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