Inconsistencies and uncertainties
On March 13, 2018, the Mexican Industrial Property Law (MIPL) was officially amended to include new provisions on various aspects of IP rights.
The analysis of such amendments from the material standpoint has been subject to many articles written by Mexican specialists already, so we take this opportunity to analyse the effects of one particular modification. Although it does not refer to any material changes—only procedural ones—it will affect the Mexican IP landscape.
As has been already explored, most of the amendments relate to the inclusion of geographical indications (GIs) as one of the IP rights that should be protected and enforced under the MIPL as of March 2018, even though before the amendments, the MIPL already provided as a cause for trademark refusal the attempt to register a GI, even though such a legal right was not even defined within the applicable law at the time.
After the adoption of the TRIPS Agreement, which contains a section on GIs, Mexico has not adopted specific provisions on this form of IP until this recent amendment, which not only includes a particular chapter defining GIs and explaining the process to achieve legal protection, but also, a particular cause of infringement and even a crime involving the unauthorised use of such specific rights.
Now that the MIPL officially includes specific articles to define, protect and enforce GIs, and it makes total sense to have a specific cause for trademark refusal when the applicant attempts to obtain exclusive protection over a term including a GI or a similar reference, this seems to be aligned with the whole chapter amended to that end.
However, it is not. When we analyse the specific articles defining GIs compared to those that constitute grounds for trademark refusal, we find inconsistencies that may raise procedural conflicts, at least during the trademark registration process.
Inconsistencies
To have a better sense of those inconsistencies, we should look at the following articles recently approved where the lawmakers established:
l Article 157: by GIs, it shall be understood the name of a geographical area used to identify the origin of a product when a determined quality, reputation or other characteristic is attributable to such product due to its geographical origin.
l Article 158: by geographical area, it shall be understood to mean consisting of the whole territory, region or locality inside a country.
l Article 159: the protection granted by this law to the appellations of origin and GIs will initiate with the declaration issued by the Mexican Institute of Industrial Property (IMPI) for those purposes.
In light of the foregoing, it is clear that in order to deserve protection as a GI under the MIPL, (i) the specific sign must identify a product as originating in a given place; (ii) the qualities or reputation of such product should be essentially due to the place of origin (there must be a link between the product and its original place of production), and (iii) the protection will be subject to the official declaration ruled by the IMPI.
Based on the above, it is clear for us that the official declaration is necessary to trigger the benefits afforded by the MIPL to GIs, one of them being the possibility to prevent the registration of such GI as a trademark, especially considering that GIs and trademarks are both distinctive signs used to distinguish products in the marketplace, and also that both allow consumers to associate a particular quality or reputation with a specific good.
