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2 November 2020PatentsChristian Thomae

New IP law in Mexico

In late June, Mexican Congress passed the Federal Law for the Protection of Industrial Property, abolishing the Law of Industrial Property. Entering into force on November 5, 2020, the new law is mostly a reorganisation of the previous law, which had undergone so many amendment processes that it had lost a certain order and continuity in its text.

However, several other portions underwent serious and long-awaited changes that would allow Mexico to, again, have “cutting-edge” legislation and allow it to fully comply with the new commitments under the US–Mexico–Canada Agreement, which has replaced the North American Free Trade Agreement.

This involves changes in all fields, including patents, trademarks, contentious proceedings provisions and rules, also granting the Mexican Institute of Industrial Property (IMPI) with some much-needed (although some may disagree) enforcement authority.

Everything you need to know

Currently, trademark and slogan registrations, as well as trade name publications, have a validity of ten years, beginning from the date of filing of the corresponding application. Under the new law, the term will be counted from the date of grant. This will result in a combination of systems coexisting, with trademarks filed prior to and after November 5, 2020 having different renewal date calculations.

Under the current law, IMPI conducts separate formal and substantive examination; according to the new rules, single examination will be implemented. This means that any office actions will include any possible formal issues, the citation of prior trademarks or initial rejection based on absolute grounds, as well as the communication of any opposition that might have been filed against the new application, in a single first office action.

In terms of oppositions, the current term of one month to file a response to an opposition will become two months under the new law, extendable by up to two additional months. However, unlike the current rules, under the new rules, should a response not be filed to the opposition (office action), the application will be deemed abandoned. The current term for filing conclusions in the opposition, which is three days, will become five days in November.

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