The Mexican Senate approved a package of reforms to the provisions of the “Ley de la Propiedad Industrial” (IP Law) comprising important changes to the protection of trademarks in Mexico. These reforms can be considered as the most important reforms to the IP Law in recent years.
The reform includes extensive changes. We would like to highlight in particular the following three important points for brand owners
- Trademark Use:
- Three years from registration of a mark in Mexico it will now be legally required to declare actual and effective use of a trademark. If this declaration has not been made, the registration will be considered as lapsed.
- For renewals it will now also be required to declare the actual and effective use of the trademark.
- Nullity action based on bad faith:Nullity claims based on bad faith will no longer be restricted to registrants who are agents, representatives, users or distributosr of the owner. It will now be sufficient that there has been any kind of direct or indirect relationship between the bad faith registrant and the owner of the prior rights.
- Protection for non-traditional trademarks:The catalog of signs admissible for trademark protection will be extended to “non-traditional trademarks”, namely holographic signs, sound and smell marks.
Other important areas of changes to the IP Law are summarized below:
- Amendments to the provisions on signs that are not registrable as a trademark.
- Amendments to the provisions on collective marks.
- Amendments to the provisions on well-known and famous brands.
- The opposition procedure, recently incorporated into the legal framework of Industrial Property, will be modified.
- Provisions on certification marks will be incorporated in the IPL for the first time.
The reform package will be published within the next few days in the Official Gazette of the Federation of Mexico. It is expected that the reforms will enter into force 60 days after their publication.
We will follow up with reports on each of the specific reform topics.