Mexico: New Federal Law for the Protection of Industrial Property becomes effective November 5, 2020

Trademarks

• The validity of trademark registrations will be 10 years from the granting date. This applies to those trademarks that are filed on or after November 5, 2020. For those trademarks filed before November 5, 2020, the validity will be 10 years from the filing date.
• It will be possible to secure a trademark registration based on "acquired distinctiveness".
• It is no longer necessary to register license agreements before the MIIP as a requirement to take legal effects against third parties.
• The term to respond an opposition will be 2 months from the date the opposition is served to the trademark applicant.
• The declaration of actual and effective use, on the third year of registration, will be compulsory for those trademarks registered as of August 10, 2018.
• If the declaration of use is not submitted with the renewal application, MIIP will require its filing, granting a 2-month term for such purposes. This amendment is relevant for trademark registrations obtained through the Madrid Protocol because the renewal application form used in the Madrid Protocol does not contain a field for the declaration of use.

Patents

• New Uses - Patentability of substances, compositions or compounds that are in the state of the art but their use is new.
• Double patenting prohibition (granting of two patents for the same invention).
• A new “Bolar” clause is included as an exception, without any time limitation, to patent exclusive rights.
• The patent title must be simple, precise and indicate the nature of the invention. It may not include distinctive signs, expressions or fantasy names, proper names or commercial references.
• “Supplementary Patent Certificates” to compensate the validity of patents due to unjustified delays for more than 5 years in the prosecution and granting of patents, when such delay is attributable to MIIP.
• Nullity grounds are extended and now include "partial nullity" of patents, industrial designs and layout-designs of integrated circuits.
• Voluntary divisional applications could be filed up to before the issuance of the resolution rejecting or having the patent application as abandoned or withdrawn.
• A divisional application cannot consist of divisions from other divisional applications, unless this is appropriate in MIIP's opinion or it is required to the applicant.
• Divisional applications must claim a different invention from the one claimed in the original (parent) application and other divisional applications.

Trade secrets

• Inclusion of the title of "person that exerts control over a trade secret", to those who will have the capacity to transfer or authorize the use of trade secrets.
• "Misappropriation" is defined as the direct or indirect acquisition, use or disclosure of a trade secret in a manner contrary to uses and practices that implies unfair competition.
• Removal of the condition of setting the information of a trade secret in a material media. The new law establishes that such information may be preserved on documents, electronic or magnetic means, optical discs, microfilms, films or in any other media known or to be known.
• Inclusion of the following as infringing conducts; (i) Misappropriation of a trade secret, as well as, (ii) production, offering for sale, sale, import, export or storage of goods or services using a trade secret.
• Inclusion of the following as crimes; Appropriation, acquisition, use or disclosure of a trade secret, without the consent of the person who exerts legal control over it or its authorized user with the purpose of causing prejudice or obtaining an economic benefit.
• Civil actions can be claimed against the breaching of nondisclosures agreements.
• MIIP is empowered to act as an expert and issue technical opinions on trade secrets.

Enforcement and litigation

• Introduction of conciliatory proceedings for administrative actions before the MIIP.
• Commercial arbitration may be used as dispute resolution procedure.
• Possibility of claiming damages since the first instance. Damages action may be brought, at affected party’s decision, before the MIIP or Courts (federal o local).
• Partial non-use (lapsing) and invalidity (nullity) actions are now included. These actions can only be brought against registrations filed, granted and renewed under the new IP Law.
• Invalidity (nullity) actions, based on the same arguments and evidence provided in an opposition proceeding will not be accepted.
• Imposition of fines up to a maximum of MXN22 m, which may be executed by the MIIP. The resources obtained from such fines will be applied to MIIP’s operating expenses.
• Precautionary measures and inspection visits on online stores (web sites).
• MIIP is empowered to order the suspension of “free movement” of goods intended for import, export, and those in transit.
• A wider definition of what is considered "use" in connection with administrative infringements is included in the new law.
• Lifting of precautionary measures will not proceed automatically with the filing of a counter-bond. MIIP will assess the bonum ius presumption and the evidence offered by the parties.

The Spanish language version of this publication is available here.

Authored by Edgar M. Mata