From GIs to industrial designs: positive developments in Mexico
In April this year, the Mexican Senate passed amendments to the country’s intellectual property law, providing greater protection for trademark owners and bringing the country’s rules more in line with international norms. The amendments will take effect 60 days after their publication in the Official Gazette, and that is yet to happen, but the changes are expected soon and welcome.
Enrique Diaz, partner at Goodrich Riquelme y Asociados, describes the amendments as giving Mexico a “more modern system”.
As a result of the changes, “we’re now going to have protection over certification trademarks, and we’re going to have sound trademarks as well, so the system gets more adapted to what is happening internationally,” he says.
Perhaps even more significantly, the new legislation tackles one of the most irksome issues for trademark owners in Mexico: “kidnapped” or “squatted” marks. “In the past, people have been registering trademarks in bad faith, but these have been very difficult to recover, because our concept for bad faith was limited to those cases in which the trademark was registered by a licensee or distributor.”
Under the new legislation, that situation has changed, Diaz explains. “The definition of bad faith has been broadened to include anyone acting in bad faith, and it’s easier to obtain a cancellation over certain trademarks which were registered in bad faith. Parties that are misappropriating marks are becoming easier to tackle.”
He adds: “There are other major changes too, including on how to protect trademarks, how to limit the description for trademarks, how to prove use of trademarks which would otherwise get trademarks,” Diaz says. “It’s becoming a better system that’s more dynamic and guarantees rights.”
Working together
Diaz says that the new laws were driven by an almost unprecedented cooperation between private and public bodies. As someone who contributed to the process, he explains how it worked:
“The driving force was very simple; there were two major factors,” he says. “The first was political will—the government is very open, the director of the Mexican Institute of Industrial Property (IMPI), Miguel Ángel Margáin was very open and very receptive. Since he had previously been a practitioner in private industry, he understood the needs of industry.
“He invited national and international IP associations to have discussions, to talk about our law and changes to it, and over three to four months, we participated in these discussions.”
The results are satisfying, according to Diaz.
“We were able to achieve 80-85% of what we wanted, which is very good. The other major factor was working as a team between the private and public sector,” he says.
“The result is a better system that protects IP rights and a better system that protects the owners, and one that also provides work for attorneys. We want to be part of the system too.”
That 85% figure suggests there is work still to do, and Diaz acknowledges that practitioners didn’t achieve everything they wanted.
“We wanted to be able to clean out old marks where there was no proof of use in order to clear up the system; we were not able to get that, although we could get it for new marks. The reforms are a good step forward.”
Practical implications
Of course, most new laws on IP are designed to make a given jurisdiction more attractive to business, and Diaz takes comfort from the fact that these reforms are business-friendly.
“Our IP owners are getting one of the best systems in the world, but now we need to make sure the enforcement conditions are real and cost-effective.
“One thing businesses are going to like a lot is that we previously did not have protection for trade dress; now we have a real protection for trade dress,” he says.
