March 14, 2018

Amendments to the Industrial Property Law regarding Industrial designs, Utility models, Appelations of origin and Geographic indications

On March 13, 2018, a decree amending the Mexican Industrial Property Law was published in the Official Gazette of the Federation.  The amendments strengthen the protection afforded to industrial designs and utility models, and create a new legal regime for the protection of geographic indications.  The new provisions are summarized below.
Industrial Designs and Utility Models
An “industrial design” is equivalent to a design patent in the United States.  A “utility model” is similar to a utility patent, but with a lesser degree of novelty required and a lesser degree of protection.

1. The “designer” is presumed to be the person identified as such in the application for registration.  The designer is entitled to be identified as such when the application is published, and in the registration certificate.  This right cannot be waived (Article 13).

2. The publication of an application for registration of a utility model or industrial design must occur as soon as possible after the conclusion of formal examination.  A request for publication is no longer required (Articles 30 bis and 37 bis).

3. An industrial design is sufficiently novel to merit registration if it is an independent creation, and differs to a significant degree from known designs or combinations of characteristics of known designs (Article 32 bis).  “Independent creation” means that no identical industrial design has been made known to the public before the application filing date, or before a recognized priority date.  Industrial designs are considered “identical” if the differ only in irrelevant details.  The question of whether designs differ to a “significant degree” must be determined from the viewpoint of an expert in the field, considering the general impression produced by other industrial designs made known the public before the application filing date, or a recognized priority date, and considering the designer’s degree of freedom in creating the industrial design.

4. The attachments to an application for registration of an industrial design must include graphic or photographic reproductions of the design that are sufficiently clear for their understanding and publication (Article 33.I).

5. Industrial design registrations will be valid for five years, counted from the application filing date.  Registrations may be renewed for up to four additional five-year terms (for a maximum of 25 years), upon payment of the required fees.  Registrations and renewals will be published in the Industrial Property Gazette (Article 36).

6.The owner of an industrial design registration must apply for renewal within six months of its expiration, with a six-month grace period for late filing (Article 36 bis).

7.An industrial design registration will be cancelled automatically if it is not renewed, without the requirement of a declaration of cancellation by the Mexican Institute of Industrial Property (IMPI).

                                                                        Appellations of Origin and Geographic Indications
1. The definition of an “appellation of origin” (AO) has been revised to conform to Article 2 of the Geneva Act of the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration.  Specifically, an appellation of origin is, “the name of a geographical area, or another denomination known as referring to such area, which serves to designate a good as originating in that geographical area, where the quality or characteristics of the good are due exclusively or essentially to the geographical environment, including natural and human factors, and which has given the good its reputation” (Article 156).

2. The law now defines a “geographic indication” (GI) in accordance with Article 2 of the Geneva Act, as “the name of a geographical area, or another indication known as referring to such area, which identifies a good as originating in that geographical area, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin” (Article 157).

3. A “geographic area” is defined as the entire territory of a country or a region, locality or place within a country (Article 158).

4. The protection of an AO or GI begins on which IMPI issues a declaration of protection (Article 159).

5. AOs and GIs are public property owned by the federal government, which may be used by private parties upon authorization by IMPI (Article 160).

6. The term of protection for AOs and GIs is indefinite.  DOs and GIs will remain in force as long as the conditions which led to the granting of the declaration continue to exist (Article 161).

7. A common or generic name may be freely used even if it is an element of an AO or GI that has been granted protection (Article 162).
8. The grant or termination of protection for an AO or GI will be published in the Industrial Property Gazette (Article 164).
9, A declaration of protection for an DO or GI may be requested by persons or entities directly involved in the extraction or production of the product in question, chambers or associations of manufacturers or producers, agencies of the Federal government, or the governments of states where the product is extracted or produced (Article 165).
10. If IMPI refuses an application, the applicant may respond within two months, extendible to four months (Article 165 bis).
11. An application for protection of an AO may be converted into an application for protection of a GI, or vice versa (Article 165 bis 3).
12. Applications for the protection of AOs and GIs will be published and may be opposed, as provided in Articles 165 bis 4 through 165 bis 9.
13. The declaration of protection by IMPI must include a description of the product, including its characteristics, components, means of extraction or production process, the Official Mexican Standards or other criteria applicable to the product and its extraction, production and packaging, and the territory or geographic area protected (Article 165 bis 10).
14. A decision to refuse protection will be served on the applicant, and if applicable, the oppose (Article 165 bis 11).
15. The amendments provide detailed rules for requesting and obtaining authorization to use a protected AO or GI (Articles 165 bis 14 through 165 bis 25).
16. Bases for invalidating or cancelling a grant of protection are detailed in Articles 165 bis 27 through 165 bis 29.
17. The recognition of AOs or GIs protected in other countries is governed by Articles 166-178.  This is a substantial improvement over existing law, which contained no clear, transparent provisions regarding the protection of foreign AOs and GIs.
18. The list of “administrative infringements” which may be litigated before IMPI has been revised to reflect the amendments (Article 213).
19. Article 223 has been amended, so that it is now a crime to produce, store, transport, distribute or sell products of domestic origin for the purpose of an economic benefit, without a certification required by an AO, GI or Official Mexican Standard.  There is an exemption if the Official Mexican Standard is no longer in force or the agency responsible for administering the AO or GI is not accredited.
The amendments will be effective 30 days from publication.