Industrial Designs and Geographic Indications
Background Last March 13, the Federal Government, acting through the Ministry of the Economy, published amendments to the Industrial Property Law in the Daily Federal Gazette (Diario Oficial de la Federación), mainly in the area of industrial design and the acknowledgment of geographic indication as a legal concept.
- A designer means a person who calls himself one in the registration application and therefore is entitled to be addressed as such in the publication of his or her application and in the respective registry. This right is deemed inalienable.
- For an industrial design to be deemed new, it needs to be an independent creation that differs to a significant degree, and thus the following definitions: (i) independent creation: when no other identical industrial design has been made public prior to the filing date of the registration application or prior to the recognized priority date. Industrial designs will be considered identical when their characteristics differ only in irrelevant details; and (ii) to a Significant Degree: the overall impression of the industrial design by an expert in the field that differs from the overall impression given by any other industrial design that has been made public prior to the filing date of the registration application or prior to the recognized priority date, taking into account the extent of freedom the designer has to create an industrial design.
- Graphic or photographic reproductions must be attached to the industrial design registration application, sufficiently clear for the compression and publication of the design.
- The industrial design registration will be valid for five years as of the filing date of the application and is renewable for like periods (up to a maximum twenty-five years).
- The concept of geographic indication has been defined for the first time as the name of the geographic zone or a name alluding to the zone where a certain product comes from, emphasizing the link existing between the geographic origin and its fame.
- It establishes precisely the different steps of the procedure for a protection decree. After the application has been filed, different analyses and studies will be made, evidence taken up and arguments heard, and will conclude with the respective ruling by the Mexican Industrial Property Institute, the authority responsible for these matters.
- There are more requirements that applications for a protection decree must meet; the applications may be filed by:
- Private individuals or corporate entities in the business of extracting, producing or processing a product backed by a Denomination of Origin,
- Manufacturer or producer chambers or associations,
- Federal government agencies or entities, and
- The government of the State where the product backed by a Denomination of Origin is extracted, produced or processed.
- Third party stakeholders are afforded the opportunity to voice their objections to the requested protection decree.
- Rules are provided for private individuals or corporate entities wanting to use a Denomination of Origin or geographic indication. Noteworthy is that they must evidence their line of business or corporate purpose as well as the applicable Official Mexican Standard (NOM).
- Another possibility is that any third party may petition that the authorization to use the Denomination of Origin or geographic indication be voided, cancelled or that it has expired by substantiating the petition at an administrative decree procedure at the Mexican Industrial Property Institute.
- The protection of Denominations of Origin and geographic indications in foreign countries by the Mexican Industrial Property Institute is recognized pursuant to international treaties and the laws of the country in which said protection is needed.
- The protection of foreign Denominations of Origin and geographic indications in Mexico is recognized, provided they have the prior protection of the country of origin.
- It provides in these cases that the foreign Denominations of Origin and geographic indications will have no effect on those who market, distribute, purchase or use products with said Denominations of Origin and geographic indications when lawfully introduced in the market.
As a result of the amendments, the following activities shall be construed as administrative offenses:
- The unauthorized use of a Denomination of Origin and/or geographic indication.
- Using similar denominations, translations or transliterations of said Denominations of Origin and geographic indications.
- Produce, store, transport and market products identical or similar to those protected by a Denomination of Origin and/or geographic indication.
Therefore, the protection is strengthened by defining as offenses the production, storage, transportation and marketing of products without Certification of their Denomination of Origin and/or geographic indication as provided by the applicable Official Mexican Standard (NOM).
These amendments do not only represent the government’s action to protect vitally important economic pillars, but they also incorporate a measure to unify the legal grounds in these matters as required to enter into trade agreements with different countries around the world.
The challenge is great because even though geographic indications were included in the 1883 Treaty of Paris (of which Mexico was a signatory), this is the first time they are recognized and protected by our legislation.
Bernardo Fernández del Castillo Quintana / CDMX