This article was published by Legal Industry Reviews Magazine.
As recognized by several international indices, Mexico’s Intellectual Property (IP) system could be said to be above the world average. Undoubtedly, the USMCA has strengthened it. Three years after its entry into force, North America has the most modern protection standards in the world.
Thanks to the USMCA, Mexico has a new Industrial Property Law (2020) and new provisions for the protection and enforcement of copyrights in the digital environment. However, the corresponding amendments to the Federal Copyright Law and the Federal Penal Code are the subject of an unconstitutionality challenge before the Supreme Court of Justice (SCJN). The National Human Rights Commission filed the case on the grounds that the new provisions violate the right to information and free access to the Internet.
Generally speaking, one of the main obligations, if not the main one, is to have digitized services for the protection of intellectual property rights. Thanks to this and the fact that Mexico was already in compliance, the system functioned with minimal setbacks during the pandemic.
With regard to patents, the possibility of obtaining compensation for the period of validity in the event of unjustified delays by the Mexican Patent and Trademark Office stands out. Even before the entry into force of the USMCA and the new law, the SCJN granted three years of compensation for a pharmaceutical patent. In the case of industrial designs, their validity can be up to 25 years, compared to 15 years.
With respect to trademarks, the new law regulates non-traditional trademarks, trade dress and certification marks. The period of validity starts from the date of grant and not from the date of filing as in the past. In order for trademarks to fulfill their purpose, the obligation to declare actual and effective use has been introduced after the third year of registration and every 10 years when it comes time to renew, otherwise the registration will expire.
The Mexican Institute of Industrial Property, better known as IMPI, has also been strengthened and modernized. Although it was already a unique authority in the world for its competence in the enforcement of intellectual property rights and in the fight against counterfeiting, it was given the power to settle and order the payment of damages to the owner of the infringed intellectual property rights. However, this has not gone beyond the paper; the lack of resources – economic and human – has not allowed the Super IMPI to exercise its true power.
The above, together with the increase in patent applications and registrations, has saturated the IMPI. It is not a question of giving money to the Trademark and Patent Office, but of allowing it to use part of the income it generates, which makes it a surplus entity. It is of the utmost importance to allow IMPI to hire more examiners to reduce the backlog and prevent it from growing.
Undoubtedly, the new law and the aforementioned amendments are of transcendental importance, but they are not enough. It is necessary that the authorities as well as the right holders put and keep IP as a priority on their agenda and that there is a business and political will to protect, defend and exploit IP rights.
FEATURED NEWS 1:
Federal elections are coming!
With less than a year to go before Mexico elects its next president and members of Congress, ECIJA Mexico, has been holding conferences to make both, future candidates, and IP rights’ owners, aware of the sensitivity of the unauthorized use of trademarks and copyrights. Illegal use of intellectual property rights in political campaigns entails liability for the candidate. For the owners, failure to enforce their rights may result in liability and sanctions.
FEATURED NEWS 2:
Secondary Meaning. Standard of proof.
More and more clients are asking us about the possibility of registering this or that isolated color because of the first registration granted in Mexico for an isolated color based on the doctrine of secondary meaning. The issue has become more complicated as a district court has raised the standard of proof to prove acquired distinctiveness. We have advised our clients that market surveys are a must in these types of cases.
