February 22, 2019

Recent Amendments to Mexico’s Industrial Property Law

By Antonio Campero

2018 saw two major amendments to Mexico’s Industrial Property Law. The first amendment was enacted on March 13, 2018, while the second amendment followed on May 18, 2018.

The following are the most relevant changes enacted in the March 2018 amendment:

  1. The definition of “Industrial Designs” was changed, and the validity of an Industrial Design registration was increased to 25 years.
  2. Prohibited trademarks were added.
  3. Regulations regarding “Protected Geographical Indications” were strengthened and the definition of “Appellations of Origin” was changed; a new chapter was added to regulate the procedure to register both. Regulations relating to Protected Geographical Indications and Appellations of Origin from foreign countries were also added.
  4. Additional cases of infringement were included.
  5. Production, storage, transportation, distribution or sale of products originating from Mexico that are not duly certified as per the applicable Standard and Geographical Indication or Appellations of Origin, are now listed as crimes.

The following are the most relevant changes brought about by the amendment published in May of 2018:

  1. Sound and smell trademarks were added, as well as evolving and “trade dress” trademarks.
  2. Specific causes to deny registration of trademarks were added.
  3. The possibility of a trademark owner to approve the registration by a third party of a similar trademark.
  4. Specific rules to register Collective Trademarks.
  5. Regulations on Certification Trademarks.
  6. Procedures for opposing the registration of trademarks were modified.
  7. It is now mandatory for trademark owners to report that a trademark is being used; otherwise, the registration will be canceled.
  8. Trademarks must be utilized in all registered categories; otherwise, they will not be renewed.
  9. Infringement causes were reordered, and new causes listed.
  10. Registration of a trademark in bad faith shall now be considered as null and void.