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IP systems updates

Argentina, Brazil, Canada and Mexico have all made important IP changes this year

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 recent years.

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 countries.

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 patents.

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 opposition disputes.

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 administrative infringement.

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.

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