MEXICO: An Introduction to Intellectual Property

Mexico Overview: Intellectual Property 

During the last 12 months, Mexico has faced a series of disruptive events: from a presidential transition, the simultaneous negotiation of free trade agreements, substantive amendments to the Industrial Property Law and the Federal Copyright Law, as well as the issuance of several court precedents, among others. These events have impacted the Mexican Intellectual Property sphere of law and policy in different ways with their respective consequences on the day-to-day practice of this area, affecting rightsholders, authorities, and practitioners.

In the political field, it is noteworthy that Andrés Manuel López Obrador won the Presidential election held on July 1st, 2018. The new Administration has expressed its commitment to continuing advancing an economic model of growth, investment, and global trade. This suggests that issues like innovation, competitiveness, and Intellectual Property will remain a priority for the Mexican State.

Two major reforms to the Law of Industrial Property occurred during 2018. The first one, passed in March, comprises the following:

Industrial designs. The concepts of independent creation and significant degree have been added to the novelty requirement for the registration of an industrial design. They are now valid for 5 years, and said registrations are renewable for periods of the same duration until reaching a maximum of 25 years. It is worth mentioning that this amendment will not have retroactive effects. Hence, industrial designs granted prior to the entry into force of this amendment will not be affected by the new provisions.

Appellations of Origin (AOs) and Geographical Indications (GIs). This Reform incorporates for the first time a full-fledged protection of the figure of geographical indications. This new regime of protection for AOs and GIs will start once the Mexican Institute of Industrial Property (IMPI) issues a "Declaratory of Protection," which may be issued ex officio or by petition of an interested party. A Declaratory of Protection may be refused on the following grounds: technical, generic or common use names; descriptiveness; identical name or confusingly similar to a protected or pending one; or from prior rights derived from a trade mark application or registration covering identical or similar products or services. Since the Mexican Government will own the Declaratory of Protection, AOs or GIs may only be used if the corresponding authorisation is issued by the Mexican Institute of Industrial Property. This authorisation will be valid for 10 years and will be renewable for the same term.
Moreover, an opposition system was established within a period of two months, from its publication in the Official Federal Gazette, to oppose an application. A procedure to recognise abroad the granting and registration of AOs and GIs in Mexico was also included. Lastly, the possibility to file an infringement action and/or a criminal action against the improper use of AOs and/or GIs was incorporated.

New non-registrable criteria for trade marks. A legal impediment of non-registrable terms for distinctive signs has been introduced, such as the expressions of "gender," "type," "manner," "imitation," "produced in," and similar ones that may create a likelihood of confusion in the consumer or imply unfair competition if registered

The second reform was passed on May 2018, and it incorporates the following:

Non-traditional trade marks. The combination of colours, holographic signs, aromas, sounds, and trade dress, will now be registrable subject matter for a trade mark.

Secondary meaning. The secondary meaning common law concept has been introduced to the Mexican legislation, allowing distinctive signs that previously could not be registered as a trade mark, to obtain such registration, as long as their distinctiveness and prolonged use have taken place in commerce.

Bad faith registrations. The concept of "bad faith" is now recognised as a legal impediment to register a trade mark and as a ground for a trade mark nullity action. A trade mark will be deemed as registered in bad faith if the registration was applied in: a) a manner contrary to good uses, customs and practices of the IP system, commerce or industry; or b) if an improper benefit or advantage is obtained by injuring a legitimate trade mark owner.
On the other hand, a party with legal standing will be able to file a nullity action on grounds of bad faith at any time.

Declaration of use. During the first three months that follow the trade mark's third year of registration, the owner must file a statement of use before the Mexican Institute of Industrial Property. This declaration of use needs to be filed only once during each term of protection of 10 years.

Collective and certification trade marks. To use a certification or a collective trade mark, the interested party must comply with a set of rules of use established for each one depending on their specific components, characteristics, quality, manufacture process or origin, among others.

Well-known and famous trade mark declarations. To obtain such declarations a trade mark won't have to be registered in Mexico from now on.

In addition to these important developments in the area of industrial property, copyright regulation had a remarkable modification of its own. On June 1st, 2018, an amendment to the Federal Copyright Law introduced the facility to authors, composers, and rights holders to request before a civil court (whereas before, such request was only admissible before the MIIP), precautionary measures to remove infringing content or the cease of infringing activities, even against the equipment or system that enables the spread of said infringing content or activity.

International Trade Negotiations
Mexico has engaged in multiple international negotiations since last year. One of these concluded with the signature of the Comprehensive and Progressive Agreement for the Trans-Pacific Partnership (CPTPP), on March 8th, 2018, along with Australia, Brunei, Canada, Chile, Japan, Malaysia, New Zealand, Peru, Singapore, and Vietnam. The CPTPP contains a comprehensive chapter on intellectual property, which sets a regional standard for the protection and enforcement across the Asia-Pacific region. It also suspends several provisions from the original intellectual property chapter of the Trans-Pacific Partnership Agreement (TPP) in areas such as: patents and pharmaceuticals, copyright, Internet service provider liability, and enforcement.

In relation to the international negotiation held between Mexico and the European Union, we have witnessed an historical achievement. In April 2018, the Intellectual Property Chapter was enhanced with a mutual recognition and reciprocal protection of a selected list of geographical indications; a higher scope copyright protection including resale rights; the possibility of compensation for unreasonable delays within the sanitary authorisation process of pharmaceutical and plant protection patents, as well as a more specialised data protection terms; and a detailed section on civil and administrative enforcement procedures.

The negotiations of the new North American Free Trade Agreement are currently ongoing with optimistic proposals but an uncertain future in regards with its conclusion.

Additionally, Mexico is negotiating the Pacific Alliance partnership with Colombia, Peru, and Chile, seeking for a platform that fosters political, economic, and regional cooperation and integration among these nations.

2018 has been a remarkable year for the development of Intellectual Property in Mexico. With the recent amendments on the related national body legislations and the conclusion and ongoing negotiations of international agreements, in areas as important as trade marks, copyrights, patents, geographical indications and appellations of origin cope with the latest demands of the industry. With the current panorama, the Mexican intellectual property scope plays a major role vis-à-vis the development of the market within its jurisdiction as well as recognising the country as a strong competitor across the globe.