As from August 10, 2021, filing the 3rd anniversary declaration of use will become effective as a requirement for the continuation of the validity term of trademark registrations granted in Mexico.

This legal requirement has been in force since August 10, 2018, being applicable to trademark registrations that have been granted as of that date, which will begin to reach 3 years precisely as of August 10, 2021.

The declaration of use must be submitted within a period of 3 months, counted from the third anniversary of the registration granting date. This term is not-extendable.

It is not necessary to submit proof of use, but the declaration it is filed under oath, indicating the products and/or services for which the trademark is used, so that the registration will continue to be valid only for the products or services for which the use is declared.

If the declaration of use is not submitted, the trademark registration will expire.

It is important to point out that this declaration of use must be submitted for the local trademark registrations, as well as for those that derive from international registrations granted in accordance with Madrid Protocol.

Other declaration of use is due with the renewal of the registrations. For the local registrations, this declaration must be submitted with the renewal application, while for the international registrations it must be submitted within the following 3 moths to the date when WIPO notifies the renewal to Mexican Institute of Industrial Property (IMPI).

Finally, although only the two declarations of use described above are necessary to keep the trademark registrations in force, it is important to consider that the use of trademarks protected in Mexico should not be interrupted for periods of 3 consecutive years or more, in order to avoid the risk of expiration in a cancellation proceeding.

Should you require further information, please contact us at biplegal@biplegal.com

https://www.leadersleague.com/en/news/the-change-with-the-greatest-impact-is-the-establishment-of-administrative-infringements-against-industrial-secrets.

On November 5, 2020, the new Industrial Property legislation entered into force in Mexico, with the name of Federal Law for the Protection of Industrial Property (LFPPI).

This new legislation derives from various International Treaties on the matter, of which Mexico is a party, but mainly from the negotiations and entry into force of the Free Trade Agreement between the United States, Canada and Mexico, on July 1st, 2020.

The new Law systematizes the legislative amendments that had occurred during the almost 30 years of its predecessor, but also includes new provisions, almost all of them aimed at granting better protection and defense systems to the holders of rights.

This new legislation introduces changes in almost all the matters it regulates, among which those mentioned below stand out.

Trademarks

In 2018 important changes were implemented in terms of trademarks, when through a legal reform new figures such as Geographical Indications and Certification Marks were included, as well as non-traditional trademarks, such as smells, sounds and trade dress, in addition to the establishment of the declaration of real and effective use of the marks on the third anniversary of the registrations.

Now, in the LFPPI, new provisions applicable to trademarks are added, such as the following:

• Prosecution: during the registration procedure, in a single official action the applicant will be notified of oppositions, formal requirements and substantive impediments.
• Opposition: if a third party submits an opposition against the application, they will no longer be able to demand the annulment of the registration based on the grounds that were already stated in the opposition.
• Term of the registration: the term of 10 years of the registered trademarks will now be counted from the registration date.
• Partial cancellations: for the first time in the Mexican trademark system, it has been established the possibility of partial cancellations on the grounds of nonuse or on other grounds of invalidation.

Patents and Utility Models

• Patents: when the process to obtain a patent takes more than 5 years for reasons attributable to the Mexican Institute of Industrial Property (IMPI), a Complementary Certificate may be requested, which may extend the patent term for up to 5 years, applying the formula of 1 additional day per every 2 days of delay attributable to IMPI.
• Divisional applications: it is now not possible to file divisional applications derived from previous divisional applications, unless MIIP requires or allow them.
• Utility Models: the term of the registrations, which was previously 10 years, has been increased to 15 years.

Industrial Secrets

In the new law, some formal requirements were eliminated and some of the considerations about what does not constitute an Industrial Secret have been modified; however, the change that is considered with the greatest impact is the establishment of administrative infringements against Industrial Secrets, in addition to the criminal offenses that have also been regulated in the Law. With this, the defense of Industrial Secrets can now be done through administrative litigation before IMPI, or where appropriate by criminal means.

Mediation

The new law establishes a voluntary mediation procedure in conflicts due to infringement of rights.

Fines for infringement

The fines for the infringement of rights have been subject to a notable increase. The highest fine that IMPI can apply has been increased by 1,500%. Likewise, now IMPI will be able to claim and collect them according to the Tax Code and Rules.

Monetary damages

Those affected by violations of their industrial property rights now have 2 alternatives for claiming damages:

• Before IMPI, once the infringement procedure has been concluded, by means of an incident of damages in which IMPI will rule on the amount of these, the execution of which will have to be claimed before the jurisdictional authorities.
• The other alternative is to go directly to the jurisdictional authorities, without having to previously exhaust the infringement procedure before IMPI.

Although the legal framework is still incomplete, since the issuance of the Regulations of the new law is pending, it sets the beginning of a new stage for Industrial Property in Mexico, in which the authorities, rights holders and IP practitioners will be writing, case by case, a new chapter of this fascinating area of law.

Should you require further information, please contact us at biplegal@biplegal.com

The first quarter of 2018 brought to Mexico a major amendment to the Industrial Property Law. It was published in the Official Gazette of the Federation on March 13, 2018 and will take effect 30 business days after its publication.

The amendment modifies provisions of Patents, Utility Models, Industrial Designs, Appellations of Origin and Geographical Indications, summarized as follows.

PATENTS

About patents, the term for third parties statements or oppositions was reduced from 6 to 2 months, counted from the date of publication of the patent application.

The amendment also establishes the public access to the official records of patent applications, once they have been published in the Industrial Property Gazette. This also applies to utility models and industrial design applications.

UTILITY MODELS

Under the amendment, utility model applications will be published as soon as the formal examination has concluded, with the inherent effects to said publication. This also applies to the industrial design applications.

INDUSTRIAL DESIGNS

Industrial designs were subject to several important changes, which will surely meet better the real needs of protection for these innovations.

• The category as Designer is expressly recognized, as well as the right to be mentioned as such in the application and in the corresponding registration certificate.
• Regarding the novelty requirement for industrial design registrations, the amendment defined the concepts of "independent creation" and the "significant degree" for the differentiation of one design from another one.
• It is now required that graphic or photographic reproductions that are filed with the design application are sufficiently clear for the comprehension and publication of the design; likewise, the product for which the design will be used must be indicated.
• The term of protection that previously was 15 years, will now be 5 years counted from the application filing date, and will be renewable for successive periods of 5 years up to a maximum of 25 years. This is the major amendment for industrial designs.
• The holders of pending applications will have 30 working days following the date on which the amendment takes effect, in order to request that such applications are granted under the new legal provisions.
• For the registrations that were previously granted, it will be possible to apply for its renewal within a period of 6 months prior to the expiration of the 15 years term of protection, and successively up to completing a maximum of 25 years counted from the application filing date.

Therefor, it is expected that in the near future the Mexican Patent and Trademark Office release new official fees for industrial designs, in concordance with these new provisions.

APELLATIONS OF ORIGIN AND GEOGRAPHICAL INDICATIONS

In this area, the changes and additions introduced by the amendment are notable and they should be expected to become instruments for the protection and impulse of a large number of typical products from different Mexican regions and also from other countries.

• The concept of appellation of origin (AO) is redefined, making more flexible the use of the element regarding the name of the geographical area.
• The category of geographical indication (GI) is now regulated and is being defined as “the name of a geographical area or containing that name, or another indication known to refer to said area, which identifies a product as originating therein, when certain quality, reputation or another characteristic of the product be fundamentally attributable to its geographical origin”.
• The amendment establishes the cases in which an AO or GI could not be protected, including provisions to prevent conflicts between AO and GI with other ones previously protected or in process of protection, or with trademarks previously registered or in process of registration, or even with designations of plant varieties.
• The procedure for the protection of AO and GI is now regulated, including third parties oppositions.
• From the amendment, Mexican Patent and Trademark Office has the power, either directly or through a competent authority, to obtain recognition in other countries for the AO and GI protected in Mexico, in accordance with International Treaties, trade agreements or each country legislation.
• The procedure for obtaining authorizations to use the AO and GI is also regulated, which will be granted for 10 years renewable for equal periods.
• It regulates the use of the protected AO and GI.
• Likewise, the amendment regulates the cessation of the effects of an AO or GI, as well as the nullity, cancellation or expiration of their corresponding authorizations of use.
• Of particular importance is that the Mexican Patent and Trademark Office must recognize the AO and GI protected in other countries, in accordance with International Treaties and the provisions of the Industrial Property Law.
• For the purposes of the previous point, the amendment establishes the possibility of recording in Mexico the AO or GI that had been protected in other countries, regulating the procedure and the requirements that must be fulfilled, as well as the scope and grounds for nullity and cancellation of said registrations.
• The amendment added infringements and criminal offenses against AO or GI protected or recognized in Mexico.

It is expected that the above described amendment will be followed in the near future by another one, no less important, related to distinctive signs. Meanwhile, Mexico continues the negotiation of international treaties within the electoral environment due to the presidential succession coming this year. All this makes 2018 a very dynamic and interesting year for the evolution of Industrial and Intellectual Property in Mexico.

Should you require further information please do not hesitate on contacting us at biplegal@biplegal.com

BIP LEGAL, March 2018