Month: May 2018

Amendments to the Mexican Intellectual Property Act; Trademarks, Industrial Designs, Denominations of Origin and Geographical Indications.

Please be informed that on March 13 2018 and May 17, 2018, amendments to the Mexican Intellectual Property Act were published in the Official Gazette of the Federation, which became effective on April 27, 2018, and on August 10, 2018.
Please be advised that such amendments to Mexican Intellectual Property Act are in brief the following:
I. Trademarks:
• It broadens the legal concept of trademark to include the “non- traditional” marks perceptible to the senses (sounds, scents, motions).
• It includes as non-subjected to registration the expressions such as “gender”,” type”, “manner,” “imitation,” “produced in” or similar expressions as distinctive signs or marks anymore.
• It updates restrictions to obtain illegal trademark registrations (bad faith) were added, avoiding unfair competitors or trademarks trolls in Mexico.
• It includes “acquired distinction” or “second meaning” for trademarks derived from use and perception of consumer through time.
• It broadens the regulation of collective trademarks and grants registration to “Certification Marks”. It adds legends such as; “Collective Trademark” or “Certification Trademark”, under the acronym MR or the ® symbol.
• It includes the obligation to request all Registrants to file a Statement of Use at the Mexican Trademark Office (hereinafter the “IMPI”) attesting the real and effective use of the mark in commerce for a period of three months as of the third anniversary of being granted. Likewise, the obligation to file a Statement of Use for renewal purposes. It shall expire if the Registrant does not file such statement of use in both cases.
• It adds the option to obtain the registration of “trade dress” as product design, product packing and product configuration, or other distinguishing element of appearance collective referred to as trade dress (pluralidad de elementos operativos que distingan productos o servicios en el mercado) as a trademark
• It regulates the adversarial system of opposition.

NOTICE: We are expectant to the amendment for the Intellectual Property Statute to adapt it to those provisions, which we will be informing on the next few days.

II. Industrial Designs:
• It acknowledges the feature of “Designer” to the creator of an Industrial Design, formerly known as “inventor”.
• It regulates of the concepts of: “independent creation” and “significant degree” with regard to the requirement of novelty, for the protection of industrial design.
• It modifies the registration validity to 5 years renewable for equal successive periods up to a maximum of 25 years.
• It regulates the expiration as a cause for non-renewal of the registration.

III. Patents, utility models and industrial designs:
• It recognizes as a non-waiving right to be mentioned as an inventor or designer in the publication of application forms and registration titles.
• It publishes applications for registration of utility models and industrial designs in the Industrial Property Gazette upon approval of the form examination.

IV. Geographical Indications (GIs) and Designations of Origin (DOs):
• It modifies the definition of DOs.
• It includes the protection of GIs, according to align Mexican IP legislation to the new version of the Trade Agreement with the European Union.
• It provides a common procedure to process a petition for protection declaration and a procedure to authorize it use.
• It establishes provisions for the recognition of DOs and GIs protected abroad.
• It provides administrative fines and typifies criminal offense related to DOs and GIs

In relation to the above we are at your service for any questions and comments -TMC IP Services (Luis Mojica: luis@tmclegal.com, Pamela Moscosa: pamela.m@tmclegal.com).