On November 12, 2015, the Commission of Commerce and Industrial Promotion of the Mexican Senate published a bill to amend the Industrial Property Law to introduce an opposition system for trademarks.
Mexico is one of the few countries in the world that does not provide for trademark opposition proceedings. Under the current Industrial Property Law, the substantive examination of trademark applications is only performed by the Mexican PTO (IMPI), according to the available information and documents.
The bill states that, given the technical limitations of the official search examination tools, it is necessary to offer the possibility that third parties complement IMPI´s analysis of the registrability of a distinctive sign.
The following are the key aspects of the trademark opposition system according to the bill:
- All trademark applications will be published by IMPI in the IP Gazette within 10 working days from their filing date.
- Anyone will be able to oppose a trademark registration within one month from the effective publication date. This term is not extendable.
- After the aforementioned term, IMPI will publish in the IP Gazette within the following 10 working days a list of all those trademark applications against which oppositions had been filed.
- The applicant can file arguments against the opposition within one month from its effective publication date, although it is not compulsory.
- The opposition procedures shall not be binding : it will not suspend the proceedings and the opponent will not be given the status of interested third party.
- The opposition and the arguments filed by the applicant may be taken into consideration by IMPI when examining the application.
- IMPI will notify the opponent either the date of the registration issued or the decision to reject the application.
The bill will be discussed and voted by the Senate shortly and, if approved, it will be forwarded to the Federal Congress for further discussion. If it passes, the amendment to the IP Law will be enacted and published, and will enter into force 90 days after publication.
Check back Moeller´s blog to see updates about any developments.
Source: http://www.senado.gob.mxRead More
During an interview with the official Mexican news agency Notimex, the Director General of IMPI, Miguel Ángel Margáin, reported that 105,134 trademark applications were filed in the Mexican Institute of Industrial Property (IMPI) from January to September 2015, increasing 12.6% over the same period last year. Regarding trademark registrations, there also was an eight percent increase compared to the same period in 2014.
According to Margáin, the number of domestic and foreign applications is currently balanced, while the total number of online applications has increased a 35 percent this year.
Margáin added that Mexico ranks ninth regarding the number of trademark applications filed at IMPI.
Source: http://eleconomista.com.mxRead More
The secretary of Penitentiary System of the Federal District registered the trademark “Reinserta” to identify different products made in the local prisons. Already approximately 19,000 liters of paint that was produced by the inmates of the Eastern Male Detention Centre (Reclusorio Preventivo Varonil Oriente) have been sold.
The owner of the trademark registry “Reinserta” is the secretary of Penitentiary System of the Federal District. It was created in order to be able to perform a self-sustaining income-generating activity to be used to achieve greater job training and employment opportunities for inmates in the prisons.
Regarding the production of the paint, the prison authorities said it is made in the Eastern Male Detention Centre. There are 10 inmates working in the plant who were previously trained for the operation of the corresponding equipment and machines. Inmates who participate in this project receive a salary they use to meet their personal basic needs and also to help their families. This production facility has the capacity to produce 300 liters of paint per day.
Source: www.oem.com.mxRead More
The Mexican PTO (IMPI) has recently signed Memorandums of Understanding (MoU) with the Intellectual Property Office of Singapore (IPOS) and the Hong Kong Trade Development Council (HKTDC).
The Director General of IMPI, Miguel Ángel Margáin, met in Singapore with Tan Yih San, Chief Executive of IPOS in August. Both officials expressed their interest in continuing to implement better practices and increase the number of joint activities carried out by both organizations.
During the meeting, a MoU was signed in which IMPI recognizes IPOS as an International Search Authority (ISA) and International Preliminary Examination Authority (IPEA) for the examination of PCT patent applications.
Likewise, the MoU between IMPI and HKTDC was signed in August by Margáin and Margaret Fong, Director General of HKTDC in Mexico City. According to Margáin, this agreement is aimed at establishing a strategic bilateral collaboration to promote innovation, creativity, technological advances, as well as guaranteeing the correct administration, protection and use of IP rights in Mexico and Hong Kong.
Among the cooperation activities established in the MoU are:
- Exchange of information about the latest advances on the IP system.
- Promotion and dissemination activities through IMPI and HKTDC´s websites and other online platforms.
- Share of best practices, experiences and knowledge on IP with industry through training programs, seminars and events.
- Collaboration in IP-related events through the exchange of participants and exhibitors.
Source: http://www.impi.gob.mxRead More
On August 25, 2015, The Microorganism Collection of the National Center for Genetic Resources (Colección de Microorganismos del Centro Nacional de Recursos Genéticos, CNRG) of the National Institutes of Forestry, Agricultural and Livestock Research (INIFAP) in Guadalajara, was recognized by the World Intellectual Property Organization (WIPO) as an International Depositary Authority (IDA) under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure. An IDA is a scientific institution capable of storing microorganisms.
The main feature of the Budapest Treaty is that a contracting state that allows or requires the deposit of microorganisms for the purposes of patent procedure must recognize, for such purposes, the deposit of a microorganism with any IDA, irrespective of whether such authority is in or outside the territory of the state.
In order to acquire the status of IDA, institutions must comply with certain requirements including that it will be available, for the purposes of the deposit of microorganisms, to any “depositor” (person, firm, etc.), that it will accept and store the deposited microorganisms and that it will furnish samples thereof to anyone entitled to such samples but to no one else.
Mexico, which has been a contracting party of the Budapest Treaty since March 21, 2001, is the second Latin American country to have an IDA. The first Latin American IDA was the Chilean Collection of Genetic Resources (Colección Chilena de Recursos Genéticos Microbianos, CChRGM) of the National Institute for Agrarian Research (INIA), recognized by WIPO on March 26, 2012.
Under the Madrid Protocol the fees to be paid to obtain an international registration comprise:
- A basic fee;
- A supplementary fee (depending on the number of classes of goods and services to be protected); and a complementary fee (depending on the number of designated Contracting Parties), or
- Individual fees depending on the designated Contracting Parties.
Rule 35(2)(d) of the Common Regulations under the Madrid Agreement and Protocol establishes that: “Where, for more than three consecutive months, the official exchange rate of the United Nations between the Swiss currency and the other currency in which the amount of an individual fee has been indicated by a Contracting Party is lower by at least 10% than the last exchange rate applied to establish the amount of the individual fee in Swiss currency, the Director General shall establish a new amount of the individual fee in Swiss currency according to the current official exchange rate of the United Nations. The new amount shall be applicable as from a date which shall be fixed by the Director General, provided that such date is between one and two months after the date of the publication of the said amount in the Gazette.”
Applying this regulation, the Director General of the World Intellectual Property Organization (WIPO) has established new amounts, in Swiss francs, of the individual fee that is payable under the following circumstances:
a. when Mexico is designated in an international application, or
b. in a designation subsequent to an international registration, or
c. in respect of the renewal of an international registration in which it has been designated.
The following amounts have been established:
1) Application or Subsequent Designation
– for each class of goods or services — 160 Swiss francs
– for each class of goods or services — 169 Swiss francs.
The new fees will enter into force on September 13, 2015.
For more information about the Common Regulations under the Madrid Agreement and Protocol, please click here
In you are interested in reading more about Mexico´s accession to the Madrid´s protocol please click here
The Director General of the Mexican PTO (IMPI), Miguel Angel Margáin, recently visited the state of Hidalgo to personally present the collective mark “Tenangos Bordados de Hidalgo” (Hidalgo´s embroideries, commonly known as tenangos) in an official ceremony to the artisans association“Tenangos Bordados Textiles S.A.”
In 2014, the association was granted the collective mark by IMPI to protect the tenangos, a style of embroidery made by Otomi women in the Tenango Valley of Hidalgo that can be traced back to pre-Aztec Meso-America.
Collective marks are signs that distinguish the geographical origin, material, and manufacture of goods or services of different enterprises.The owner may be an association of which those enterprises are members, or any other entity, including a public institution or a cooperative.
Collective marks are often used to promote products that are characteristic of a given region. Therefore, the registration of a collective mark helps to market such products locally and internationally.
Recently, “Tenangos Bordados Textiles S.A.” and the Mexican textile group “Grupo Ilusión” have signed a contract to commercialize textile products incorporating artisan embroidery elements.
On July 29, 2015, the Mexican government ratified the World Intellectual Property Organization (WIPO) Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled (the Marrakesh VIP Treaty).
The Marrakesh Treaty was adopted on June 27, 2013 and will come into force once it has been ratified by 20 eligible parties. Five out of the nine countries that have so far either ratified or acceded to the Marrakesh treaty are from the Latin American region, with Mexico joining Argentina, Paraguay, Uruguay and El Salvador.
With the aim of creating closer ties with several organizations and reviewing the progress it has made regarding intellectual property matters, Mexican PTO (IMPI) Director Miguel Angel Margáin recently visited the offices of several international organizations.
Margáin first participated in the Mexican Permanent Mission before the International Organizations, a diplomatic representation of Mexico located in Geneva, Switzerland.
Next, Margáin met with Juan Antonio Toledo, Senior Director of the Regional Bureau for Latin America and the Caribbean, Sherif Saadallah, Executive Director of the Office of Strategic Use of Intellectual Property for Development (OSUIPD), and Binying Wang, Deputy Director General of the Brands and Designs Sector in the headquarters of the World Intellectual Property Organization (WIPO). During the meetings, the worked carried out by IMPI and WIPO was discussed, a bilateral collaboration was ratified and new projects as well as cooperation opportunities were defined.
Additionally, during a meeting with Benoît Battistelli, President of the European Patent Office (EPO) in Munich, Germany, information on the IP management and operation systems of both patent offices was exchanged and the directors expressed their interest in continuing the ongoing collaboration between IMPI and EPO.
During this meeting, Battistelli and Margáin signed a Memorandum of Understanding (MoU) on Cooperative Patent Classification (CPC), a bilateral patent classification system that has been jointly developed by the EPO and the United States Patent and Trademark Office (USPTO). Planned collaboration according to the MoU includes the development of training activities that promote, improve and strengthen the patent systems in Mexico and Europe.
Since July 1, 2015, the Mexican Institute of Industrial Property (IMPI), in its capacity as a Receiving Office of international applications under the Patent Cooperation Treaty (PCT), has been receiving and processing international applications in electronic form. The IMPI now accepts PCT applications filed using the ePCT-Filing function in the ePCT Portal.
The ePCT-filing is a WIPO online service that allows secure electronic access to international applications filed through the PCT for receiving offices, international authorities and registered users.
For more information about the ePCT-filing system, click here.
For more information about the requirements and practices of IMPI with regard to the filing of international applications in electronic form, click here.