Focus on: IP in Mexico

Chevez Ruiz Zamarripa

View Firm Profile

A. Introduction.

Mexico has pushed towards an effective national legal system for the protection of intangible rights and, through the years, has adapted its legislation to the international treaties that govern intellectual property worldwide and regionally.

The proximity and close commercial relationship with the United States and other commercial partners, has caused the Mexican government to reformulate and ensure adequate enforcement aiming to attract foreign investment and capital.

As one of the largest economies in the world, it is important that Mexico remains at the forefront in terms of intellectual property regulation and enforcement, and it has strived to maintain this position.

B. Influence of International Treaties in Mexico.

Some IP international agreements adopted by Mexico, such as the Berne Convention for the Protection of Literary and Artistic Works, and the Paris Convention for the Protection of Industrial Property, both administrated by the World Intellectual Property Organization, introduced the legal IP framework into the Mexican legal system.

The globalization of industry, market and high technology production, led Mexico to enter two important agreements that established minimum standards focused on the enforcement and protection of IP rights: the North American Free Trade Agreement (NAFTA) and the agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

The former, signed in 1992, gave way to a relevant amendment to our domestic industrial property law. The latter is a comprehensive multilateral agreement that emerged with the creation of the World Trade Organization in 1995, mostly focused on the enforceability of IP rights among its members.

In 2020, NAFTA was replaced by the free trade Agreement between Mexico, the United States and Canada, T-MEC or USMCA, which has resulted in the enactment of new legislation on intellectual property in Mexico. This includes the recently approved Mexican Federal Law for the Protection of Industrial Property (LFPPI), and the amendments to the Mexican Federal Copyright Law (LFDA) with a special focus on the protection of intellectual property in the digital environment.

The LFPPI is innovative as it has introduced new forms of protection for industrial property. Non-traditional trademarks, such as trade dress, smell, and sound marks, provide new alternatives of protection for individuals and companies.

The “secondary meaning” doctrine widely developed in the United States came into existence in Mexico. Unlike the previous law, an otherwise unprotectable trademark may now obtain registration if it has acquired distinctiveness.

A trademark that has been registered or applied-for in bad faith is subject to annulment or refusal. This amendment has intended to deter squatters from seeking registration of trademarks owned by third parties overseas.

For many years, letters of consent were rejected by the examiners with the excuse of avoiding consumer confusion. With the current law a consent is sufficient for two confusingly similar or even identical marks to coexist in Mexican market.

With the purpose of fostering the use of registered trademarks and to remove marks that could block the registration of new marks in which use is intended, a declaration of use must be submitted after the third anniversary of a trademark registration.

As to the LFDA, new provisions protecting IP rights in the digital environment came into effect. One example is the adoption of a notice and takedown system which allows the holder of a copyright to remove infringing content from digital platforms. The amendments also provide a safe harbor for the internet service providers that comply with such system.

Additionally, criminal sanctions are provided to prosecute those individuals eluding or circumventing technological protection measures of copyrighted material.

On the other hand, Mexico became a party to the Nice Agreement concerning the International Classification of Goods and Services in 2001, which resulted in a massive reclassification of the identification and scope of the existing registrations. Over the years, IMPI has worked on a complementary list to include certain goods or services not expressly mentioned in the international classification.

Another international treaty that has impacted the Mexican IP legal framework is the Madrid Protocol, which came into effect in 2013. Interestingly, from 1909 to 1943, Mexico was a party to the Madrid Agreement but decided to withdraw arguing it was in the best interest of the country given the low number of nationals taking advantage of it.

Mexico’s recent adherence to the Madrid Protocol makes sense in a globalized world in which more individuals and companies seek to invest and protect its IP rights in Mexico. While Mexican nationals seldom use the Madrid Protocol and incoming applications greatly outnumber outgoing filings, it is still an interesting tool that should be promoted and utilized. After Mexico’s adhesion to the Madrid Protocol, other Latin American countries such as Colombia and Chile have decided to join.

C. IP Enforcement in Mexico.

There is a relative concern on the observance of IP rights. Counterfeiting is a major problem in Mexico that harms not only our intellectual property framework but our economy. Intellectual property legislation has been modernized to dissuade infringing behavior and ensure enforcement of IP rights both in the physical world and the digital environment.

Mexico has two robust authorities to protect and enforce trademarks, patents, and copyrighted works: the Mexican Institute of Industrial Property (IMPI) created in 1993, and the National Institute of Copyright (INDAUTOR) created in 1996.

Both institutes have had an important evolution in terms of modernizing their interaction with the IP system’s users through technological platforms and tools. A public and up-to-date consultation database and the possibility of making e-filings, secures remote and effective access to facilitate the protection and defense of intangible assets.

Additional digitization actions have been implemented since the pandemic in order to promote a culture of rights’ acknowledgement and provide users with legal certainty and transparency.

Further, the LFPPI granted new faculties for IMPI to quantify damages and lost profits through a simplified proceeding that used to take several years to conclude in the past. This amendment reduces the time and effort required to obtain a compensation, by empowering IMPI to address claims for damages. If implemented correctly, this system is certainly a huge step to ensure full and effective compensation for IP rights holders.

D. Mexican own agenda in the IP field.

But Mexico has not only focused on the protection of rights from abroad. As a country with vast cultural richness and diversity, Mexico’s public policy has focused on the protection and safeguard of its cultural assets, such as traditional knowledge and expressions. Special attention has been placed on the rights of indigenous and other communities with the enactment on January 17, 2022, of the Federal Law for the Protection of the Cultural Heritage of Indigenous and Afro-Mexican People and Communities.

Mexico has also seen a rise in the recognition of goods protected by denominations of origin beyond the well-known tequila and mezcal. Distilled spirits such as Sotol and Bacanora have seen a boom in commercialization and consumer preference.

Other actions have been put in place regarding the use of IP on advertising material, such as the prohibition of displaying certain designs on child-focused advertising for the sale of high sugar levels products.

The current federal government has focused its efforts on a socially focused agenda, in which social programs seem to have more importance than innovation. However, regardless of this change in political determinations, Mexico remains with a robust intellectual property system that ensures the proper protection and enforcement of IP rights, both for nationals and foreigners.

E. Technology and IP Evolution.

Intellectual property laws must evolve at the pace of a globalized world submerged in a rapidly growing technology that demands legal systems to be harmonized with the parameters of business and human innovation.

Some current forms of IP shall be revisited, while new manners of protecting intangible rights must come to life. Unconventional artistic creations and state of the art inventions, such as artworks created with artificial intelligence and patents with living matter, are just a few examples on how IP has evolved to conform to new standards and realities.

Likewise, publicity rights in the digital world, brands in the metaverse, copyright associated to NFTs, are becoming more and more frequent and attractive. Social and technological progress demands room for discussion on how intellectual property interacts with new or modernized forms of intangible assets.

F. Conclusion.

Mexico has made an effort to implement international treaties with focus on its own social and cultural realities, without losing sight of the importance of promoting innovation and technological development.

In situations that generate technological challenges for IP legislation and practice, there is a need to assure a solid and up-to-dated intellectual property protection and enforcement system.

Although there is still much left to do in terms of research and development in Mexico, the current IP legal framework includes high standards of protection. Consolidating a top-notch and active surveillance and enforcement system, on the other hand, remains a pending issue.


Author:

Gloria Niembro