11 November 2020
On November 05, 2020, the New Federal Law for the Protection of Industrial Property, started its application in Mexico, as discussed in previous articles. It is important to remember that this New Law has its origin in the group of Laws and Modifications quickly approved by Deputies and Senators last June, and published by the Executive on July 1st, 2020, in line with the commitments of the Treaty among Mexico, United States of America and Canada, also known as T-MEC
This new Law includes an important amount of precisions in the field of inventions and trademarks, as well as faculties for the Mexican Institute of Industrial Property (IMPI), which obtained more elements to exercise its functions efficiently.
Several modifications have important relevance in the field of Industrial Property in Mexico, and in most of the cases, it is noticed that they came to solve important problems for National and Foreign users. Notwithstanding the above, its application and acceptance by our Courts arises doubts, which will be solved once the first nullity and infringement actions based in this new Law are launched and their resolutions are appealed by the users.
The emission of some complements is still pending, such as the Regulations and the registration forms, which will be helpful to define and adjust in the practice the changes that the users are facing.
We will make a count of some of the most relevant topics that come from this New Federal Law for the Protection of Industrial Property, which definitely are relevant points that national and foreign companies that own Industrial Property Rights in Mexico, will have to consider.
– Clarifications regarding attesting the capacity of the representatives;
– Inclusion of relevant modifications in the field of inventions, utility models and industrial designs;
– One specific chapter for SCP in the field of patents;
– Emphasis in the use of the Official Gazette to publish matters related to public domain, particularly matters related to medical substances;
– The express condition to record license agreements for the use of trademarks is withdrawn;
– The counting of the validity of 10 years for the trademarks will start on its registration date and the filing date will not be considered for this purpose;
– The obligation to declare the real and effective use of the products or services of the trademarks, at the third year of registration and at the renewal, is maintained;
– Impounded trademarks will not require declaration of use when the renewal is requested by the beneficiaries;
– Modifications to the opposition procedure, where the times of response are modified; now the opposition takes more relevance and may put in risk a registration procedure; this is, official actions including opposition information must be responded, otherwise, the registration process will be abandoned;
– Express and written consent will be an option to surpass barriers;
– Collective and Certification trademarks are maintained in this new Law, with particular precisions for the Certification trademarks;
– The bad faith objection and nullity is maintained, but the concept is defined as “Bad faith will be understood, among other cases, as having requested a registration of a trademark with the purpose to obtain an undue benefit or advantage in prejudice of the legitimate owner”
– Partial cancellations and nullities are considered by this new Law;
– There is a limitation to exercise nullity actions against trademark registrations, in the cases where after having exercised an opposition, the arguments and evidence are not new. (It will be important to keep a strict vigilance on our higher Courts criteria, as well as to carefully evaluate the strategies to use oppositions, appeals and nullity actions);
– Provisional measures receive more relevance, providing more faculties to the authority and even including the express mention of the possibility to suspend, block or remove digital content;
– The conciliation faculties of the IMPI receives more precision and structure;
– The IMPI receives the faculty to attend damages claims; it is exposed a duality of options to claim damages, through a civil court or through the same IMPI.
– The IMPI obtains relevant faculties to establish fines .
The applications and cases filed under the prior Law, will be attended in accordance with such Law.
We trust the changes in Laws that came with the T-MEC, have the purpose to generate a trustable commercial environment and adequate for the members. Mexico has made a firm step to promote the investment and the protection of the Industrial and Intellectual Property, by issuing this new Law, and we will be looking forward to participate in these activities providing support to our clients in this market.