Down Mexico way

It has been a busy year for IP owners in Mexico. Brands are still assessing new regulations on registering company names and protecting data, while one decision involving ‘sanitary registrations’ is still troubling some patent owners. Looking ahead, Mexico’s involvement in multilateral trade negotiations may bring wide-ranging benefits to IP owners in the country.

First, the good news. On September 14 the government published the Regulations for the Use of Company Names, which establish new rules for rejecting company names. Previously, company names were granted “regardless of the existence of registered trademarks”, said Ignacio Dominguez-Torrado of Uhthoff, Gomez Vega & Uhthoff. “This caused confusion and led to the erroneous acquisition of IP rights.”

The Ministry of the Economy, the government body overseeing the national trademark office, has superseded the Ministry of Foreign Affairs as the authority that allocates company names. “It can therefore perform cross-searches to avoid erroneously granting company names that already exist as trademarks,” said Dominguez-Torrado.

The regulations specify when the ministry can reject a name, such as if it is identical or confusingly similar to a registered trademark—but only when the trademark is registered in every class and is ‘notorious’. “These amendments are a logical step that should have been taken seven years ago,” he said.

Bringing more potential good news to brands, this time in the area of data protection, the Federal Commission for Protection Against Health Risks (COFEPRIS) published new guidelines on protecting clinical data for pharmaceutical chemical products, on June 18.

According to Manuel Morante and Hedwig Lindner of Arochi, Marroquin & Lindner, the guidelines clarify a number of issues.

For example, COFEPRIS will protect confidential information filed with applications for sanitary registrations (safety certificates) from unfair disclosure. It will protect this information for five years, from the date it grants the sanitary registration. Additionally, once COFEPRIS authorises a new chemical entity, it will not authorise generic drugs containing the same molecule for five years, unless that party submits its own clinical data.

While the Mexican IP system is, on the whole, predictable and stable, there may still be unexpected and controversial decisions. The IP community is still feeling the ripples of one such ruling—issued by the First Circuit Collegiate Administrative Tribunal (one of the country’s highest courts) in 2011.

The court was ruling in a case on alleged patent infringement. But, according to Jose Trigueros of Leyva, Montenegro, Trigueros Abogados, the decision “went further and ruled that, since the alleged infringer had been granted a ‘sanitary authorisation’, the company’s commercial activities could not be considered illegal. Consequently, since the legality of the commercial activities could not be questioned, the patent could not be immediately considered as infringed”.

A sanitary registration verifies a product’s safety and efficacy, and ensures that society is not at risk if a health product comes on to the market. The court said patent infringement does not exist if the alleged infringer holds a sanitary registration. “But this fails to grasp both the nature and purpose of a sanitary registration—in fact, it inexplicably and arbitrarily strengthened its meaning,” they said.

“Unfortunately, the decision may complicate or even eliminate the possibility of obtaining an injunction against patent infringers holding a sanitary registration.”

On a brighter note, if Mexico successfully joins the multilateral trade agreement, the Trans-Pacific Partnership, IP owners could benefit to a large degree. Although negotiations are secretive, it has emerged that the TPP could contain an IP rights chapter, according to Vianey Romo de Vivar and Edgar Xavier Saucedo Ramirez of Saucedo, Romo de Vivar y Asociados.

If the rumours are correct, the TPP would modify rules in Mexico on patent protection for plants and animals, and for diagnostic, therapeutic and surgical methods for treating humans and animals. The agreement would also increase the term of patent protection from 20 to 25 years.

The implications would be large because, as things stand, diagnostic, therapeutic and surgical methods are excluded from patent protection. Brand owners could also patent their products for an extra five years. “We would have to litigate the modification of such terms by filing legal remedies such as amparo suits in order for a higher court to determine the exact life term of such patents,” said de Vivar and Ramirez.

It could be an exciting 2013 for brand owners.