On January 17, 2020 The Mexican Senate decreed the approval of of the Geneva Act of the Hague Agreement dealing with the International Registration of Industrial Models and Designs. The approval is for an Only Article that states:
MoreIn view of the amendments to Mexican IP Law, which came into effect on August 10,
2018, all trademark Registrations granted after this date must now submit a Declaration of True and Effective Use three years after Registration is granted in order to maintain protection of the trademark. Please note that this applies to all Registrations granted after this date, as opposed to Registrations filed after this date
As per the same amendments, a Declaration of True and Effective Use must be included with all trademark renewal applications. The Declaration of true and effective use format is included within IMPI’s official renewal form.
For both cases, new registrations and renewals, the declaration of true and effective use form must be signed either by the trademark owner or the attorney on file on the owner’s behalf, and includes the trademark owner’s declaration that “the mark is in use within the Mexican territory on the following products/services…”. Also, the International Class number and all goods/services for which the mark is effectively being used must be declared. Please note that while goods may be limited (or eliminated), it is not possible to add goods to this list. Additional proof of use is not required unless requested by the IMPI.
Please contact us if you have any questions.
Non-Traditional Trademarks, Declarations of Use, Acquired
Distinctiveness and Coexistence Agreements, Certification Trademarks
This year has brought many changes to Mexican IP Law, including a first round of amendments that came into effect on April 27, 2018, as previously reported, and a second round coming into effect on August 10, 2018. This second round of amendments is focused mainly on the trademark chapter of the national IP Law. The final touches are still being prepared, as new fees have recently been published and we still await the publication of specific filing requirements and applications forms.
The first round of amendments included changes to the term of design patents (up to 25 years), a reduction in the basic filing fee for all patent applications but with an excess page fee after 30 pages, and the inclusion of geographical indications alongside the existing definition of appellation of origin, allowing existing foreign indications to be recognized. For more details on these changes, please contact us or refer to our communications of April 10 and April 30, 2018.
The second round of amendments seeks to align and harmonize Mexican IP Law with global practices, and includes the recognition of non-traditional marks, changes to the trademark opposition process, formally recognizing acquired distinctiveness for descriptive marks, formally recognizing coexistence agreements and consent letters, and new requirements for showing use of trademark as well as other amendments directed to the enforcement of trademark rights.
Some of the specific amendments are:
We note that these amendments will apply to all applications submitted after August 10, 2018; applications submitted prior to this date will be examined based on the current legislation. However, all granted registrations will be treated under the terms of the amended Law (e.g., with respect to the requirements for the declaration of use). Finally, we note that these amendments apply to all applications, whether submitted through the national offices or whether as a national designation through the Madrid Protocol.
As with the implementation of any amendments, some issues will arise immediately through the examination process and other issues will arise within several years, e.g. with the renewal of a recently granted registration which will not be required to show use within three years but will require a declaration of use upon renewal in ten years. Regardless of this, we shall keep you informed and provide anticipated information so that you and your clients can make the appropriate decisions with respect to trademark portfolios in Mexico.
Should you require further or more specific information regarding any of these matters, please let us know and we will gladly assist you.
Appellation of Origin
Term of Industrial Design Patents
Updated Patent fees and Excess page fee
On April 27, 2018, new amendments to the Mexican IP Law and to the official fees came into force that affect different aspects of patent applications, industrial designs, utility models and appellation of origin and geographical indications. The most important amendments include modifications to the term of Industrial Design Patents in Mexico from 15 years to up to 25 years, renewable in periods of 5 years, the inclusion of geographical indications alongside the existing appellation of origin section of the Law, and the substantial reduction in fees for patent applications (including utility models and designs) but with the addition of a fee for excess pages after 30 pages.
We provide an overview of these amendments below. Should you have any questions regarding these changes, please contact us and we shall gladly provide assistance.
The term for industrial designs in Mexico will now be five years, counting from the date of the application, and this term can be renewed for successive five year periods of up to a maximum of twenty-five years. This is in contrast to the current fifteen year term. In addition, all granted and renewed industrial designs will be published in the official gazette. Each request for renewal must be submitted six months prior to the expiration date, and there is an allowable six month grace period. This amendment also eliminates the calculation of annuities, which is replaced by the renewal.
The official fee for the final registration of an industrial design is US$390 plus our fee, which includes the payment for the first five years of validity of the design, counted from the submission date. The official fee for each renewal is US$400 plus our fee, for each subsequent five year term.
The above applies to all applications submitted on or after April 27, 2018. If an applicant wishes to opt in to these new provisions for applications currently under examination, the applicant must submit a written request to the Mexican IP Institute within 30 business days, by June 11, 2018, indicating that this is so. This would include the publication of the application in the official gazette if the formal examination has not yet been concluded, and issuance under the new regulations, plus the potential for the extended 25 year term. However, this filing does commit or require the patent owner to extend the term of the patent when the time comes. There is no official fee for submitting this request, and our fee is US$65 per application up to three applications, and US$45 per application if this request is submitted for more than three applications.
All currently granted industrial designs will retain their fifteen year term, provided the corresponding annuities are paid accordingly. The owner of said designs may request their renewal within six months of the original 15-year expiry date, and these designs may be renewed for up to two 5-year periods, for a maximum of a twenty five year term. The official fee for this request will be simply the cost of the renewal, plus our fee. This will also apply to all pending applications that were not converted as described above.
Under the current amendment, appellation of origin is understood as the name of a geographical area or another name known to refer to the aforementioned area, which serves to designate a product as originating from it, when the quality or characteristics of the product are exclusively or essentially to the geographical environment. Similarly, a geographical indication refers to the name of a geographical area or other indication known to refer to said area, which identifies a product as originating from said area, when a certain characteristic of the product is attributable mainly to its geographical origin.
Applications for these denominations can be submitted by those parties directly involved in the production of the product to be protected, associations of these parties, or government agencies or entities that contain the aforementioned regions. The official fee for filing these applications is US$105, plus our fee. These applications will undergo an examination procedure which includes the possibility of opposition by third parties, and once granted, can be used by anyone authorized by the Mexican IP Institute to do so; the official fee for submitting an opposition is US$252, plus our fee. Once granted, parties can request authorization for use of the denomination, for an official fee of US$56 plus our fee.
Importantly, the Mexican IP Institute will recognize designations of origin or geographical indications protected abroad, in terms of International Treaties and in accordance with the provisions of recent amendments, as long as these meet all the requirements as set out in the National Law. The cost for recording a foreign denomination in Mexico is US$23, plus our fee.
In general, the official fees for filing a patent application (including utility patents, industrial designs, and utility models) have been reduced by as much as 50%. However, there is now an excess page fee after 30 pages; in this case, the application form, the payment slip, and any additional documents submitted with the application (such as a power of attorney or assignment documents) count towards the page limit, in addition to the specifications, claims and drawings.
In this respect, we are implementing measures to ensure a cost-effective submission of patent applications and shall request confirmation from you regarding the filing of non-essential documentation with the application. We note that that our filing fee remains the same and we will not charge additional fees for excess pages.
In addition the amendments outlined above, several other changes have also been carried out. This is not meant to be a comprehensive list, but rather a summary of other important changes:
Should you have any comments or questions regarding the amendments to the Mexican IP Law as outlined above, please contact us and we will gladly provide further information.