July 2020, Newsletter

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MODIFICATIONS TO THE MEXICAN INTELLECTUAL PROPERTY LEGAL SYSTEM

It is important to highlight that Mexico has made recent modifications to its Intellectual Property Regulations derived from the contractual obligations acquired from the signing of the “United States-Mexico-Canada Agreement” (USMCA), the “Comprehensive and Progressive Agreement for Trans-Pacific Partnership” (CPTPP) and the “Marrakesh Treaty”. A summary with the most relevant modifications is detailed herein:

THE NEW FEDERAL IP LAW IS PUBLISHED, WHICH ABROGATES THE INDUSTRIAL PROPERTY LAW IN MEXICO

In Iberbrand® we are always committed with our clients. Therefore, we send you, through this message ,the main law innovations in order to keep you updated in a timely manner:

 

Litigation:

1. It is now possible to submit the initial brief of an administrative declaration request without the corresponding power of attorney; however, the power of attorney must be submitted later once the Mexican Institute of Industrial property (MIIP) formally requests its submission.

2. The CONCILIATION process between the acting parties in an administrative infringement action is now properly regulated and fines are established for the party who, once the conciliation is accepted, fails to appear at the appointments scheduled for said purpose.

3. It is determined that inspection visits may be carried out not only in physical establishments but also on virtual platforms.

4. It considers a substantial increase in the fines imposed by the MIIP for the commission of administrative infringements and the criminal conducts foreseen therein.

5. It considers the possibility of claiming damages caused by an infringing behavior. The claim for damages can be initiated either before the MIIP, once a definitive resolution declaring the infringement is issued, or before the Federal Courts without the need of a definitive resolution issued in the infringement procedure.

6. The possibility of claiming damages before the MIIP will expire two years counted from the date the Institute has declared an administrative infringement and it is enforceable.

7. An administrative nullity action will not be admitted if an opposition against the same trademark registration was previously filed UNDER THE SAME ARGUMENTS AND EVIDENCE and on which the Institute has already ruled.

8. This law contemplates the partial cancellation of a trademark registration over the products or services in which its use is not proved during the three consecutive years immediately prior to the filing of the corresponding Non-Use Cancellation Action.

9. It is now possible to request the partial nullity of a trademark registration with respect to specific goods or services.

10. It considers the possibility of impeding the free transit of import/export merchandise either in transit or under any customs regime.

Trademarks:

11. It eliminates multiple office actions by unifying in a single document the notification of the results obtained during the formal and substantive examination of a trademark application, as well as the notification of an existent opposition.

12. The 10-year validity of a trademark will now be counted from its registration date and not from its filing date as previously stipulated.

13. At the time of filing a trademark application as well as in the renewal of a trademark registration, the interested party will declare under oath that the products or services distinguished under the trademark are free of deception or bad faith.

14. In case a competent authority determines that the products or services distinguished under a trademark registration violate Law provisions which are in force, the MIIP may initiate –ex officio- the procedure of administrative declaration of nullity of the subject registration.

15. The trademark registrations that were granted as of August 10, 2018, will be the only registrations compelled to file the Declaration of Use (DoU) within the 3 months after the 3 years from the date of its registration. All registrations granted prior to said date will be excepted from this rule.

16. It is now expressly established that a license agreement is not required to be recorded before the MIIP in order to be enforceable against third parties, nor to exercise actions against for the protection of trademark rights, or to demonstrate use on behalf of the owner.

17. The trademark registrations that were granted as of August 10, 2018, will be the only registrations compelled to file the Declaration of Use (DoU) within the 3 months after the 3 years from the date of its registration. All registrations granted prior to said date will be excepted from this rule.

18. It is now expressly established that a license agreement is not required to be recorded before the MIIP in order to be enforceable against third parties, nor to exercise actions against for the protection of trademark rights, or to demonstrate use on behalf of the owner.

19. Electronic models and systems are incorporated for procedures related to trademark applications.

General considerations:

It is eliminated as a prohibition to the granting of a patent, registration or authorization, or publication in the Gazette, the acts and contents that could be considered against morality and good customs, being the only prohibition that any of these figures are contrary to the public order or contravene any legal provision.

Patents:

20. The patent’s validity for unjustified delays is extended.

21. The publication in an application, patent or registration made by the MIIP or another Intellectual Property Office will not be included in the state of the art when it has been made due to an error attributable to authorities or to the application that has been submitted by a third party without authorization and who obtained the information directly or indirectly from the inventor.

22. It is specified that when the industrial design consists of an animated sequence or an animated graphic interface, it will contain the enumeration of perspectives that allow a clear and complete understanding of movement or progression.

23. The integrated circuit layout design is added as a legal figure, that is part of the modalities of the registration of an inventor/creator.

24. New protection rules are established for appellations of origin in accordance with different commercial treaties.

26. In the definition of non-patentable inventions, it is mentioned that the variation of use, dimensions and shape is not an invention if it is obvious and does not give an industrial result.

27. It points out that the right conferred by a patent will not produce any effect, nor will it constitute an administrative infringement or crime against:

I. A third party to carry out studies, tests and experimental production necessary to obtain a sanitary registry of medicines for human health within:

a) Eight years prior to the expiration of the patent validity, if it is a biotechnological medicine, or

b) Three years prior to the expiration of the patent validity, if it is a chemical drug medicine.

II. A third party that uses the patented invention or has made the necessary preparations for this purpose, during the rehabilitation period.

III. A third party that carries out the importation of a pharmaceutical product, in accordance with the applicable International Treaties, to face cases of serious illnesses that are an emergency or threaten national security.

28. It is clarified that the scope of the exclusive rights of temporary exploitation of the patented invention cannot be interpreted beyond the protected matter, that is, what is presented is what is protected.

29. In the definition of industrial drawings, the term “artisanal product” is incorporated.

30. It is specified that in order to recognize the priority of an industrial design, a certified copy of the claimed priority must be exhibited and, where appropriate, the Spanish translation, no later than three months after filing the application in Mexico.

ENTRY INTO FORCE

The Federal Law for the Protection of Industrial Property in Mexico will enter into force ninety business days after its publication.