June 6, 2020 is the date on which the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs will enter into force in Mexico. From this date, it will be possible to designate MX in international applications and seek protection for Mexican designs through this international system.
In line with this international treaty, the Mexican instrument of accession was deposited at WIPO last March. This document contains the following declarations to inform users about the peculiarities of the Mexican design system.
Article 7(2). Individual designation fee;
Article 11(1)(b). No deferment of publication;
Article 13(1). Special requirements concerning unity of design;
Article 16(2). No effect of change in ownership until specified statements or documents are received by the Mexican Institute of Industrial Property (IMPI);
Article 17(3)(c). Duration of protection;
Rule 8(1)(a)(i). Special requirements concerning the applicant;
Rule 12(3). Individual designation fee payable in two parts;
Rule 18(1)(b). Twelve-month refusal period; and
Rule 18(1)(c)(i). Date of effect of the international registration.
The Mexican process has been slow and complicated. A major amendment to the local IP law was necessary. This reform changed the term of protection from fifteen non-renewable years to a period of five years renewable up to twenty-five, it also incorporated the definitions for the concepts "independent creation" and "significant degree of difference", which are required to evaluate the novelty on a MX design application.
Additional modifications to the design rules have been proposed in the draft of the new Mexican IP law, which is currently being studied by the Senate and that should enter into force this year.
Regarding the unity of design, the draft clarifies current practice and finally establishes the rules for evaluating the design concept to be shared among the embodiments in a single design application. Article 72 states that the industrial design application shall refer to a single design or a group of designs related to each other, in such a way as to conform a single design concept. Multiple designs in one application will have a single design concept if they (1) can be identified under the same name in the application; (2) present in common the same new features; and (3) produce the same general impression, even if the industrial designs differ, between each other, in irrelevant details.
In addition, the draft contains provisions related to the content of the description and the rules for drawings in a design application, including the validity of the disclaimers and the regulations to seek protection for graphic user interfaces (GUIs). It also establishes new rules for filing certified copies of prior applications in cases where priority rights are claimed.
Finally, for the correct implementation of the treaty, IMPI has prepared a list of mandatory rules. The particularities that international applicants who designate MX must take into account are the following:
Priority document. For the mandatory filing of the certified copy of the priority application, one option will be to submit the document at the time of filing the international application. However, the applicant must consider that if the document is not in Spanish, it will be required to file the corresponding translation within three months from the publication of the international register directly at IMPI. On the other hand, if the priority application is not filed with the application, the applicant will have the period of three months to file the priority document and its translation directly into the Mexican office.
Payment of the second part of the designation fee. After the positive conclusion of the evaluation of the case, the Mexican office will require the payment of the second part of the designation fee, granting a period of two months to proceed before the international bureau. After this period, IMPI will automatically extend the term for two additional months, however, the fees must be paid directly to the Mexican office in Mexican currency.
Restoration of rights. After not renewing an international register during the six-month grace period, it will be possible to reinstate the Mexican design, however, the request must be filed directly into IMPI.
A Mexican attorney should be required to carry out the actions before the Mexican office.
Benefits for small entities. It is possible that certain entities obtain reductions in official fees depending on the commercial activity, the number of collaborators, the annual income and the conditions of licenses granted. To claim benefits, it will be necessary to declare that the applicant meets the local requirements on the filing form.
As in the designation of some other contracting parties, international applicants who designate Mexico must be careful with the particularities established in the specific declarations and the additional local rules that may affect the outcome during the prosecution of the Mexican case.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.