Protecting and enforcing design rights: Mexico
The Mexican Industrial Property Law 1991 (modified in 1994, 1997 and 2018) regulates industrial designs in Mexico. The protection granted to an industrial design application is a registration valid for five years from the filing date of the application, which can be renewed four times up to a maximum 25 years’ protection. The Industrial Property Law regulations provide prosecution rules for industrial designs in Mexico. The Mexican Institute of Industrial Property (IMPI) is the government office in charge of evaluating and granting industrial design registrations and a decentralised body of the Ministry of Economy.
Mexico is part of the Paris Convention for the Protection of Industrial Property and the Locarno Agreement that establishes an International Classification for Industrial Designs. On 6 September 2019 the Mexican Senate approved the accession of Mexico to the Geneva Act 1999 of the Hague Agreement Concerning the International Registration of Industrial Designs. In order to put an international treaty in force in Mexico, a signature from the executive branch of the government will be necessary. The signature is imminent, since Mexico’s accession to the Hague Agreement was a requirement of the recently ratified trilateral agreement between the United States, Mexico and Canada.
Unregistered and registered designs
Mexican legislation contemplates protection only for registered industrial designs; the unregistered design protection available in other jurisdictions is not available in Mexico.
The conferred right for a Mexican industrial design is the exclusive right of exploitation of the registered design, including the right to prevent others from manufacturing, using, selling, offering for sale or importing the registered product without consent or the appropriate licence.
The Industrial Property Law differentiates between the two-dimensional (2D) and three-dimensional (3D) industrial designs having two categories of design:
- industrial drawings are defined as 2D industrial designs, which are any combination of shapes, lines or colours incorporated in an industrial product for ornamentation purposes and which give it a specific appearance of its own; and
- industrial models are defined as 3D industrial designs constituted by any 3D shape that serves as a model or pattern for the manufacture of an industrial product, giving it a special appearance that does not involve any technical effects.
The first requirement is to file an industrial design application before IMPI. The application writ must state:
- the name, address and nationality of the applicants;
- the name and address of the designers; and
- the title of the design (eg, an industrial drawing of a pattern for a purse, or industrial model of a mobile phone).
If a priority application is to be claimed, it is necessary to state at filing:
- the date of the Mexican industrial design application;
- the country of the prior application; and
- the date of the first deposit.
Subsequently, within three months of the filing date, it is necessary to state the serial number of the priority application and submit a copy of the priority application as filed and duly certified by the deposit office. The copy must be accompanied with its corresponding Spanish translation.
If the applicant is a different person than the designer, it is necessary to demonstrate the applicant’s entitlement. An assignment of rights is the usual document required to comply with this provision. It could be a specific assignment for the Mexican application or a worldwide assignment executed for the subject design. It is also possible to demonstrate the applicant’s entitlement with an employment contract or succession resolution. The document that demonstrates the applicant’s entitlement should be dated before the filing date of the application in order to secure that IMPI will consider that the applicant had right to file the application on the filing date.
The Industrial Property Law allows the possibility of filing and prosecuting the application through a proxy. In this case, it is necessary to file a power of attorney granting the corresponding faculties by the applicant, or a representative in cases of legal entities quoting the instrument by which the faculties to grant powers of attorney were conferred. According to the statute, the power of attorney should be executed before two witnesses.
Small entities, universities and independent designers may claim discounts on some of the official fees with the proviso that small entities should not have a licence or assignment agreement to large entities. To claim these rights, it is necessary to make a single declaration that the applicant is a small entity. If necessary, this statement could be updated during the prosecution or validity of the right.
As in many other jurisdictions in which a substantive examination is carried out by the corresponding office before granting the right, a Mexican industrial design should contain a description of the drawings, which usually defines the different views of the subject design. Nevertheless, the description may also contain other considerations to understand the pursued design (eg, the meaning of the illustrative purposes of the features on broken lines). In this regard, according to the Mexican legislation, the claim for an industrial design application must recite “an industrial model/drawing of a (the product) as described and illustrated”. Thus, the content of the description is also considered within the scope of the granted protection.
Regarding the proper drawings to claim an industrial design, the Industrial Property Law allows the submission of a graphic or photographic reproduction of the design. In current practice, most of the applications are filed with regular computer-created drawings; however, if the specific features of the design cannot be illustrated with that kind of drawing, it is possible and desirable to file photographs.
The Industrial Property Law does not define the minimum number of views to be incorporated in the drawings. Thus, applicants may opt for the number of views required to duly disclose the claimed design.
Further, Article 31 of the Industrial Property Law establishes the fundamental requirements to obtain an industrial design register: “Art. 31. Industrial designs that are new and susceptible of industrial application shall be eligible for registration… The protection conferred on an industrial design shall not cover those elements or features that have been dictated solely by technical considerations or by the performance of a technical function.”
Therefore, an industrial design application is evaluated in a formal and substantive way by IMPI before granting a register. According to the evaluation procedures, IMPI may issue one formal and two substantive office actions in order to resolve the allowance of an industrial design application.
Novelty: The design must comply with the novelty requirement. It should differ significantly from known designs or combinations of known features of designs. The prior art is established from the filing date of the application or from the recognised priority date.
The Industrial Property Law excludes from the prior art the disclosure of a design when, within 12 months prior to the filing date of the application, or where applicable prior to the recognised priority date, the designer or his or her successor in title has made the design known by any means of communication, by putting it into practice or displaying it at a national or international exhibition.
Industrial applicability: The second basic requirement to obtain registration is to demonstrate that the industrial design is susceptible to industrial applicability.
For definition, industrial models always comply with this specific requirement. However, for industrial drawings it is possible to obtain rejections if the combination of shapes, lines or colours is not explicitly incorporated into an industrial product. Thus, the practice is to state on the application that the combination will be incorporated in the specific related product (eg, a pattern for a purse).
Prohibition against protection for designs with all features dictated solely by function: The spirit of conferring a right under the industrial design figure is to protect the aesthetic characteristics of the design that give the industrial model or drawing a specific appearance of its own. Further, and without the presence of any aesthetic subject matter, protection for solely technical subject matter may be pursued through the Mexican patent (known as a ‘utility patent’ in the United States or simply a ‘patent’ in other jurisdictions) or the utility model systems.
Unity on designs
According to the Industrial Property Law, an industrial design application may contain a single design or a group of designs so related to each other that they constitute a single design concept. Therefore, it is possible to file multiple embodiments of a design in one application.
During the substantive examination of the application, the unity is evaluated while considering the specific novel design features shared among the embodiments (ie, whether they constitute the required single design concept).
If the result of the official evaluation is a lack of unity between embodiments or groups of embodiments, the application could be divided into the necessary number of applications or the non-fundamental embodiments may be withdrawn. Likewise, the division of the application may be voluntarily requested until the issuance of the final resolution of the examination (ie, before the issuance of a notice of allowance or the final refusal of the application).
E-filing of industrial design applications
IMPI has two options for filing an industrial design application: the traditional paper system and the e-filing system.
One benefit of the e-filing system is that IMPI accepts digital copies of the documents that are usually required in the original, namely:
- power of attorney;
- assignment of rights; and
- a certified copy of the priority application.
Likewise, the formal examination of the applications is expedited. In April 2017 IMPI launched the latest version of the e-filing system. One restriction of the current version is that once an application has been filed electronically, all the prosecution (eg, office actions, responses and the issuance of the registration) must continue electronically.
A new provision of the 2018 Industrial Property Law reform is the publication of pending industrial design applications, which takes place as soon as possible after the conclusion of the formal examination. The Industrial Property Law does not foresee the possibility to delay the publication of an application.
Further, according to the new provisions, the registrations granted before the entry into force of the 2018 reform remain valid until their original 15-year life term expires, subject to maintenance payments as applicable before the law amendment. After the conclusion of the original life term, these registrations have the possibility of adopting the new law provisions in order to be renewed for up to two additional five-year protection periods.
For access to additional protection, it is necessary to:
- file a written petition stating the will of the title holder to adopt the new law provisions before the original expiration of the registration;
- file the first renewal petition for the design registration during the six months prior to the original expiration of 15 years or within the six months following the expiration date; and
- file the second renewal petition for the design registration during the six months prior to the expiration of the renewed five-year period or within the six months following the expiration date of the first renewal.
The official cost for filing, prosecuting and granting an industrial design application in Mexico is approximately US$460, considering that no office actions were issued during examination and that the application contained only one embodiment. The extra cost per embodiment is US$4 and the cost for responding to an office action is US$37. The cost for renewing a design registration for five additional years of protection is US$350.
Opposition and enforcement
Mexican legislation does not contemplate an opposition system for industrial designs. As for the enforcement of an industrial design, IMPI has the faculties to determine the infraction of a registered industrial design. In this regard, Article 213, Section XV of the Industrial Property law states that “reproducing or imitating industrial designs protected by a register without the consent of the right holder is an infraction”. Therefore, the inspiration of a new product on a registered design could be considered infraction if the imitation is proved. The timeframe for determining any infraction will vary case by case, but a good scenario is approximately one year.
Ownership changes and right transfers
All changes and transfers should be recorded with IMPI in order to be effective against third parties. The basic requirement is to file a copy of the instrument demonstrating the ownership change, right transfer or licence duly notarised and legalised by apostille. This document must be filed with its Spanish translation.
As for the related rights, according to Mexican legislation the protection for industrial designs may coexist with copyright and trademark protection. Therefore, if the development is to be protected through any of the additional options in view of its merits, it is advisable to first file the design application in order to avoid the possibility that a publication of the trademark or copyright could affect the novelty of the industrial design.