From the TPP to oppositions: major changes for IP

Mexico’s intellectual property system is going through several changes. The two most prominent affecting IP law are the Trans-Pacific Partnership (TPP) and the new opposition system.

With a long negotiation, which started in October 2012, the TPP was finalised in February 2016 and is awaiting ratification by its 12 signatories.

“The TPP is one of the most ambitious trade agreements ever negotiated,” says Alejandro Luna, partner at Olivares in San Ángel.

Luna explains that there are many challenges faced by Mexico in its process of adapting to the TPP agreement in all fields, including IP.

“There are chapters of the TPP, specifically chapter 18, which will cause many changes in Mexican IP law. This includes patents, trademarks and copyright.”

The TPP is set to bring promising new changes for IP owners, especially within the life sciences field, which will see a dramatic change in regards to data protection.

As explained by Bernardo Herrerias, partner at Hogan Lovells in Mexico City, the data protection term is currently between three and five years, but after the implementation of the TPP, it will be increased to up to ten years for agrichemicals and five years for pharmaceutical products.

With data protection being strengthened, some parties, such as generic companies, are concerned about the matter. Herrerias explains that as an outcome of the TPP, the battle between generic companies and research and development laboratories will remain.

“This will most likely cause a big debate as to whether a patent could be extended in the process of granting the patent and/or market authorisation,” says Herrerias.

He adds: “When this provision was discussed and approved in the TPP, the generic companies said that this was a huge concern.

“The benefits and limitations of the TPP really depend on who you ask. If you are a research and development laboratory, you are most likely going to see that the TPP brings many benefits, but on the contrary, if you are a generic company you are most likely going to claim that the risk of extending the patent will cause problems in marketing a generic,” he adds.

Looking at the broader picture, Herrerias says that he does not see any drawbacks for IP owners from the implementation of the TPP: “I don’t see that the TPP will undermine any rights. I only see it being beneficial.”

While Herrerias is confident about Mexico’s implementation of the TPP, Luna believes that the Mexican government should be cautious when adapting the obligations into Mexican law.

Luna explains: “Even though the TPP provides some general definitions on some conditions, if we are not established in our domestic law or clear in wordings used in that process, it will cause a lot of litigation. Litigations are long, costly and unpredictable.”

Besides looking to improve Mexican law, Luna says that the rationale behind Mexico’s joining the TPP is the US’s involvement.

“The main purpose for the Mexican government to get involved with the TPP is because the US is in it and the US is our main partner.”

He adds: “It would be inconvenient for Mexico not to be in a free trade agreement which the US is part of because that would diminish our competitiveness with our main trading partner.”

Opposition system

Another major IP development in Mexico is the implementation of the opposition system, which became effective on August 30.

Herrerias explains that law firms are checking the federal Official Gazette, making sure that they contact their clients to let them know if a conflicting trademark has been registered.

“It is still too early to know what is going to happen. There is doubt and uncertainty regarding the implementation, but that is something that we are trying to learn in the coming months,” Herrerias says.

He adds that the opposition system is a good way to avoid having conflicting trademarks registered.

“I believe this is a very good step that Mexico has taken to improve protection of trademarks,” he explains.

Carlos Perez De La Sierra, a senior partner at Calderon & De La Sierra in Santa Fe, has a different view.

“I don’t think the opposition system is being well received, because it does not stop prosecution of applications.”

He adds: “In Mexico the examiners continue the prosecution of applications and may even resolve an application before considering opposition. That may be one of the reasons why it has not been well received, as was originally expected.”

Perez explains that Mexico has not seen a significant number of oppositions being filed.

“The fact that there is no certainty as to how the opposition is going to be treated has, in my view, discouraged many from filing oppositions.”

Herrerias and Perez agree that the short amount of time to file an opposition comes as a disadvantage.

"as an outcome of the TPP, the battle between generic companies and research and development laboratories will remain."

Herrerias says: “The timeframe is very short as we only have about one month from the publication in the Gazette to file the opposition. In practice, this is a very short time to learn about the filings, and in addition we have to contact the clients, receive instructions from them and then file the opposition.”

Another limitation to the opposition system, Herrerias explains, is that the process does not give the opportunity for parties to settle.

“They only file the opposition, and then the applicant of the new trademark can choose to respond or not, and then it will be up to the trademark office to decide.”

Sometimes the Mexican Institute of Industrial Property (IMPI) may provide an extension period where the parties can ask for the application to be delayed in order to allow them to discuss a possible solution.

Perez explains that although, in his opinion, the opposition system has not been well received at this point, there may be strengths in very specific cases.

“Preventing a registration from being granted is better than cancelling a registration that has already been granted. I think that the strength is that at least we have the possibility to do something to prevent a trademark from being granted.”

Advertising challenges

Although there are no major developments in advertising law, in the sense that Mexico still has the same legal provisions, the country has a very highly regulated market for products such as tobacco, alcohol and junk food.

Herrerias explains that this has resulted in the authorities struggling because of influences such as social media.

“Due to social media and the digital market, it is becoming increasingly difficult to control who is making an advertisement,” says Herrerias.

He further explains that there could be potentially two situations.

The first situation is where a person makes an advertisement without any endorsement, and the second is where a company pays someone to distribute messages about a product on social media.

“This is very difficult to regulate and the authorities have been struggling with the matter,” Herrerias explains.

Another issue related to advertising is the trademark protection of slogans.

At the beginning of this year, an agreement was executed between IMPI and the consumer protection authorities regarding the information provided by companies for slogan registration.

“For example, this is for absolute terms such as ‘we are the best’, ‘greatest’, ‘biggest’, etc,” he says.

Under consumer law, some slogans are considered to be exaggerated or even false, and this has been a concern for the consumer authorities.

“Authorities want to change the information in order to prevent slogans being registered against the disposition of the consumer law,” says Herrerias.