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Regulation and Compliance in Industrial Property in Mexico

Contributed by: Erika del Sol Rodríguez Razo


LawBiz Consulting Group, Mexico Member firm of Allinial Global

On 1 July 2020, the new Federal Law for the Protection of Industrial Property was published in Mexico, enacted on 5 November 2020. The new law empowers the Mexican Institute of Industrial Property (IMPI) to apply measures, resolutions, and sanctions through higher fines for intellectual property infringement. The penalties could even cause the bankruptcy of companies. Besides, the IMPI may collect resulting tax credits through the administrative enforcement procedure, in terms of the Federal Tax Code, and condemn payment of damages caused in the administrative declaration procedures. IMPI may also request assistance from the federal, state, or local public force, civil or armed institutions.  


Without a doubt, the new law puts Mexico at the forefront of protecting industrial, intellectual property, and copyright, which is why every company in the Mexican territory or those with commercial relations in Mexico must implement measures to avoid risky situations using brands, software technology, licenses, or teleworking. And I emphasize “every company” since, with the pandemic, it made it clear to us that it is the new way of operating, oriented to electronic commerce. We must be aware of the legal framework in which surveillance and pressure for illegal or suspicious uses will increase significantly. 


Among the most notable contributions of this new law, we find: 


  1. Electronic documents with an advanced electronic signature or other means of identification will produce the same effects as those signed autographically and will have the same probative value.


  1. The non-patentability of cloning procedures, genetic modification in animals or for the development of a human being,and the use of human embryos for industrial or commercial purposes is specified. However, the protection of biological material that has been modifiedthrough a technical procedure (virus) is given. 


  1. The premise of the “Bolar Clause” is included so that a third party may use, manufacture, offer for sale or import a product with a current patent to generate tests, information,and experimental production to obtain health records of drugs in order to market them when the patent expires, from the filing of the patent application and throughout the term of its validity.


  1. Allow industrial designs in an animated sequence or in an animated graphical interface.


  1. Regarding industrial secrets,the new lawwill help clarify their objects and the scope of protection, as well as to facilitate their exercise and increase the risks for possible offenders. Fines for the misappropriation, use, or disclosure of industrial secrets are substantially increased. It also makes it easier to obtain compensation for damages for such misconduct and creates new procedural avenues to enforce rights to industrial secrets. 


  1. The validity of trademarks, notices and trade names will be counted from the date of registration (concession). This provision will apply onlyconcerningtrademarks granted after 5 November 2020. 


  1. The previous law established that geographical indications and appellations of origin could not be registered as trademarks. The new law establishes that not only identical signs will be challenged, but also signssimilar toa degree of confusion to geographical indications and appellations of origin. 


  1. The definition of bad faith has been limited. Now bad faith is understood as “having requested the registration of a signto obtainan undue benefit or advantage to the detriment of its legitimate owner.” In addition, you can request the partial expiration of a brand, with respect to products that are not in use. The effects of expiration will be effective at the time of the final resolution. 


  1. Regarding the digital environment, there is a series of coercivemeasures for expeditious implementation where companies that intensively use works protected by copyright or that are oriented to electronic commerce should be aware of the legal framework they will operate, in which surveillance and pressure for illegal or suspicious uses will increase significantly. The provisional measure is added to remove content on the internet or through virtual, digital,or electronic means, including those that may arise in the future. 


The IMPI will have, among other powers: to impose provisional measures ex officio; destroy insured property; impose and collect fines, carry out a conciliation procedure regarding administrative infractions; and determine the payment of damages. Powers are granted for the IMPI to determine and impose damages for violations of a right. The possibility of closing an establishment is incorporated when the imposition of a provisional measure is not sufficient to avoid the violation of rights and definitive closure as a sanction for violation of property rights. 


This new law is a challenge, which in itself represents an enormous complexity, as part of the package of reforms associated with the T-MEC, so that every company should do due diligence in industrial property and have an expert lawyer to advise the use that is making this information inside and outside the company. 



Erika del Sol Rodríguez Razo 


LawBiz Consulting Group, Mexico Member firm of Allinial Global


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