now introduced for Appellations of Origin and Geographical Indication, as long as the party justifies its interest to file the opposition according to the law.
The aforementioned reforms are now in force.
The second relevant amendment was published on May 18th, 2018 changing several things mainly in the fields of trademarks and opposition system.
Trademark is any sign, word, symbol, or a combination thereof that are capable of distinguishing the source of a product or a service on the market.
- Non-traditional trademarks are recognized; before this amendment, only visible signs were susceptible for registration and now sensorial signs can be registered such as sounds and scents.
- The recognition of “certification marks” is now included, which it is defined as a sign that distinguishes goods and services with qualities or other characteristics that have been certified by the owner of the mark, such as components of the product; the conditions under the products have been elaborated or the services have been rendered; the quality; process of the goods or service and the geographical origin of the goods.
- The option of protecting geographical indications as certification marks is allowed.
- The provision that required the registration of the trademark in order to obtain the statement of notoriously known or famous is abolished.
- The statement of use is now mandatory, after the third year of registration of the trademark.
- Trademark applications filed in bad faith will be now an impediment for registration and a cause of nullity if a registered trademark falls under this statement.
- Generic and descriptive trademarks that through their use in the market have acquired distinctiveness will be susceptible for registration, known as “secondary meaning”.
- “Trade dress” figure is now included, meaning that image elements of the trademark such as size, design, color, label, packaging, decoration or any other that combined distinguish goods or services in the market, will be susceptible for registration.
- Coexistence agreements are now allowed, meaning that the registration of trademarks or commercial names similar to others already registered or in the process of registration will be allowed, as long as the consent is given by the owner or applicant with prior rights.
- The period to file a cancellation action based on the prior use of a trademark, that has been used whether in Mexico or abroad has been extended from 3 to 5 years.
- The kind of proof that can be filed on opposition proceedings is now determined.
- The possibility of filing closing arguments (allegations) after the response to the opposition has been filed is also included.
- The PTO will now dictate resolutions regarding the oppositions, which was not mandatory before the reform.
In general, the opposition system recently introduced in Mexico is strengthen and improved.
The aforementioned reform will come into force on August 10th, 2018.
We hope that these measures will encourage EU SMEs to protect their intellectual property rights in Mexico.