Business brief 2018: Mexico

Patents

How are patent rights registered or secured in Mexico?

Requirements are: novelty; inventive activity; and the usefulness for the industrial sector.

Information is requested on: inventor, rights owner, title, brief description of the invention, summary of the invention, drawings and claims.

The Mexican Institute of Industrial Property (IMPI) performs two studies, first to determine the accomplishment of formalities and second to study and determine whether the application meets the patentability requirements.

Patent rights have a validity of 20 years.

What are the costs of obtaining and defending a patent?

Government fees are around $450. Professional fees may vary with the complexity of each case, but are around $2,000 to $3,000.

In the course of the application review, there can be other expenses resulting from the requirements of IMPI; likewise there are government-imposed maintenance fees.

Defending a patent right may incur many stages and expenses, including actions at IMPI, at the Federal Court of Fiscal and Administrative Justice, and in an amparo trial. The cost of any of these stages is no less than $5,000.

Is there anything unusual about Mexico’s patent law that companies should be aware of, and what are the most common mistakes businesses make?

One aspect to be considered for patent owners is the obligation they have to exploit the invention. If there’s a lack of exploitation within three years from the granting date, or four years from its filing date (whichever occurs later), any third party may request IMPI to grant a compulsory licence.

Trademarks

How are trademarks registered or secured and what protection to they grant?

Protection is obtained through application to IMPI, which carries out an examination regarding the formal and legal requirements needed in order to grant a trademark registration.

The following kinds of trademarks are permitted:

• Word marks;
• Design marks;
• 3D marks; and
• Mixed marks (a combination of any two of the above).

An opposition system is in force. An IMPI resolution denying a trademark registration can be appealed in a federal court.

If no opposition occurs and no official notice is issued, trademark title will be issued from four to six months after application. The term of validity is ten years, renewable for ten-year periods.

What are the costs of registering and defending a trademark?

The cost of obtaining a trademark registration, assuming a simple procedure, is around $1,000.

The costs involved in defence of a trademark may vary depending on the complexity of the matter and will be no less than $2,000.

Is there anything unusual in Mexican trademark law that foreign companies should be aware of, and what are the most common mistakes businesses make?

The lack of use for a period of three consecutive years may result in a trademark’s expiration.

Mexico does not permit multi-class applications.

Counterfeiting

How big a problem is counterfeiting in your jurisdiction?

Counterfeiting is a big problem because there are multiple interests in commercialising goods, including different criminal organisations. Currently, in all the states of Mexico, products bearing trademarks and artistic works without the corresponding authorisation are being commercialised.

What sectors are particularly at threat?

The alcohol, tobacco, textile and music industries. However, a wide variety of counterfeit products are marketed within the country.

What are the best strategies for dealing with the problem?

Counterfeiting can be prosecuted through administrative actions, and civil and criminal prosecution.

On the administrative field, the path to combat counterfeiting is through an infringement procedure in commerce-related matters in the case of copyright, or an infraction procedure regarding trademarks.

For a criminal prosecution the following, among others, are considered a crime according to the IP Law (IPL):

• A trademark falsification;
• Production, storage, transportation, introduction to the country, distribution or sale, intentionally and for commercial speculation, of objects that bear counterfeit trademarks protected by the IPL;
• Provision, knowingly, of raw materials or supplies destined for the production of objects that bear counterfeit trademarks; and
• Disclosure of a trade secret in bad faith and with commercial purposes.

In addition to the crimes contained in the IPL, the Federal Criminal Code establishes, among others, the following actions as federal crimes:

• Production of copies of a work by the licensee of the same without authorisation;
• Manufacture of devices or systems that serve to deactivate the security of a software; and
• Fraudulent sale in public of copies of works protected by copyright.

For the prosecution of the aforementioned, it is necessary to file a complaint with the Office of the Attorney General, which is mainly responsible for investigating and prosecuting federal crimes.

Copyright

What are the key challenges to copyright owners in your jurisdiction?

Players and industries have a lack of copyright knowledge, a situation that results in many actions and omissions against authors and the system itself.

Practices concerning piracy and counterfeiting represent huge losses for national and foreign IP owners and industries.

How should people ensure they are protected against copyright infringement?

People should begin by having all the corresponding certificates and titles for their IP. Having ownership support enables IP owners to claim necessary legal actions to protect their rights against copyright infringement.

"One aspect to be considered for patent owners is the obligation they have to exploit the invention."

In most infringement cases copyright works are exploited in commerce along with trademarks, so there is a database of the Mexican Customs Authorities which contains a large number of trademarks that are often object of counterfeiting. Inclusion of trademark information in such a database may be important to Mexican authorities to identify products that have infringed IP, and may allow the authorities to contact the IP owner.

What is the best way to deal with infringement?

There is no silver bullet strategy. Permitted legal actions has been explained above.

Other actions to deal with infringements are:

• Order the withdrawal of circulation of the goods that infringe IP rights.
• Prohibit the commercialisation or use of the products violating IP rights.
• Order the seizure of illegal goods.

The best way to proceed in Mexico to protect an IP right will depend on the circumstances of each case.

General

Have there been any other developments? 

There is an amendment to the law in Congress.

The amendment includes the possibility of registering non-traditional marks and also includes the protection of a secondary meaning in trademarks.

Along with the above inclusions, the project contemplates the inclusion of certificate trademarks, which will allow the industrial, agricultural and commercial sectors to have greater tools of IP for their corresponding productive development.

In addition, the project includes amendments to the opposition system, which will have more impact on the proceeding, including a stage of pleadings.

The abovementioned bill hasn’t been approved, but it is scheduled to pass through the Congress this year. 

Another important reform to the IPL was published on March 13.

The main changes are as follows:

• Industrial designs will have 25 years of protection from their application, instead of 15 years.
• Inclusion of the publication of divisional patent applications, utility models and industrial designs, which should make the process more transparent.
• Specific regulation on geographical indications (GIs).
• Recognition of appellations of origin and GIs of other countries to be recognised in Mexico.

 

Israel Pérez Correa is partner and founder of Perez Correa. His practice is focused on all aspects of IP, entertainment, technology, media and pharma, among others. Before Perez Correa, he was an associate and head of IP at a law firm in Mexico, as well as an in-house counsel for TV Azteca and British American Tobacco. He can be contacted at: ipc@perezcorrea.com

Hugo Zapata is an associate at Perez Correa. He mainly practises patent prosecution and litigation. He has a master’s degree in IP law, and before joining Perez Correa, he was legal manager of the technology transfer office of the Tecnológico de Monterrey. He can be contacted at: hzr@perezcorrea.com