Amendments to the Mexican Industrial Property Law
On 13 March 2018, the Ministry of Economy published in the Federal Official Gazette a Decree amending and adding provisions of the Industrial Property Law (the Decree).
The Decree mainly refers to Inventions, Industrial Designs, Geographical Indications and Appellations of Origin. Among the principal amendments are the following:
1. Inventions and Industrial Designs
- Distinction is made between inventor, as creator of patents and utility models, and designer as creator of industrial designs.
- Once a patent application is published, third interested parties will have two months (before the Decree were six months), counted from the date of publication in the Industrial Property Gazette (the Gazette), to make observations on whether the application meets the requirements of novelty, inventive step and industrial applicability.
- Divisional patent applications will be published in the Gazette.
- Pending applications for utility models and industrial designs will be also published as soon as possible after the formal examination has been approved. It will not be possible to request advance publication.
- The Law defines the terms independent creation and significant degree, in order to establish clearer parameters to determine the novelty of an industrial design.
- The registration of industrial designs will now have a validity of 5 years, from the date of filing, renewable for successive periods of the same duration up to 25 years (before the Decree were 15 years). The registration of industrial designs and their renewals will be published in the Gazette. The renewal of the registration of an industrial design must be requested by the titleholder within six months prior to its expiration. There will be a grace period of six months.
2. Geographical Indications (G.I.) and Appellations of Origin (A.O.)
Due to the recent negotiations between Mexico and the European Union related to the Free Trade Agreement and with the aim of strengthening and expanding commercial opportunities for producers of both regions, especially in the field of dairy products, wines, beers and chilies, the G.I. concept was added in the Decree.
The Decree distinguishes between the G.I. and the A.O., the latter were already protected in our legal framework. Both concepts include the name of a geographical zone or refer to said zone to distinguish a product originated from it. The geographical zone can be the entire territory, a region, locality or place of a country. The essential difference, between both concepts is that the products protected by a G.I. owe their quality, reputation and characteristics to their geographical origin, while the products of the A.O. owe their quality, reputation and characteristics to the geographical environment, including natural and human factors. Therefore the concept G.I. (lato sensu) includes the A.O. (stricto sensu).
- Declaration of Protection of a G.I. or A.O. and the authorization of their use
- The protection of a G.I. or an A.O. is obtained by the declaration of protection issued by IMPI, either ex officio or upon request. The declarations are owned by the Federation and may only be used through the authorization issued by IMPI. Their validity will be maintained during the subsistence of the conditions that motivated it.
- The Decree indicates what can not be protected as a G.I. or A.O., including those terms that are identical or confusingly similar to a previous G.I., A.O., distinctive sign, registered or pending, for similar products or services; the generic name of a product as a sole; a descriptive term or a non-protectable translation or transliteration, as well as the designation of a plant variety or animal race.
- Such as trademarks’ prosecution, a formal and substantive examination is carried out. In addition, oppositions may be filed by third parties that justify their interest.
- It is possible to transform a G.I. to an A.O and vice versa.
- The authorization to use a Mexican G.I. or A.O. is requested before IMPI and is granted to the individual or legal entity that complies with the legal requirements. It can be transferred and licensed. The term is 10 years, renewable. And the authorized user is obliged to use the legends in Spanish Denominación de Origen Protegida or Indicación Geográfica Protegida, or the abbreviations D.O.P. o I.G.P.
- IMPI will record in Mexico the G.I. or A.O. protected abroad, if it is in the titleholder’s interest and is requested. As the process of a declaration of protection, a formal and substantive examination is carried out and the opposition procedure is included.
- On the other hand, it is possible to obtain recognition abroad of a Mexican G.I. or A.O. IMPI will directly carry out the necessary procedures in accordance with International Treaties, commercial agreements and corresponding legislations.
- The validity of the recognition will be subject to the validity of the document by which protection was granted to the G.I. or A.O. in the country of origin.
It is important to mention that any declaration, authorization and recognition of a G.I. or A.O. will be published in the Federal Official Gazette.
On the other hand, administrative actions for nullity and cancellation based on non use can be carried out against declarations of protection and authorizations of use in Mexico, and administrative actions for nullity can be carried out against recognitions of G.I. and A.O. protected abroad. Also, infringement actions and criminal offenses are created to sanction the unauthorized use of a G.I. or A.O. or confusingly similar terms.
The recognition in Mexico of a protected G.I. or A.O. abroad will represent a change that will impact hundreds of domestic and foreign producers. Of course, this will also have implications and complications for the holders of current industrial property rights.