Some of the most important IP systems in the Americas are
undergoing big changes. As this special report will detail in
the following pages, in an article written by David Schwartz
and Philip Lapin of Smart & Biggar, Canada has implemented
a number of big amendments.
In Brazil, as Robert Arantes of Daniel Legal & Strategy
writes, the law around protection of 3D marks has evolved in
Also in Brazil, INPI, Brazil's IP office, issued a new rule
on patent examination on October 30. It is aimed at reducing
the country's notoriously large patent backlog. There are about
200,000 patent applications pending examination in Brazil.
Rule 227/2018 regulates the analysis of patents using the
results of searches in other patent offices. The rule applies
to patent applications that have not already been submitted to
technical examination by INPI, have not had any other form of
priority examination by INPI, have not received any pre-grant
opposition, and have a counterpart application with prior art
searches by a national or regional patent office in other
If these conditions are met, INPI will publish an opinion
setting out prior art documents cited by other patent offices
and inviting the applicant to submit new claims or arguments
regarding the patentability of the claimed invention. The
applicant will then have 60 days from the date of publication
to answer any queries.
The new Rule is based on the findings of an existing pilot
programme introduced in January 2018, and is in line with
INPI's 2018 Action Plan of 2018 to reduce the backlog of
Argentina also made an interesting change recently. A
regulation took effect in November that implements a new
procedure for prosecuting utility model applications. The new
procedure is in response to Decree No. 27/2018 issued in
January this year, which shortened the procedure by scrapping
the deferred examination system and requiring substantive
examination to take place immediately. Utility models
previously never took off in Argentina because they took almost
as long to get as invention patents.
The January decree also made other big changes. The main one
affecting trade marks is the setting aside of the system of
deciding oppositions in court. The applicant and opponent now
have three months from the service of the notice of opposition
to settle the issue. Regulation No. P-183/2018, issued in July,
set out a seven-step procedure for resolving trade mark
In Mexico, two bills changing Mexico's industrial property
legal framework were passed by Congress in 2018. One of them
targeted industrial designs and geographical indications and
the other was related to trade marks.
The bar for industrial designs has been raised by making
examiners 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 Industrial
Property Law now establishes that using without authorisation a
denomination of origin or geographical indication constitutes
Amendments that came into effect in Mexico in August gave
protection to new mark types, including sense marks, such as
sound and smell, colour combinations, holographic signs, and
operative and image element configurations – also
known as trade dress. It is now possible to obtain descriptive
or generic marks with respect to goods or services, so long as
they have acquired distinctiveness or secondary meaning derived
from their use in commerce.
A declaration-of-use provision has also been introduced,
requiring trade mark owners to declare "effective and real use"
after the third year of registration before the Mexican
Institute of Industrial Property. Failure to declare use will
lead to the registration being cancelled.