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Latin America IPR SME Helpdesk

IP Factsheet: Mexico
WWW.LATINAMERICA-IPR-HELPDESK.EU

1 THE FACTS: Business in Mexico for EU


SMEs
A. SIZE of Market 1. The FACTS: Business in Mexico for EU SMEs
B. Key INDUSTRY SECTORS

2 IPR in Mexico for EU SMEs: BACKGROUND


A.Intellectual Property Rights for SMEs: 53
Why is this relevant to you?
19.3
B. How does the Mexican IP legal 33.7
framework compare to INTERNATIONAL
STANDARDS?

3 IP Rights in Mexico: THE BASICS


A. Copyright and related rights
B. Patents
C. Industrial Designs
D. Trademarks
E. Appellations of Origin and Geographical
indications
F. Other IPs
I. Trade Secrets A. SIZE of Market
II. Domain Names (DN)
GDP in 2015: 1031,4 billion (Source: World Bank)
4 ENFORCING YOUR IPRs Annual Growth Rate in 2015: 2.5% (Source: World Bank)
Population in 2015: 127 million (Source: World Bank)
5 USING CUSTOMS TO BLOCK EU exports of goods to Mexico 2015: 33.7 billion (Source: DG Trade)
COUNTERFEITS EU imports of goods from Mexico 2015: 19.3 billion (Source: DG Trade)
Total EU trade in goods 2015: 53 billion (Source: DG Trade)
6 LINKS OF INTEREST AND ADDITIONAL
INFORMATION B. Key INDUSTRY SECTORS

7 GLOSSARY According to the Global Competitiveness Index 2015- 2016 Mexico ranked
57th out of 140 countries.

The mining industry is one of the key industries for Mexico; it is the top world
producer of silver, one of the top copper producers and the tenth oil producer.
In 2015, Mexico was ranked as the seventh largest vehicle producer in the
world and the first in Latin America. Low labour costs and extensive free trade
Co-funded by: agreements are strong incentives for vehicle manufacturers and suppliers.

According to Mexico IT, the nation ranks fourth among global destinations as a
service location and has a growing software and IT services sector.
European Union
The aerospace sector is also becoming a key strategic sector for the
development of Mexico. In 2012 Mexico initiated the Strategic Aerospace
1 Latin America IPR SME Helpdesk IP Factsheet: Mexico

Program, aiming to place Mexico as one of the top countries in the


world. Mexico is also a leading manufacturer of electronics and
electronic devices such as cell phones, video games, computers Constitute a strong basis to build a goodwill in the market
and televisions. Source: Promexico Generate incomes through other business models such as
licensing or franchising
The EU has been the third largest exporter to Mexico (after US and
China) up to 33.7 billion in 2015. Most relevant exports include Although a certain degree of international harmonization exists in
machinery and electric equipment, transport equipment and the domain of intellectual property law, some relevant differences
chemical products. (Source DG Trade). can still be found between Mexico and Europe IP legal frameworks.
This Factsheet is aimed at explaining such differences concerning
The EUs leading exporter to Mexico is Germany, followed by Spain Copyright, Patents, Industrial Designs, Trademarks, Tradenames,
and France. (Source Worldstopexports) Geographical Indications and Appellations of Origin.

B. How does the Mexican IP legal framework compare to


2. IPR in Mexico for EU SMEs: BACKGROUND INTERNATIONAL STANDARDS?

Mexico is one of the few Latin American countries party to the


A. Intellectual Property Rights for SMEs: Why is this relevant to
Patent Cooperation Treaty and the Madrid System. Hence, EU SMEs
you?
can obtain an international patent/trademark registration that
has effect in each of the designated Contracting Parties, including
Intellectual Property (IP) refers to any creation, invention or
Mexico. In other words, a single patent or trademark application
sign, which can be used in commerce and is bound to its creator
serves as a basis for registration on each of the designated
or inventor, capable of generating profits for its creator, inventor
countries (see Glosary).
or right holder. Hence, it must be considered as part of the main
assets in a company or industry. IP is usually divided into two
branches, namely Industrial Property, which relates to inventions, TRADEMARK INTERNATIONAL REGISTRATION
designs or signs used in commerce; and Copyright (or authors
rights, according to non-English definitions), which relates to
Mexico is party to the Madrid Protocol (Madrid System),
literary and artistic works.
which offers a trademark owner the possibility of having the
trademark protected in several countries by filing a single
Intellectual Property Rights (IPRs) are exclusive rights granted by
international application
a National Authority that allows the rights holder to prohibit any
unauthorised use or exploitation of their creations, inventions or
signs by third parties. The referred exclusive right is temporary and
Mexico is also member of the following international conventions
will differ depending on the IPR.
and agreements:
The importance of IPR, therefore, lies in the possibility of
Trademark Law Treaty (TLT) (more information here);
generating assets for the company based on exploitation of
Paris Convention for the Protection of Industrial Property (more
the exclusive right granted and also protection against unfair
information here)
competitive practices.
Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS) (more information here)
In other words, IPRs allow SMEs to turn their intangible assets
Convention on Biological Diversity (more information here)
into tangible rights that can be transferred, licenced or used as
International Convention for the Protection of New Varieties of
collateral to obtain financing.
Plants (UPOV- 1978 act) (more information here)
Berne Convention (more information here)
The creation and protection of most IPRs, namely Copyright,
Rome Convention (more information here)
Trademarks or Industrial Designs, does not require significant
Budapest Treaty (more information here)
capital investment in comparison to the potential advantages,
World Intellectual Property Organization (WIPO) Convention
whereas development and protection of inventions (Patents) tend
(more information here)
to be more expensive. In both cases, SMEs are able to benefit
WIPO Copyright Treaty (WCT) (more information here)
from the right protection, management and exploitation of their
WIPO Performances and Phonograms Treaty (WPPT) (more
IPRs by enabling them to:
information here)
Prevent third parties from using their brands, inventions,
Mexico is also a signatory party to the Trans-Pacific Partnership
creative works
Agreement (TPP), a free-trade agreement that, among other
Differentiate from competitors
things, contains an IPR chapter that seeks strong, effective and
Latin America IPR SME Helpdesk IP Factsheet: Mexico 2

fair protection and enforcement for patents, trademarks, copyright from: communicating to the public (e.g. exhibition in a gallery),
and trade secrets. reproducing, distributing and transforming the work. Economic
rights can be transferred or licensed in order to allow third
In addition, the UE- Mexico Free Trade Agreement, which entered parties to exploit the work.
into force in October 2000 eased commercial exchange between
the EU and Mexico, especially in the machinery, mining, electric
Mexican legislation distinguishes between the author and the
equipment, transport and chemistry sectors.
Copyright holder. The author is the person who creates and owns
DESIGN REGISTRATION both moral and economic rights, whereas the Copyright holder is
the natural or legal person that owns all or part of the economic
rights over the work by virtue of law (e.g. a work developed by an
Mexico is not a member of the Hague Agreement. Therefore,
employee) or contract (e.g. transfer of rights by the author to a
if your company is interested in applying for a Design, you
will not be able to extend your international registration to publishing company).
Mexico. In these cases, a separate national IPR registration
will be needed. Likewise, neighbouring rights are recognised for performers
(actors, narrators, speakers, singers, musicians, dancers); book
publishers, producers of phonograms; producers of video games;
PENDING ISSUES and broadcasting organisations.

Regarding the pending issues for improvement, the European


Commission has reported the following: RESERVATION OF RIGHTS
Mexico also grants a exclusive right called Reservation
Availability of counterfeits and pirated products for sale in fake of Rights to use and exploit titles, names, designations,
markets around the country and notably in Tepito (Mexico City) distinctive physical and psychological features or original
and San Juan de Dios (Guadalajara) operational characteristics, to any of the following:
Online piracy is also very prevalent
Patent registration procedures are slow, as is the judicial process a) periodical publications or broadcasts;
There is still no possibility of registering foreign Geographical b) human characters, whether fictional or symbolic;
Indications (GIs) in Mexico although it appears local interest in c) persons or groups devoted to artistic activities; and
GI protection is increasing d) promotional advertising.
The process for applying for marketing authorizations for
To protect your exclusive right you need to obtain a
pharmaceutical and agrochemical products is complicated.
certificate of registration from the National Copyright Office
Visual artworks used by public institutions have been reported
(INDAUTOR).
to not receive royalty payments

3. IP Rights in Mexico: THE BASICS HOW do I register?

A. Copyright and related rights You do not have to register your work in Mexico to protect it since
it will be protected from its publication. However, registration may
What do you need to know? be used as proof of ownership that can be very useful in certain
circumstances (e.g. the authorship is not specified in the work
Copyright protects artistic, literary and scientific works such published). Registration in Mexico should be carried out before the
as books, lectures, musical compositions, sculptures, computer National Copyright Institute (Instituto Nacional de Derechos de
programs, etc. that may be reproduced or disclosed by any Autor or INDAUTOR).
current or future means. Such protection covers both original and
derivative works (e.g. adaptations, compilations, transformations, It is possible to register your work in person at the INDAUTOR
translations or arrangements). facilities or by mail. The following information must be submitted
by the applicant:
As in Europe, Copyright in Mexico split into two groups of rights:

Moral rights are personal rights of the author which cannot


be transferred to third parties. The main ones are the right
to be recognised as author, the right to decide to publish the
work and the right to the integrity of the work (i.e. the right of
the author to impede any modification of his/her work without
his/fer consent).

Economic rights, derived from the property of a work,


granting the author (or owner) the right to prevent third parties
3 L atin A merica IPR SME H elpdesk IP Factsheet: M exico

a) Application form RPDA-01 with key INDAUTOR-00-001 (in WHO can register?
duplicate), where the personal data of the applicant, date and
features of the work are included Authors, or their representatives, can register their work before
b) Two copies of the work INDAUTOR. Mexicos law also allows foreign companies to register
c) Proof of payment made through electronic payment at any works as long as they have a local domicile in Mexico. Otherwise,
bank a local representative must be appointed.
d) PoA (in case of legal person or representative)
e) Simple translation to Spanish of the documents issued abroad HOW much does it cost?
(no legalisation is required)
f) In case the applicant is not the author, the corresponding Registration of a literary or musical work, a photograph or a
certificate (transfer licence, collaboration letter, etc.) computer program amounts to ca. 11, while a registration of a
g) In the case of pseudonym work, sealed envelope with authors reservation of rights for exclusive use costs 172.
personal information.
Contract registration amounts to 58 (approx. 29 in case of
A physical copy of the registration of the work, contract, powers, INDAUTORs model contracts).
duplicates or earlier registrations can be obtained 14 days after
the application has been received by the INDAUTOR. All fees and requirements can be found at the INDAUTOR website
section (in Spanish only).
TRANSFER OF ECONOMIC RIGHTS
Moreover, our Helpline is always open and is available in 5
languages (Spanish, English, German, French and Portuguese).
Any transfer of economic rights in Mexico must fulfil two
requirements:
HOW LONG does legal protection last?
Temporary: transfers and licenses must be granted for a
fixed term. Unless otherwise expressed, the general term Economic rights shall be protected for a period of 100 years
is 5 years and it cannot exceed 15 years, except in certain from the authors death, which is longer than the legal term
cases (e.g. Computer programs and editorial works have of protection in Europe (70 years). The term of protection of
no limitations) economic rights for anonymous or pseudonymous works is 100
At a cost: free transfers or licenses are not accepted. In
years from first publication.
case of lack of agreement, the competent court is entitled
to define its amount and the terms of payment.
Economic rights on audio-visual and photographic works are
In addition any transfer or licence over economic rights, shall protected for a period of 50 and 75 years, respectively, from
invariably be executed in writing and be registered before publication.
INDAUTOR in order to be enforceable against third parties.
Performers rights are protected for 75 years from first disclosure
(performance, recording or publication).

Book editors are provided with 50 years of protection over their


Works, counted from the first publication.
L atin A merica IPR SME H elpdesk IP Factsheet: M exico 4

Computer programs are protected for 100 years either from


DISCLOSURE and GRACE PERIOD
creation or publication. When the owner is a legal person (i.e.
employer), the duration lasts 100 years counting from the
disclosure or publication of the work. A disclosure of the invention by the inventor or its
assignee within one year before the patent application,
Reservation of rights to exclusive use may be protected for 5 for example, in a congress or exhibition (National or
years, which could be indefinitely renewed for equal periods. International), will not bar novelty. This circumstance
must be indicated and proved at the time of filing of the
patent application.
B. Patents

There are two kinds of protection for inventions: patents and utility What cannot be protected as patents in Mexico?
models.
Nevertheless, some inventions are excluded from patentability,
Patents in Mexico: What you need to know such as essentially biological processes of plant and animal
breeding, animal breeds and plant varieties, the human body and
Patents, to protect products (including substances), processes parts thereof, and biologic and genetic material as found in nature.
or uses (e.g. a new type of glue or an automated syringe).
Furthermore, certain creations are not considered inventions,
Utility models to protect minor inventions, such as a new including:
improvement of an already known invention that provides
extra functionality. Processes are excluded from this protection Theoretical or scientific principles.
mode. Discoveries consisting of making known or disclosing
something that existed already in nature, even if previously
Patents are available for any invention, whether a product or unknown to man.
process, in all fields of technology, including chemistry, pharmacy, Schemes, plans, rules and methods for carrying out mental
biotechnology, electronics, telecommunications, mechanics, etc. processes, playing games or doing business and mathematical
methods.
In order to have access to patent protection, the new invention Computer programs or software.
must fulfil the following requirements: The presentation of information.
Aesthetic creations and artistic or literary works.
Novelty: An invention shall be considered new when it is not Methods of surgical or therapeutic treatment or diagnostic
included in the state of the art. The state of the art comprises treatment applicable to the human body, as well as such
everything that has been made available to the public by methods applicable to animals.
written or oral description, by use or marketing or by any
other mean prior to the filing date of the patent application or, SECOND USE PATENTS
where appropriate, the recognised priority date (see Glossary).
Please bear in mind that second use patents (see Glossary)
Inventive step: An invention shall be regarded as involving are allowed in Mexico, subject to the regular patentability
an inventive step if, for an expert with average skills in the requirements.
technical field concerned, the said invention is neither obvious
nor obviously derived from the state of the art.
HOW LONG does legal protection last?
Industrial applicability: An invention is deemed industrially
applicable when its subject matter may be produced or used Patent protection lasts for 20 years, counted from the filing date
in any type of industry. In this context, industry includes all of the application. It takes 4 to 6 years to get a patent granted in
productive activity, including services. Mexico (this may vary depending on the field).

On the other hand, Utility Models protect any new shape, Legal protection for Utility Model lasts 10 years from the filing
configuration, arrangement of components of any device, tool, date of the application and the granting process tends to be
mechanism, or any part thereof that leads to an improvement, shorter than in case of Patents (2 to 4 years).
provides a new use or a new manufacturing process. In order to
obtain a utility model, the applicant should demonstrate that the WHO can register?
invention has a new use, advantage or technical effect (novelty).
Hence, it is not necessary to demonstrate any inventiveness The inventor or any person (natural or legal) to whom the right
(inventive step). has been transferred is entitled to apply for Patents and Utility
Models. It can be done directly or through a legal representative.
5 L atin A merica IPR SME H elpdesk IP Factsheet: M exico

Applicants without domicile in Mexico must appoint a local legal Applicants of a Patent or Utility Model should file before the IMPI:
representative, which could be any resident in Mexico. However, an
IP agent or attorney is always recommended. a) Patent application form IMPI-00-009 (in duplicate)
b) Proof of payment of the fee
HOW do I register a patent or a utility model? c) Power of Attorney, if necessary
d) Technical information of the patent: title, an abstract,
A patent application, requesting patent protection for an invention, description, a set of claims and drawings should be included:
must be filed at the Mexican Institute of Industrial Property (IMPI) + The abstract consists of a summary of the technical solution
premises or via online. The patent application must be filed in to the problem. However, the abstract only serves as a
Spanish. source of technical information.
+ The description should disclose the invention in a sufficiently
INTERNATIONAL PATENT APPLICATION clear and complete way so that a person skilled in the art
would be able to understand and carry it out.
+ The claims define the subject matter of protection in the
Mexico is a member of the Patent Cooperation Treaty patent.
(PCT), which provides the possibility of protection for an + Drawings, examples (together with their description)
invention simultaneously in a large number of countries + When the applicant is not the inventor, the contract proving
by filing a single international patent application instead
the invention has been transferred to the applicant.
of filing several separate national or regional patent
applications.
DRAWINGS IN PATENTS AND UTILITY MODELS
APPLICATIONS
Drawings must be included within the patent application
for a product or a device. The same applies to Utility
models. As to processes patent applications, they are only
required if they help to understand the invention.

The IMPI will then verify if the formal requirements are met and
will publish the application in the Official Gazette (SIGA) so third
parties can make observations during the following 6 months.
The applicant will be requested to pay for the patent certificate
fee and submit the drawings (if needed) if the examination of the
patentability requirements is successfully completed, after which
the patent will be published in the SIGA.

HOW much does it cost?

Patent application costs do not depend on the number of claims


(see Glossary); for the initial 5 years (including application,
publication and registration costs) protection cost will amount to
600 approx. While Utility Models registration costs amount to
281 for the first three years. All fees can be found on the IMPIs
website section.

Entering the National Phase via PCT has an extra cost of 297
or 181 for patents and 98 or 58, depending if it is entered
within month 30 or 19 from the foreign patent application date,
respectively.

Claiming priority has an extra cost of 48 approx.

Take into account that such fees are official fees and do not
include representative fees, translations, Patent drafting and other
costs, as those related to answer oppositions.

Inventors and SMEs that are incorporated in Mexico can benefit


from a 50% discount.
L atin A merica IPR SME H elpdesk IP Factsheet: M exico 6

C. Industrial Designs
a) Design application form IMPI-00-009 (in duplicate)
What does it PROTECT? b) Proof of payment of the fee
c) Power of Attorney, if necessary
The particular appearance of a product can be protected as an d) Description of the Design
Industrial Design, including lines, combinations of colours, two- e) Claim
dimensional (2D) or three-dimensional (3D) external form, line, f) The Graphic Representation of the Design
outline, configuration, texture or material. g) When the applicant is not the inventor, the contract that proves
the invention was transferred to the applicant.
WHAT do you need to know?
In contrast to Europe, IMPI performs a substantial examination
In order to register a design as an Industrial Design (or a Design of the Design to see if the novelty and industrial applicability
patent) in Mexico, it should be new before the filing date. In other requirements are met.
words, the design should not have been made available to the
public in any place by any means such as description, use or The applicant is then asked to pay the registration fee
marketing. Hence, novelty and industrial applicability are the only (corresponding to the 5 first annuities) and submit some drawings
requirements. in order to publish the design in the Official Gazette (SIGA).

Technical features, functionality or performance, and colour


variations, dimensions, materials cannot be protected as new
designs.

HOW LONG does legal protection last?

Legal protection for industrial designs lasts 15 years from the


filing date of the application, the granting proceedings take around
5 years.

WHO CAN register an industrial design?

The inventor can apply for, transfer or licence Industrial Designs.


It can be done directly or through a legal representative.
Applicants without domicile in Mexico must appoint a local legal
representative, which could be any resident in Mexico. However, an
IP agent or attorney is always recommended.

HOW MUCH does it cost?

Design initial registration fees amount to 136 (application,


publication, certificate and annuities for the first 5 years).

Inventors and SMEs that are legally incorporated in Mexico can


benefit from a 50% discount.

HOW do I register a Design?

Applicants of a Design should file before the IMPI, either in person


or online:
7 Latin America IPR SME Helpdesk IP Factsheet: Mexico

GRACE PERIOD and DISCLOSURE

Official signs or seals;


Disclosures in trade fairs, magazines or stores by means Coins, banknotes of legal tender;
of exploitation or advertising will not jeopardise or affect Officially recognised medals or prizes;
the novelty requirement as long as it was done by the Well known or famous trademarks;
inventors or authorised third parties and within 12 months Marks equal or confusingly similar to other previous marks
prior to filing the design application. All probationary (filed or already registered).
evidence must be provided, including the publication
document bearing the specific date of the disclosure. It is strongly recommended to perform a prior search on IMPIs
database (Marcaine) in order to assess if there are trademarks
that are similar to the sign that you want to register. If you need
help to conduct your search, please contact our Helpline.
D. Trademarks
Mexico has recently established a opposition system similar to
What does it protect?
those established by EU members, however, the opposition does
not bind the IMPI, therefore IMPI is not obliged to answer it neither
Any sign capable of distinguishing goods or services on the market.
to take it into account.
The sign can consist of: words, images, figures, sounds, aromas,
letters, numerals, a colour or colour combination (with certain
Moreover, Mexico adopted the International Nice Classification, but
limits), a tactile sign, the shape of goods or any combinations of
products and services that are not included in any of the classes
the abov can use the Complementary list issued by IMPI in order to increase
certainty.
THREE DIMENSIONAL TRADEMARKS
In Mexico, three-dimensional trademarks are accepted. The use of TM symbols is only allowed for registered
They can be used to protect containers, wrappings, trademarks and they can be used only in relation to the products
packaging, bottles, as well as the form or presentation of or services for which they are registered. Its use is required to
a product in three dimensions, without words or designs. enforce your rights in case of infringement (civil or criminal
actions), but if its used for non-registered marks, it will be
considered an administrative offence.
What do you need to know?
OBLIGATION TO USE
A Trademark is subject to substantial examination in order to Trademarks that have not been effectively used in Mexico
determine if the given sign falls into any absolute or relative during 3 consecutive years may be revoked. Therefore it is
ground for refusal. advisable to register only those trademarks that you aim
to effectively use, since if you register a trademark for
Absolute grounds: refer to all those trademark grounds of mere defensive purposes it might be cancelled after three
refusal based on public interest, such as generic names, lack years of lack of use.
of distinctiveness, use of state emblems etc.

Relative grounds: are based on the existence of prior


Who can register a trademark?
Trademarks that are equal or confusingly similar to the one
applied for and/or when the trademark application may
The owner or any person with alegitimate interest (e.g. business
mislead the consumer regarding the origin of the goods and
manager, mark creator, etc.) can apply for a trademark in Mexico.
services.
It can be done directly or through a legal representative. Foreign
companies are recommended to appoint a local IP expert.
The main prohibitions for obtaining a registration according to
trademark law are:
HOW do I register a trademark?
Marks with contents or form that can be contrary to morality,
Applicants of a trademark should file the following documents at
public order or any law;
the IMPI premises or via online:
Lack of distinctiveness / originality;
Common use terms, or generic designation or technical names;
a) Trademark application form IMPI-00-001
Descriptiveness;
Latin America IPR SME Helpdesk IP Factsheet: Mexico 8

b) Proof of fee payment What do you need to know?


c) Power of Attorney, if necessary
d) A reproduction, or graphic representation, of the trademark Protection of an AO is acquired with a declaration issued ex officio
e) Copy of the first trademark application, in case of priority by the IMPI or upon request of any person (natural or legal) who
demonstrates having a legal interest.
It takes ca. six months to get your trademark application granted
(without official actions resulting from formal and substantial According to Mexican regulations, AO are owned by the Mexican
examinations). Government and they may only be used by virtue of the
authorization issued by the IMPI.
Protection in Mexico is granted for ten years from the filing date
and it can be renewed indefinitely for equal periods. Illegal use of an AO shall be punished (i.e. use of the AO with
indications such as kind, type, style, imitation or other
INTERNATIONAL REGISTRATION similar terms that may lead consumers to confusion or imply
unfair competition).

Mexico is a member of the Madrid System. Thus, you can According to the IPL, the duration of the declaration of protection
register your trademark in just one or many of the 97 for an AO will remain as long as the conditions that motivated the
members of the treaty (including the Latin-American country) registration persist. It shall cease to be effective only by virtue of
with a single application. a subsequent declaration made by the IMPI

Registration fees are to be paid before WIPO (approx. 760) REGISTRATION OF EUROPEAN APPELLATIONS OF ORIGIN

If you want to know more, please contact our Helpline.


At this moment, EU applicants cannot directly apply for an
AO/GI before IMPI, since in Mexico the Federal State is the
owner of any AO and authorises third parties to use the AO.
HOW MUCH does it cost?
Since registration is closed to EU AO the only means
In contrast to Europe, Mexico has no multi-class application available to obtain protection is through multilateral (e.g.
system. Hence, a separate trademark application must be filed Lisbon Agreement) or bilateral agreements such as the EU
for each class of product or service you want to register your
Mexico Free Trade Agreement (FTA) whose scope is limited to
trademark in.
spirits AO.
Trademark registration in Mexico costs 150 per class (including
certificate of registration). An alternative or cumulative means of protection that EU
producers usually use in Mexico is to register the sign as a
collective trademark see Glossary.
E. Appellations of Origin and Geographical indications

What is it? And what does it protect?


To date, Mexico has 14 appellations of origin registered and in
Contrary to Europe, the Mexican system does not differenciate force: Tequila, Mezcal, Olinal, Talavera, Caf Veracruz, Bacanora,
between Appellation of Origin (AO) and Geographical Indication (GI) Ambar de Chiapas, Sotol, Mango Ataulfo del Soconusco de Chiapas,
Charanda, Caf Chiapas, Vainilla de Papantla, Chile Habanero de la
According to Mexican Law an AO (Denominacin de Origen) Pennsula de Yucatn and Arroz del Estado de Morelos
protects the name of a geographical region of the country which
serves to designate a product originating therein, the quality and How much does it cost?
characteristics of which are due exclusively to the geographical
environment, including natural and human factors. The fee to apply for Appellation of Origin protection in Mexico is
75.
However the AO should not be confused with an Indication of
Source. The Indication of Source protects a name, expression,
image or sign that designates or evokes a particular country, F. Other IPs
region, locality or place. For instance, Acmbaro.
I. Trade Secrets
The Indication of Source (IS) is a mean to protect consumers
against being misled from the origin of a product rather than In addition to registered or unregistered IPRs, Mexico provides
a conventional IPR. By means of the IS the consumers and for the protection of other Intangible assets such as Trade Secrets
competitors can prevent a third party to use the name or or Undisclosed Information. The legal requirements for Trade
evocation of a place if the product does not come from such place. Secrets to be protected as such in Mexico are:
(E.g. they can prevent the use of the expression Italian milk if the
milk does not come from Italy). a) it should be secret, meaning the information is not generally
known or readily accessible to people in the concerned field
9 Latin America IPR SME Helpdesk IP Factsheet: Mexico

b) it must have a commercial value due to its secrecy 4. ENFORCING YOUR IPRs
c) the right holder should adopt reasonable measures to keep it
secret such as signing confidential agreements with employers IPRs may be enforced through administrative, civil or criminal
and providers actions.

Unauthorised disclosure of trade secrets is a criminal offence and Administrative proceedings must be brought by the holder or by
could be punished with 6 years prison and ten to 1000 days from a duly recorded licensee before the IMPI, which is the competent
the minimum salary of the Federal District. authority to decide patent, trademark, and most cases of copyright
infringement, as well as the authority to take preliminary
In Mexico, Undisclosed Information used to obtain a market measures against alleged infringers and to resolve trademark
authorisation in pharmaceuticals and agricultural chemicals enjoys invalidation and cancellation actions.
a specific type of protection. The requirements are:
Actions for invalidity, lapse or cancellation of the registration of
a) obtaining such information entailed considerable effort a trademark shall be made by the Institute, either ex officio or at
b) the information is related to new chemical compounds the request of a party.
employed in the production of pharmaceutical products or
agricultural chemicals In addition, unfair competition is also contemplated within the
c) the information has been used to obtain market authorisation infringement actions and, based on this particular ground, it might
be possible to initiate legal proceedings without actually having an
The term of protection for Undisclosed Information is 10 years for IP right protected with IMPI.
agricultural chemicals and 5 years for pharmaceutical products.
IP rights infringements are punishable by fines (up to about
II. Domain Names (DN) 4,200), temporary or permanent closure of the business, or even
through administrative arrest for 36 hours. In the event of repeat
NIC (Network Information Center) Mexico is in charge of registering offences (after the administrative decision has become final and
and managing .mx domain names. NIC established in its internal unappealable), fines will be doubled and penal actions may be
policies the use of an Alternative Dispute Resolution Mechanism taken against the infringer.
when someone considers its rights to be affected and wishes for a
DN to be cancelled or for the ownership to be transferred to them; Criminal actions are initiated by filing a "querella" (complaint),
the dispute will be settled by an authorized dispute resolution where complainant may conclude the proceeding by filling a
provider (in this case WIPO) formed by an independent and pardon. IP crimes may also be initiated ex officio but, in these
specialized group of experts. This procedure can be initiated if: cases, pardon shall not be granted.

the domain name is identical or confusingly similar in Criminal penalties range from two to ten years' imprisonment (i.e.
respect of a trademark, registered service, registered trade Counterfeit product commercialization can be punished with 2 to 6
announcement, appellation of origin years of prison).
the registrant has no rights or legitimate interests in the
domain name Finally, after the administrative and/or criminal resolutions become
the domain name has been registered or used in bad faith firm, plaintiffs may initiate civil actions claiming damages with a
Civil Court. Damages are calculated according to the commercial
You will find available in the Registry .MX (a division of NIC Mexico) value of the infringing products (the minimum standard applicable
website all the relevant information related to this procedure. in damages is 40%).

Who can register?


Anyone in the world can register a Domain Name with a TLD .mx 5. USING CUSTOMS TO BLOCK COUNTERFEITS
without any restriction.
Trademarks registered before the IMPI can benefit from the
How much does it cost? Customs Trademark Database (CTD). Main advantages:
Registration of Domain Names can cost from 34 upwards,
depending on the number of years and the registrant provider. The Eases the identification of presumably counterfeit goods when
maximum registration period for a .MX domain name is up to 10 these are being imported into Mexican territory.
years. Facilitates the entry of genuine goods in Mexican Customs.
Helps the Customs personnel in the verification of goods, and
L atin A merica IPR SME H elpdesk IP Factsheet: M exico 10

if potential counterfeit products are detected: 7. GLOSSARY


o retain the entry of suspicious goods up to five days, and
o inform the trademark owner who should bring actions Designated countries: refer to the countries to which the applicant
against the infringer aim to extend its international application by means of any of the
WIPO international registration systems: PCT, Madrid, Hague and
Finally, it is highly suggested that TM owners be proactive on their Lisbon.
TMs protection before customs by:
Derivative works: derivative works are works that modify prior
1.- Updating the IMPIs records of their TM registrations, with all copyrighted works and require the consent of the owner of the
the ownership changes, as well as, all the license agreements original work: a translation, the adaptation of a novel or a version
executed. Usually Mexican Customs Authorities use the information of a song are some of the most common examples of derivative
available at IMPIs databases to contact rightholders. works.

2.- Recording their TM registration information at CTD, as well as Right of priority: Whenever a person, from any signatory country
licensees, authorized importers and distributors. of the Paris Convention, files a national application for a patent
or industrial design in any of the 176 members, the date on
Further information on the CTD and other border measures can be which the first application was filed is established as the date of
found in our Factsheet Customs in Mexico. priority for any future application in any of the member countries,
provided that subsequent applications are applied for within
twelve months of the first application.
6. LINKS OF INTEREST AND ADDITIONAL
INFORMATION Second use: Refers to the possibility of patenting a different
use of an already known object/product (e.g. Use of a chemical
Find out more about Intellectual Property Rights in Latin composition as a medicine to treat heart diseases when the
America, visit the Latin America IPR SME Helpdesk website: www. original patent claims its use as antibiotic). In general, in Europe it
latinamerica-ipr-helpdesk.eu is possible to patent such a second use subject to the fulfilment of
the Novelty and Inventive Step requirements.
IMPIs patent and utility model guide for users
http://www.gob.mx/cms/uploads/attachment/file/54264/GDU_
Collective trademarks: is type of trademarks used to identify the
Patentes.pdf
goods and/or services of members of a specific entity or from a
IMPIs design guide for users group of entities/companies.
http://www.gob.mx/cms/uploads/attachment/file/54267/GDU_
Disenos_Industriales.pdf Claim: Part of a Patent application or specification that defines
the matter for which protection is sought in terms of technical
IMPIs online registration FAQs features.
https://eservicios.impi.gob.mx/seimpi/ayudaSEIMPI/Preguntas_
Frecuentes_RDUdi.pdf
IMPIs trademarks guide for users Version: July 2016.
http://www.gob.mx/cms/uploads/attachment/file/54262/GDU_ All the requirements hereby are updated to the Law in force at this
Marcas.pdf date. Amounts are expressed in Euros and may vary according to the
exchange rate and/or ulterior modifications of the regulation in force
Mexican Industrial Property Office (IMPI)
http://www.impi.gob.mx/
Mexican Intellectual Property Office (INDAUTOR)
http://www.indautor.gob.mx/
IMPI fees list
http://www.gob.mx/impi/acciones-y-programas/servicios-que-
ofrece-el-impi-tarifas
Customs Authority
http://www.sat.gob.mx/aduanas/tramites_autorizaciones/
Paginas/default.aspx
IPR Mexican Regulation
http://www.wipo.int/wipolex/en/profile.jsp?code=MX
Factsheet Customs in Mexico:
http://www.latinamerica-ipr-helpdesk.eu/content/customs-
mexico
WWW.LATINAMERICA-IPR-HELPDESK.EU

MANAGE YOUR INTELLECTUAL PROPERTY IN LATIN AMERICA


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well as those potentially interested in establishing commercial and R&D activities and ventures in these countries.

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ADDRESS (2): Avenida Eugenio Garza Lagera & Rufino


Tamayo, Valle Oriente, San Pedro Garza Garca, 66269, Disclaimer:
Nuevo Len, Mxico The Latin America IPR SME Helpdesk is a
TEL: +52 (81) 86256000 free service which provides practical,
objective and factual information aimed
E-MAIL: mexico@latinamerica-ipr-helpdesk.eu to help European SMEs understand
WORKING HOUR: 9h00-17h30 (GMT-5) business tools for developing IPR value
and managing risk. The services are not
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ADDRESS: Galvarino Gallardo 1690, Providencia, Santiago of any actions made on the basis of its
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Executive Agency for Small and
Medium-sized Enterprises or any other
body of the European Union. Before
Project implemented by: taking specific actions in relation to IPR
protection or enforcement all customers
are advised to seek independent advice.
Neither the European Commission nor
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2016 - Latin America IPR SME Helpdesk - A project funded by the European Unions COSME Programme (2014-2020) Version: July 2016