Just some weeks ago, on November 7 to be more precise, the Mexican Senate passed a bill to amend the Law of Industrial Property that will bring new life to the Mexican IP system in several fields, including industrial designs (IDs), geographical indications (GIs) and appellations of origin (AOs), as well as changes in patent and design prosecution rules and some amendments in terms of enforcement, as far as infringements are concerned, incorporating those related to GIs.
The bill, as approved by the Senate, has now been passed to the House of Representatives for review, possible modifications and, eventually, its approval, which might happen as early as by the end of year, to then simply be enacted by President Peña.
This bill has two main objectives, which might be far more important and challenging to Mexico than the bill itself: sign and enter into the Hague Agreement Concerning the International Registration of Industrial Designs on one side; and provide for a more effective, clearer and broader protection of GIs and AOs and their enforcement in our country, on the other. However, it is also relevant to consider that these amendments are being made just when NAFTA is being renegotiated and when Mexico and the EU are also modernising their Free Trade Agreement.
Enacting the Hague System for industrial designs
On the side of IDs, the bill definitely sets the table towards signing and enacting the Hague System in our country, which would very likely occur within months following the enactment of the amendments to the Law.
These changes include, for example, incorporating the possibility of achieving protection of non-industrial products through this figure, which would allow for the craftsmanship "industry" – a very relevant and highly regarded player in the Mexican market – to achieve protection over their handicrafts, when the said products comply with the requirements to grant them protection.
The amendment also contemplates the inclusion of the terms "independent creation" and "significant degree" applicable to IDs in a manner different to those that are relevant to patents by stating that an ID is to be considered an independent creation when no other identical ID has been made public prior to the filing date of the application or the priority being claimed, by considering identical those which characteristics differ solely regarding irrelevant details, and that the significant degree lies in the general impression that the ID produces in an expert in the field and which differs from the general impression produced by another ID made public prior to the date of filing of the application or the priority being claimed, considering the degree of liberty of the designer in creating the ID.
Under the current Law, IDs are valid for an unextendable term of 15 years, counted from the date of filing of the application, which complies with the rules of international practice and the specific provisions of the Hague Agreement. However, the bill is proposing to grant IDs an initial term of five years, counted from the application date, renewable for equal periods to cover up to 25 years, by payment of the corresponding renewal fees, which will undoubtedly be far more attractive to applicants and holders of IDs. The renewal would have to be filed within a window opening six months prior to the expiration date and closing six months following the same, providing for anticipated renewal and renewal within a grace period.
Additionally, the bill contemplates for the possibility of IDs registered under the current system to preserve their original 15-year term – keeping the need to pay annuities – but allows for the extension of the same to up to 25 years in total, by payment of the renewal fees and within the terms that will be applicable under the new rules, granting them an equal treatment to IDs that will be granted once the new provisions come into force.
Lastly, regarding the amendments being made for IDs but in this case also applicable to utility models and divisional patent applications, the bill incorporates publication of the application once formal examination has been concluded, without the possibility, however, of requesting anticipated publication of the same – unlike what happens with patents – with the aim of allowing for third party observations against the granting of the ID, without this being a formal opposition proceeding. However, this term as available previously for patents is being reduced from six to two months to all patents, utility models and IDs.
Geographical indications beyond appellations of origin
On the other hand, a major change being introduced by the bill is the inclusion of GIs, beyond AOs, which were the only figure recognised by our current Law. Without a doubt, these changes would bring our legislation up to date in the field and would represent a great challenge to our system and authorities, in terms of implementation, execution and enforcement, but which were definitely necessary.
The aim of the amendments is clearly and expressly to strengthen the protection of GIs and AOs, by firstly defining each of them and noting the differences between them, but also by incorporating clear rules towards obtaining protection of these and enforcing violations to the same, but also to establish procedures for the recognition in Mexico of GIs and AOs protected abroad, beyond the currently available ones.
The bill is proposing to grant IDs an initial term of five years, counted from the application date, renewable for equal periods to cover up to 25 years, by payment of the corresponding renewal fees, which will undoubtedly be far more attractive to applicants and holders of IDs
The first point in this proposed amendment is a required change to some sections of our Law regarding trade marks, in which the bill is incorporating an amendment to the article defining unregistrable signs, considering geographical zones and names of towns/cities, in addition to other items that were originally included as potentially creating confusion as to the origin of the products, as terms for which protection via trade marks would be rejected, in addition to deeming unregistrable any trade marks which include, on these same grounds, terms such as "type", "imitation", "produced in", "manufactured in" or any others that might cause confusion within consumers or may derive in acts of unfair competition in terms of GIs and AOs.
On the other hand, clear rules as to what may or may not constitute a GI or an AO and therefore be granted or rejected protection are set by the bill which, in many cases are similar to those constituting absolute or relative grounds of refusal for trade marks, in the way they are being proposed, within others: that the name corresponds to the technical, generic or common use term of the goods for which protection is sought; those that are descriptive of the goods to be protected by the GI or the AO; those that are identical or confusingly similar to trade marks, slogans or trade names that have been registered or applied for on a date prior to that of the request for protection of the GI or the AO and is intended to be applied to the same or related goods; the translation or transliteration of a GI or an AO not susceptible of being protected; and that which constitutes or contains the designation of a plant variety or an animal breed.
In case the rejection is being based on grounds of a prior existing trade mark, slogan or trade name, the applicant may request cancellation of the said trade mark, slogan or tradename, which will suspend the GI or AO application process, until a final decision has been issued in the cancellation proceedings. Should the "cited" right be cancelled, protection of the GI or AO would be granted.
The inclusion of GIs to our system has opened the possibility of transforming a request from protection of one figure to the other during the application process, which grants guarantees in terms of achieving protection through the correct means.
Unlike under the current rules in which only third-party observations against a request for declaration of protection are allowed, the bill proposes introducing a formal opposition system during the application process, upon publication of the request for declaration of protection in the Federal Official Gazette. The system contemplates a term of two months within which an opposition may be filed by any third party with legal interest to do so, which must be accompanied by evidence and for which official fees will be payable. In turn, the applicant will have a term of two months to file a response to the opposition and file evidence, if applicable. Once the opposition has been studied by IMPI, but prior to rendering a decision, the parties will be called to file conclusions in the case, to then issue the corresponding decision. If the decision is to grant protection of the GI or the AO, IMPI will instruct publication of the same in the Federal Official Gazette.
A relevant point being introduced by the bill, as mentioned in preceding paragraphs, is the formal recognition in Mexico of GIs and AOs protected abroad, which will now have to be recorded before IMPI before a registry that will be created ex professo. This application will have to be filed by the holder of the GI or the AO, applying to these effects the same rules as those described above for requests of grant of protection – including the opposition stage – but having to also file the document proving that protection has been granted to the GI or the AO in the country of origin. Additionally, one of the most important aspects of the creation of this registry is that enforcement of the foreign GI or AO against third party unauthorised use will be under exactly the same rules and proceedings as those applicable to domestic GIs and AOs.
Lastly, the bill introduces some amendments in terms of enforcement against unauthorized use, specifically with regards to GIs and AOs, as mentioned above regardless of if they are domestic or foreign, by considering that infringement would exist in terms of the Law of Industrial Property, when using a name identical or similar to a GI or an AO to identify the same or related goods; using a translation or transliteration or a GI or an AO to identify the same or related goods; producing, storing, transporting, distributing or selling goods that are identical or similar to those protected by a GI or an AO using any kind of indication or element that causes confusion within consumers as to their origin or quality, such as "type", "kind", "like", "imitation", "produced in", "product of", "produce of", "manufactured in" or other similar.
With no doubt, this apparently imminent amended Law will bring Mexico closer to having an avant-garde legal framework regarding intellectual property, but some other aspects are yet to be covered and this might have been the chance to do so, but wasn't. Non-traditional trade marks, within others, are definitely an aspect where Mexico is far behind and needs to look into soon, but it seems that, for now at least, the possibility of having a new Law, drafted from scratch rather than patched up, is not a priority.
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