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10 January 2021PatentsChristian Thomae

IP laws: Brighter days ahead

November 5, 2020, marked the date on which Mexico adopted the new Federal Law for the Protection of Industrial Property. This repealed the previous law that had been in force for 25 years and had been subject to several amendments. The new US-Mexico-Canada Agreement, which replaces the North American Free Trade Agreement made it necessary to reorganise and update the Mexican IP system, as to allow for a smooth implementation of the renegotiated trade agreement.

The new law incorporates changes to practically all the fields it regulates, namely patents, utility models, industrial designs, trademarks—including well-known (notorious and famous) and certification trademarks—trade secrets, geographical indications, and associated administrative proceedings followed before the Mexican Institute of Industrial Property (IMPI).

It also introduces the partial cancellation of trademarks, granting IMPI with fiscal authority to impose and collect fines, and the calculation and recovery of damages at an administrative stage. The new law will, with no doubt, allow Mexico to grant more certainty to rights owners.

The previous article included in WIPR issue 3 2020 (“New IP law in Mexico”) focused on a general review of the changes to the law, especially on the trademarks side. This article will focus on the contentious portion, which underwent considerable and much-needed changes to allow for more effective protection of IP rights and more efficient ways to use them for their owners.

Response times

With regard to trademark oppositions, although no major changes were made to the system, there is a change in the rules as to when a response is due by the applicant. Under the new law, oppositions will be communicated to the applicant along with the result of the now joint examination (formal and substantive) through a single office action.

Therefore, the response to the opposition will have to be filed along with the response to any other objections being raised by the examiner, within two months, which may be extended for up to two additional months. The new law is clear in stating that all items included in an office action must be addressed in the response to avoid abandonment of the application.

In terms of contentious proceedings and the capacities of the IMPI as an authority in these matters, the law has introduced provisions that will certainly allow it to provide stronger and more effective enforcement and protection of rights, but also for rights owners to achieve compensation for illegal use of their rights.

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