New Mexican Federal Law for the Protection of Intellectual Property.

July 2020

Good news for IPR owners and applicants. A new IP framework is available in Mexico, which will be in force as of November 5, 2020.

This new legislation (Federal Law for the Protection of Intellectual Property) harmonizes Mexican legislation with the international standards contained in TIPAT (which is already in force in Mexico), as well as the TMEC and the Free Trade Agreement between Mexico and the European Union (despite ratification is still pending). It incorporates international good practices, specifying some figures and requirements that were not sufficiently clear, and facilitating their understanding for the public user of the industrial and intellectual property system.


In addition, this law aims to reinforce the role of IMPI in tasks such as the condemnation and quantification of compensation for the suspension of free movement of goods, expanding its powers to import and export, transshipment or transit in customs matters.


Likewise, it tries to simplify administrative processes and reduce the document burden on requests, making use of technology and favoring tools such as email, information notices and technical instruments to collect evidence. The legal scope of documents, files and databases by electronic means is also recognized.

For your prompt information, let us summarize some its main changes:

  • Eliminates obligation to register a license for it to be opposable to third parties.
  • Eliminates redundant procedures which delay the approval to destroy counterfeiting products.
  • Facilitates the procedure to authorize geographical indications.
  • Reduces the requirements to acknowledge a trademark as famous or well-known.
  • It concentrates in one single office action the result of the examination of a trademark application.
  • It modifies the duration of a trademark, which will start as of its registration date, conferring 10 effective years of protection.
  • It eliminates the uncertainty created by the last reform in terms of the use declaration of a trademark.
  • In patents, it acknowledges the results of a foreign examination.
  • It expressly includes a “Bolar” exception.
  • It increases the duration of Utility Models to 15 years.
  • It incorporates artisanal products as Industrial Designs, reinforcing its regulation, as a consequence of the entry into force of the Hague System.
  • It introduces specific procedures for the amending and limiting patents, conferring legal certainty to its scope of protection; it also clarifies the nullity causes of patents, utility models and industrial designs.
  • In relation to Trade Secrets and Know-how, it introduces the concept of undue appropriation and its exceptions and it facilitates the imposition of preliminary injunctions.
  • Finally, it sets forth new criminal actions for trade secrets and geographical indications, it defines what it to be considered as trademark piracy and increases the punishments for these crimes.  

In-depth analysis of this new legislation will follow. In the meantime, the main challenge is now to have adequate Regulations thereof.

In any event, it is good news for IPR owners to celebrate.

Best regards,

GIRO MARTINEZ

Eduardo Zamora and Karla Vazquez