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Sponsored article: Mexico continues to modernize its IP system




Gloria Niembro Castro and Santiago Zubikarai Gonzalez Mariscal of Basham, Ringe & Correa, S.C. examine reforms to Mexico’s Industrial Property Law, analyzing the effect of the changes on industrial designs, geographical indications and trademarks

Two bills involving changes to Mexico’s industrial property legal framework have been passed by Congress in 2018. One of them targeted industrial designs and geographical indications and the second was related to trademarks. These reforms constitute a comprehensive amendment to Mexican Industrial Property Law. Although much remains to be done in terms of implementation, these reforms are generally perceived as an enhancement aiming to broaden industrial property protection for users of the system.

Designs

On March 13 2018 a reform to Mexico’s Industrial Property Law was published and this came into effect on April 27 2018. The reform will have a considerable impact on the protection afforded to industrial designs and geographical indications in Mexico. To understand the scope of the reform it is important to contrast the protection of industrial designs, appellations of origin and geographical indications before and after this reform.

In Mexico, according to the law, industrial designs are classified as either industrial drawings which refer to shapes, lines or colors incorporated into a product for aesthetic purposes, or industrial models which are essentially models or patterns used to manufacture a product. Exclusivity can be granted over industrial designs through registration as long as they are new and susceptible to an industrial application.

The reform raises an interesting question: what is the meaning of new industrial design? Before the reform, the law simply and vaguely pointed out that a new industrial design is independently created and significantly differs from known designs or combinations thereof.

The reform goes one step further, defining independent creation as the lack of any identical design being publicly known at the date of the filing of the application and additionally stating that designs differing in irrelevant details will still be considered identical.

The bar seems to have been raised in the area of protection for industrial designs. Examiners will now be constrained to consider not only if the design differs from other known designs in more than just irrelevant details, but also if an expert in the field would discern a difference between the design in question and other known designs.

The reform seeks to bring the prosecution of industrial designs closer to the procedure for obtaining a patent. With a few exceptions, designs will be prosecuted and issued using the same rules as for a patent application. The reform may allow the owner of a design application to obtain compensation from third parties that use the design once the application is published.

The reform also included a big change in the timeframe in which design registrations are in force. Before the reform, the registration would be in force for a period of fifteen years, without the possibility of renewal. Now, the design registration will be issued for an initial period of just five years, and can be renewed for subsequent periods of five years for up to a total of 25 years.

It should be mentioned that both applications pending at the time that the reform came into force and issued design registrations can benefit from the reform. Applicants will need, however, to specifically request the application of the new rules to their existing application within a 30 day period counted from April 27 2018, and it is highly advisable that applicants interested in doing so seek legal advice. Owners of design registrations granted before the reform may benefit from a time extension so that they can enjoy up to the maximum of 25 years.

Geographical indications

The protection of geographical indications has also been substantially changed. While international treaties protecting geographical indications can be invoked before Mexican authorities, up until the reform, industrial property law only recognized denominations of origin understood as the name of a geographical region that is also used to designate a product that comes from that region and that owes its characteristics to the geographical environment.

Tequila is a perfect example. It is a geographical region in western Mexico, but it is also the name of the product originating from that region that owes its characteristics to that particular environment.

The reform now also protects all geographical indications understood as any name of a region or other indication of belonging to a region that identifies a product as belonging to such a region when a characteristic of the product is mainly due to its geographical origin.

This is without prejudice to the fact that denominations of origin are still protected.

Thus, the difference is that the law in Mexico is granting protection to any indication that a product originates from a certain region, even when the name of the product is not the name of the region. For example, references to Baja California in connection to wine can be protected as geographical indications even if they would not qualify as denominations of origin under the prior rules because they are not the name of the product.

To further protect geographical indications and denominations of origin, the Industrial Property Law now establishes that using without authorization a denomination of origin or geographical indication constitutes administrative infringement. The reform also provides an additional protection for products produced in Mexico by providing that the sale, production, transport, import and export of products that do not comply with the applicable denomination of origin or geographical indication can constitute a federal crime.

Trademarks

On March 22 2018 a substantial amendment to Mexico’s Industrial Property Law was approved by Mexican Congress mainly focused on trademark-related aspects. The amendments have not yet been published and will become effective 60 days after publication.

Big changes have been made to trademark law.

An important amendment is that trademarks no longer need to be visible in order to be registered.

As currently drafted, Mexican Industrial Property Law provides that a mark is any visible sign that distinguishes products or services from others of the same type or category on the market. With the reform, a mark would need to only be perceptible by the senses and capable of being represented in such a manner that the subject matter of protection is well determined.

Accordingly, non-traditional marks that were previously denied protection will now be registrable in Mexico, such as sounds and scents.

Sounds and scents are capable of functioning as source identifiers by performing the trademark function of distinguishing the commercial origin of a product or service. Examples of these non-traditional trademarks are the Nokia tune or Tarzan yell, and the scent of bubble gum for footwear.

Furthermore, descriptive or common use terms as well as three-dimensional common forms, isolated letters, digits and colors and non-distinctive trade dress, previously unsuitable for registration will be registrable after the reform, based on distinctiveness acquired through use, also known as secondary meaning in some jurisdictions. Under current law, descriptive terms or otherwise non-distinctive elements are ineligible for registration and the

Mexican Institute of Industrial Property has been reluctant to accept notoriety or strong distinctiveness arguments to overcome a descriptiveness objection. Evidence of use to claim acquired distinctiveness will certainly benefit those trademark holders whose marks have achieved distinctive status in Mexico despite being descriptive initially.

One of the most notable trademark reforms concerns the provisions governing oppositions.

The most significant modification is that the opposition will be binding for the examiners of the Mexican Institute of Industrial Property, who shall issue a decision on the merits in each case. Further, the parties will be able to file evidence along with the opposition and will be granted a twoday term to submit final pleadings.

Registrants must now file a declaration of use during the three months following the third anniversary of the registration granting date. Failure to file this declaration will automatically result in the lapse of the registration.

As to cancellation actions, a new ground was implemented against bad faith applicants/ registrants.

A trademark registration will be declared invalid if it was obtained in bad faith. The amendment does not detail what should be understood by bad faith, and this term will have to be interpreted by the Mexican Institute of Industrial Property and courts. For instance, a finding of bad faith may be based on the applicant’s knowledge of the third party’s rights or legitimate interests in an identical trademark or a trademark substantially identical to the mark applied for, or the applicant’s conduct in applying for the mark is inconsistent with norms of reasonable and fair commercial behavior, or the notoriety and well-known status of the mark at issue.

The virtue of this amendment is that it entitles legitimate trademark owners to defeat trademark piracy and trademark misappropriation cases.

Concluding thoughts

Mexico has introduced substantial reforms in relation to designs, trademarks and geographical indications. These provide a valuable opportunity to modernize Mexico’s protection of industrial property rights, both by recognizing the importance of protection of subject matter that was previously excluded and in enhancing exclusivities that already existed.

What remains to be seen however, is how these reforms will affect the practice of the authorities and legal practitioners implementing these changes.

Basham bio


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