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4 October 2018

IMPI: well-equipped for the future

When Miguel Ángel Margáin took up his post as director general of the Mexican Institute of Industrial Property (IMPI) in 2013, he told WIPR he wanted to develop and strengthen Mexico’s IP culture.

Just one month into the role, Margáin enjoyed success as Mexico acceded to the Madrid Protocol.

Now, five years on, updates that have been made to Mexico’s domestic legal framework signal a turning point for the country’s IP landscape, he says.

Margáin joined IMPI after spending more than 20 years working in academic roles and in the private sector, and since 2013 he has steered IMPI through major IP reforms, overseen the technological modernisation of the office, and helped to strengthen the rights of trademark owners.

Currently, reforms to the Industrial Property Law are the most important issue for IMPI, Margáin explains. One of his priorities is for the institute to “benchmark favourably with the best IP offices around the world”, and improvements to Mexico’s IP system are instrumental in meeting this aim.

Deep reform

The Federal Official Gazette published amendments to Mexico’s IP Law in March.

The changes, which came into force on August 10, improve IMPI’s administrative processes and introduce new concepts to Mexico’s IP law such as the registration of sound, smell, and holographic trademarks, Margáin explains.

The benefits of the reform are clear to see, according to Margáin: for example, IP owners and applicants can now apply for and protect non-traditional marks as well as trade dress, neither of which had previously been options in Mexico.

“This level of deep reform has not taken place since 1994, and the new law will foster a modern and dynamic legal framework for IP,” he adds.

Other aspects of the new law include the ability to obtain certification trademarks, which indicate a special characteristic of a product (such as the geographical origin, or the conditions under which it was manufactured). It also extends protection for industrial designs.

“In my opinion, the implementation of the reforms to the IP Law will bring adjustments in all activities inside and outside the institute,” Margáin says.

He notes that in addition to the new law, IMPI’s overall efficiency and service have been improved: IMPI now offers a “rich catalogue” of tools to enable IP owners and applicants to manage their registrations online, bringing the institute’s technological capabilities up to speed.

“It is of the utmost importance to work daily in order to improve efficiency, availability, and capability in meeting users’ needs,” claims Margáin. He adds that having a “solid and efficient” IP office generates trust, as well as bringing legal certainty to users of the country’s IP system.

This legal certainty comes as a result of Mexico’s harmonising its national legislation with international treaties and agreements.

“The amended law incorporates several concepts of great importance in the international arena, such as non-traditional trademarks and trade dress, in an effort to bring Mexican IP protection up to international standards,” Margáin explains.

In April, Mexico became the first country to ratify the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), which incorporates much of the defunct Trans-Pacific Partnership (TPP) deal.

The CPTPP will enter into force once six countries (out of eleven) have ratified it; currently, only Japan and Singapore have joined Mexico in doing so.

Although much of the TPP content has been incorporated into the new agreement, some important IP provisions did not make the cut.

Margáin explains that the suspended sections of the TPP included those which would have protected pharmaceutical patent term extensions where registration has been unreasonably delayed, in addition to the part that would have limited internet service providers’ liability in third-party copyright disputes.

Of the IP measures that have been incorporated into the CPTPP, disciplinary procedures concerning geographical indications and improved uniformity of enforcement measures remain, Margáin says.

“International treaties have always provided momentum to the construction of the Mexican IP system. One can even say that the birth of IMPI itself was a result of the dynamics generated by Mexico’s adherence to the North American Free Trade Agreement and the TRIPS Agreement,” he explains.

He also emphasises that Mexico’s commitment to modernise its IP system is partially the result of a desire on the part of domestic policymakers to encourage innovation.

Opposition system: two years on

In addition to the latest amendments to Mexico’s IP Law, changes to the country’s trademark opposition system were introduced in 2016.

“The new regime strives to bring more efficacy and legal certainty to the realm of trademark protection,” Margáin says.

He explains that as a “protection tool”, the opposition system allows anyone to challenge the registration of a trademark application when that mark would be harmful to social order or morality, or where the application is a reproduction of a prior registered trademark.

Under the opposition system, IMPI can reject trademark applications where the applied-for mark is an imitation of a famous or notorious sign—even if that sign is not a registered mark. Similarly, IMPI can refuse to register a mark that reproduces the title of an artistic work, or that of a fictional character, Margáin says.

As is the norm across other jurisdictions with such oppositions systems, motions must be filed within a set timeframe and the appropriate fee must be paid.

In Mexico, oppositions must be filed within one month of a trademark application being published in the Federal Official Gazette along with the fee of MX$3,733.72 (US$200.96).

“The fees act as a means of avoiding redundant motions which are really intended to delay a registration, and as a whole, the new opposition system further fortifies and benefits IP rights owners while, at the same time, reducing public expenditure in procedural matters,” Margáin explains.

So far, trademark owners are making good use of the ability to file oppositions.

Margáin reports that in 2017, 5,088 motions were filed. In the first half of 2018, 2,653 oppositions have been filed at the IMPI, an increase of 8% on the same period last year.

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