Becerril, Coca & Becerril SC updates

USMCA or NAFTA 2.0: what's really new for intellectual property?
Becerril, Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 03 December 2018

The IP chapter of the recently negotiated US-Mexico-Canada Agreement is one of the most comprehensive of all of the treaties negotiated by the parties to date. However, despite all of the criticism and buzz surrounding the chapter, will Mexico actually have to make that many changes to its existing patent system? In practice, the negotiated text appears to be more of a compromise not to change than a commitment to change.

Important amendments to Industrial Property Law: declarations of use
Becerril, Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 24 September 2018

Various amendments to the Industrial Property Law's trademark chapter recently entered into force. The amendments make a number of important changes, including introducing a requirement for trademark owners to submit a declaration of use within three months from the three-year anniversary of the granting of their mark's registration. If such declaration is not filed within this period, the registration will lapse. Several discussions have taken place in order to clarify the criteria that will apply in this regard.

Important amendments to Industrial Property Law
Becerril, Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 10 September 2018

A number of amendments to the Industrial Property Law's trademark chapter recently entered into force. Among other things, the amendments stipulate that a declaration of use must be submitted within three months of the three-year anniversary of the granting of a trademark registration. If such a declaration is not filed, the trademark registration will lapse. Other key changes concern non-traditional trademarks, coexistence agreements and letters of consent and certification trademarks.

IP Law reform: trademark cancellations based on bad faith
Becerril, Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 30 July 2018

The government recently approved a reform of the IP Law, which aims to harmonise it with international legislation. Some of the key amendments that will affect trademark litigation are the additions of Article 90(XXII), which establishes bad faith as a prohibition against obtaining a trademark registration, and Article 151(VI), which makes it possible to cancel a trademark registration obtained in bad faith.

Right to free speech versus online copyright protection: are radical measures needed?
Becerril, Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 25 June 2018

The Supreme Court of Justice recently considered the legal relationship and boundaries between the right to free speech and the enforcement of copyright on the Internet and established four non-obligatory criteria which reflect that the Internet is a fundamental instrument for exercising free speech. Ultimately, excluding in exceptional situations, general restrictions on a website's operation on the basis of copyright infringement will not be considered constitutionally valid.

Preliminary injunction measures and bonds
Becerril, Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 09 October 2017

In IP rights proceedings, the Mexican Institute of Industrial Property (IMPI) often requires IP rights holders to pay a bond which will cover the damages that could be caused to the infringer following the imposition of preliminary injunction measures. A federal circuit court recently issued a criterion which recognises the right of parties to request the IMPI to adjust the initial bond so that it provides complete coverage for the damages that the provisional measures will cause.

Plant rights: protecting treasured national assets
Becerril, Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 14 August 2017

As Mexico considers its dependence on the United States, it is timely to promote the protection of plant varieties developed in Mexico, as the proper protection of this type of asset will generate wealth, promote innovation and strengthen the economy. At present, 2,511 varieties of 63 species are registered under federal law. These figures are healthy; however, given the agricultural nature of the Mexican countryside, they should be much higher.

Procedures and strategies for anti-counterfeiting
Becerril, Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 26 June 2017

Depending on the matter involved, Mexico's IP laws – alone or in combination – provide rights holders with the necessary tools to take legal action against counterfeiting and seize illegal merchandise and obtain preliminary injunctions and seek appropriate remedies against infringement. A clever strategy will help rights holders to keep the costs of anti-counterfeiting initiatives down, while still ensuring that such activities are as effective as possible.

Is your unused trademark at risk of cancellation?
Becerril, Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 12 June 2017

The Industrial Property Law establishes that rights holders can use a mark once they have obtained an exclusive right to do so by registering it with the Mexican Institute of Industrial Property. However, to maintain its validity, the registered mark must be used consistently. The consequences that trademark owners face with regard to an unused mark are serious, as they include cancellation.

Protecting market-leading products from imitators
Becerril, Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 05 June 2017

Being a so-called 'market follower' is a common business strategy in today's consumption-based economy. Companies following this strategy imitate market leaders in a defined market or commercial sector in such a way that enables them to avoid direct confrontation and benefit from the leaders' innovation. While most countries' IP protection rules distinguish between what is and is not permitted with regard to imitation, in Mexico this distinction is unclear.

Keeping the record straight
Becerril, Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 15 May 2017

If the owner of a trademark, patent or design fails to notify the Mexican Institute of Industrial Property (IMPI) of a corporate change, legal consequences can arise. For example, if the owner of a trademark, patent or design does not notify the IMPI of a change of ownership, the new owner's right to defend its IP rights will be affected. Further, if the owner fails to notify the IMPI of a licensing agreement or security interest, the agreement will have no effect on third parties.

Electronic filing: modernising IMPI
Becerril, Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 24 April 2017

In the past 20 years, the Mexican Institute of Industrial Property (IMPI) has made it easier for IP owners to use online services. In March 2016 the biggest steps towards a serious change were taken – namely, the issuance of rules for electronic filing and the launch of the online patent and notification systems. However, there is still some way to go before the IMPI is completely paperless.

Protecting healthcare inventions and investments: challenges for patent regimes
Becerril, Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 07 November 2016

While innovation in life sciences is key, the efforts required to bring new drugs, devices and other healthcare technologies to market are increasingly burdensome. Accordingly, intellectual property plays a crucial role in protecting investments and incentivising healthcare innovation, although patent regimes often encounter difficulties with regard to patentable subject matter and the evaluation of inventiveness for new technologies.

New Mexican Institute of Industrial Property rule regarding execution of cancellation actions
Becerril, Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 13 June 2016

The Mexican Institute of Industrial Property recently adopted a new rule stipulating that if a rights holder does not file for review or appeal the cancellation of a trademark, registration of the pending trademark will be granted within 45 working days, despite the fact that the decision will still be subject to appeal. It is unclear what would happen if suspension of the newly registered trademark were not requested and the cancellation action were revoked.

Amendments to granted patents: a vital tool to strengthen claims
Becerril, Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 07 March 2016

In light of the changing global regulatory landscape, patent owners are increasingly seeking stronger patent protection, including for patents that are already in force. Rights holders should therefore be aware of the available post-grant amendment procedures and the type of changes to the granted patent that are permitted in each jurisdiction. Mexican law explicitly allows such amendments to correct errors or limit the extension of the claims.

Anti-counterfeiting in Mexico
Becerril, Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 29 June 2015

A legal framework comprising four separate laws governs counterfeiting in Mexico. These laws – alone or in combination – provide rights holders with the necessary tools to take legal action against counterfeiting and seize illegal merchandise, obtain preliminary injunctions and seek appropriate remedies against infringement.

New law changes IP management landscape for government-funded projects
Becerril, Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 03 November 2014

For many years, IP management of government-funded projects in Mexico was non-existent. Mexican law was silent regarding both the ownership of such projects and the agreements governing how grant money was spent. Nevertheless, recent changes in innovation policy have mandated changes in the management of such projects in order to prepare for future innovation opportunities.

Issues to consider regarding post-grant amendment of patent claims
Becerril, Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 26 August 2014

Increasingly, Mexican patents have a different (often broader) scope from their foreign equivalents due to opposition proceedings or post-grant reviews held abroad. This situation has led patentees to consider the post-grant amendment of the scope of such patents more often. However, patentees must consider certain issues when assessing the feasibility of amending the claims of a granted patent in Mexico.

IMPI sees increase in e-filings
Becerril, Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 19 May 2014

Taking heed of technological developments, the Mexican Institute of Industrial Property (IMPI) has made the Mexican IP protection system easier to use and more efficient by introducing online filing and search systems. Fortunately – for both the IMPI and system users – recent statistics on the online trademark application filing and design search systems are especially positive and are likely to improve further in the coming years.

Co-ownership in Mexico: navigating in the open innovation arena
Becerril, Coca & Becerril SC
  • Intellectual Property
  • Mexico
  • 17 February 2014

The increase in open innovation and the importance of collaboration in the business and scientific spheres have led to a growing need to deal with co-ownership. Some legal systems have clear co-ownership rules that are specific to IP rights. However, in Mexico, intellectual property is dealt with under the general rules applicable to all types of property, meaning that at times the provisions are not as clear as they could be.

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