Patents, trade marks, copyright and designs in Mexico: overview

A guide to intellectual property law in Mexico. The Main IPRs Q&A gives an overview of the protection and enforcement of the following IPRs: patents, trade marks, registered designs, unregistered designs, copyright and confidential information.

To compare answers across multiple jurisdictions, visit the Patents, trade marks and designs Country Q&A tool.

This Q&A is part of the multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg.

Roberto Arochi, Arochi, Marroquín & Lindner, SC
Contents

Patents

1. What are the legal requirements to obtain a patent?

The legal requirements to obtain a patent are:

  • Novelty. Mexican law requires absolute novelty. The process or product must represent a wholly new way of transforming matter or energy existing in nature. The invention must not be part of the state of the art in Mexico or abroad. The Industrial Property Law includes a grace period of 12 months preceding the date of the patent application in which the invention may be divulged or commercially exploited by the inventor.

  • Non-obviousness. The invention must not be obvious or capable of deduction from the state of the art by an expert.

  • Utility. The invention must be capable of being produced or used in an area of economic activity.

 
2. What categories are excluded from patent protection?

The following are excluded from patent protection:

  • Essential biological processes for the production of plants and animals. (Processes involving genetic engineering and biotechnology may be patentable.)

  • Biological and genetic material found in nature. (Genetically engineered material may be patentable.)

  • Animal breeds. (Genetically engineered animals may be patentable.)

  • The human body and the living matter constituting it.

  • Plant varieties. (These may be protected under the Federal Law on Plant Varieties.)

  • Theoretical or scientific principles.

  • Discoveries of natural phenomena, even if previously unknown.

  • Methods, schemes, plans and rules to carry out games or businesses, and mathematical models.

  • Computer programs, methods of presenting information and artistic or literary works. (These may be protected under the Federal Copyright Law.)

  • Methods of surgical, therapeutic or diagnostic treatment.

  • Combinations of known inventions or variations of these, unless combined in such a manner that the inventions cannot function separately, or modified to make possible a use that is not obvious to an expert.

 
3. Which authority registers patents? Does its website provide guidance on the application procedure?

The Mexican Institute of Industrial Property (Instituto Mexicano de la Propiedad Industrial) (IMPI) registers patents. Its website provides guidance on the application procedure. However, the guidance is only available in Spanish.

To obtain a filing date, the applicant must file an application, in Spanish, with the Mexican Institute of Industrial Property, containing the following:

  • The name, nationality and domicile of the inventor or inventors and the applicant.

  • The name or title of the invention.

  • If foreign priority is claimed, the date of the original application and country of origin.

  • A description of the invention and a receipt for the deposit of biological material, if applicable.

  • Provisional or definitive drawings.

  • The claims.

  • An abstract of the description of the invention.

  • The appropriate government fees.

In addition, a complete application must contain:

  • Any documents of assignment between the inventors and their successors or assigns. (These must be filed within two months of the application filing date, although a two-month extension is possible.)

  • A power of attorney, if the application is filed by the inventor's legal representative. (This must be filed within two months of the application filing date, although a two-month extension is possible.)

  • Definitive drawings, if the drawings submitted with the application are provisional in nature. (These must be filed within two months of the application filing date.)

  • A certified copy of the foreign application on which the priority claim (if any) is based. (This must be filed within three months of the application filing date.)

If the application is presented in Mexico through the Patent Cooperation Treaty, the following must be submitted, in Spanish:

  • A copy of the World Intellectual Property Organization (WIPO) publication with the international search report.

  • A copy of the international application, with formal drawings.

  • Copies of any amendments to the international application.

 
4. On what grounds and when can third parties oppose a patent application?

No opposition proceedings are available under the Industrial Property Law. However, since June 2010, any third party can file observations to a patent application.

 
5. When does patent protection start and how long does it last?

A patent is valid for 20 years from the application filing date and is not renewable.

 
6. On what grounds can a patent infringement action be made?

Patents are enforced through administrative infringement proceedings before IMPI. It is an administrative infringement to (Article 213, Industrial Property Law):

  • Manufacture or develop goods covered by a patent or by a utility model or industrial design registration without the consent of its owner or without the appropriate licence.

  • Offer for sale or bring into circulation goods covered by a patent or by a utility model or industrial design registration in the knowledge that they have been manufactured or developed without the consent of the owner of the patent or registration or without the appropriate licence.

  • Use patented processes without the consent of the owner of the patent or without the appropriate licence.

  • Offer for sale or bring into circulation goods that are the result of the use of patented processes in the knowledge that they have been used without the consent of the owner of the patent or of the person who holds an exploitation licence.

  • Reproduce or imitate industrial designs protected by registration without the consent of its owner or without the appropriate licence.

  • Reproduce a protected layout design without the authorisation of the owner of the registration in its entirety, or any part that is considered original in itself, by incorporation in an integrated circuit or in another way.

  • Import, sell or distribute any of the following in violation of the provisions of the Industrial Property Law, without the authorisation of the owner of the registration, in any form for commercial purposes:

    • a protected layout design;

    • an integrated circuit incorporating a protected layout design;

    • a product incorporating an integrated circuit that itself incorporates an unlawfully reproduced protected layout design.

  • Use patent markings on unpatented products.

All evidence and arguments must be filed with the initial complaint. The Divisional Director of Patents of IMPI has the legal capacity to conduct a technical analysis of the alleged infringement. Although presentation of expert opinion evidence in the relevant technical area is permissible, the technical opinion of IMPI is binding.

 
7. Which courts deal with patent infringement actions?

The following deal with patent infringement actions:

  • IMPI.

  • The Federal Court of Fiscal and Administrative Justice.

  • District judges.

  • Circuit courts.

 
8. What are the defences to patent infringement actions?

The defences are:

  • A patent annulment action.

  • A patent cancellation action.

 
9. What are the remedies in patent infringement actions?

The remedies are:

  • A fine of up to 20,000 days of the general minimum salary payable in the Federal District (currently about US$85,000).

  • An additional fine of up to 500 days of the general minimum salary payable in the Federal District for each day that the infringement persists (currently about US$2,100).

  • Temporary closure of the business for up to 90 days.

  • Permanent closure of the business.

  • Administrative detention for up to 36 hours.

As at 1 March 2012, US$1 was about MXN13.1

 
10. Is there a fast-track and/or a small-claims procedure for patent infringement actions?

There is no answer content for this Question, as it is a new addition to the template that did not exist at the time of writing.

 

Trade marks

11. What are the legal requirements to obtain a trade mark?

A mark is understood as being any visible sign that distinguishes products or services from others of the same type or category on the market.

The following signs may constitute marks:

  • Visible names and figures that are sufficiently distinctive and capable of identifying the products or services to which they are applied, or are intended to be applied, compared with others of the same type or category.

  • Three-dimensional shapes.

  • Trade names and company or business names, provided that they are not covered by the following bullet point.

  • The proper name of a natural person, provided that it is not the same as a registered mark or published trade name.

 
12. Is it necessary or advisable to register trade marks?

Industrialists, traders or service providers may use marks in industry or trade or in the services that they provide. However, the right to their exclusive use is obtained through their registration with IMPI.

 
13. Which authority registers trade marks? Does its website provide guidance on the application procedure?

IMPI registers trade marks. Its website provides guidance on the application procedure. However, the guidance is only available in Spanish.

An application for trade mark registration is filed with IMPI. The application must contain the following:

  • The name of the applicant.

  • The applicant's nationality and domicile.

  • A depiction of the mark.

  • An indication as to whether the mark is nominative, non-nominative, three-dimensional or a combination of these.

  • A description of the goods or services. (The application may only cover goods or services in a single international class. Multiple applications must be filed to cover multiple classes of goods and services.)

  • The date of first use in Mexico, if the mark is in use, or an indication that the mark is not in use.

  • If priority is claimed under an international treaty, the date of the original application and country of origin. (The certified priority document must be filed within three months of the application date.)

  • A power of attorney, if the application is filed through a representative. (Filing of the power of attorney with the application is advisable, but not required.)

  • The appropriate fee.

IMPI conducts a two-part examination of the mark:

  • As to form. To ensure that the applicant has completely and accurately presented all necessary information and documentation, and paid the requisite fees.

  • Substantive. To determine whether the mark is registrable.

 
14. On what grounds can the regulatory authority refuse to register a trade mark?

IMPI can refuse to register on the following grounds:

  • Marks that are identical or confusingly similar to previously registered marks.

  • Marks that are confusingly similar to, liable to be associated with, or which constitute an appropriation liable to discredit a well-known registered or unregistered mark.

  • Generic terms.

  • Marks that are merely descriptive of the goods or services. (The notion of "acquired distinctiveness" does not exist under Mexican law.)

  • Three-dimensional shapes that are public property or are in common use, lack originality, or are determined by the function of the product.

  • Isolated letters, digits or colours.

  • Sounds, scents or other marks that are not visually perceptible.

  • Animated or changing names, figures or shapes.

  • Geographically descriptive or misdescriptive marks.

  • Marks that constitute false indications as to the nature, components or qualities of the goods or services.

  • Marks that include the coats of arms or emblems of any country, state, municipality or other political division.

  • Marks that are offensive to moral values or customs.

 
15. On what grounds and when can third parties oppose a trade mark application?

There are no opposition proceedings under the Industrial Property Law.

 
16. When does trade mark protection start and how long does it last?

A registration is valid for ten years from the date of the application and is renewable indefinitely on the same terms. The registrant must submit a sworn declaration stating that the mark is being used in Mexico and that use has not been suspended for more than three consecutive years.

 
17. On what grounds can a trade mark infringement action be made?

Article 213 of the Industrial Property Law lists various trade mark-related violations which constitute administrative infringement, including:

  • Using a mark confusingly similar to another, registered mark to protect products or services identical or similar to those protected by the registered mark.

  • Using a registered mark or one confusingly similar to it without the consent of its owner as an element of a trade name or business name, or vice versa, provided that these trade names or business names are related to establishments working with the products or services protected by the mark.

  • Using a mark previously registered or confusingly similar to it as a trade name or business name or part of such a name by a natural person or legal entity whose activity is the production, importation or marketing of goods or services identical or similar to those to which the registered mark is applied.

  • Using a registered mark without the consent of its owner or without the appropriate licence on goods or services identical or similar to those to which the mark is applied.

  • Offering for sale or bringing into circulation goods identical or similar to those to which a registered mark is applied in the knowledge that the mark has been used on those goods without the consent of its owner.

  • Offering for sale or bringing into circulation goods to which a registered mark is applied and which have been altered.

  • Offering for sale or bringing into circulation goods to which a registered mark is applied after having partially or totally altered, replaced or deleted the mark.

  • Placing products on sale or in circulation or offering services with the indication that they are protected by a trade mark registration when they are not.

  • In addition, Article 213 contains general prohibitions against unfair competition which may be used to protect unregistered trade marks, trade names and trade dress.

  • Engaging in acts contrary to proper practice and custom in industry, commerce and services which amount to unfair competition and which relate to IP.

  • Using, within the geographical area of the effective clientele, a trade name that is identical or confusingly similar to another already being used by a third party to protect an industrial, commercial or service establishment in the same or a similar field.

  • Performing, in the course of industrial activities or trade, acts that confuse, mislead or deceive the public by causing it wrongly to believe or assume one of the following:

    • that a relation or association exists between a given establishment and that of a third party;

    • that products are manufactured according to specifications, licences or authorisations from a third party;

    • that services are rendered or products sold according to authorisations, licences or specifications from a third party;

    • that the product concerned comes from a territory, region or locality different from the true place of origin, in such a way as to mislead the public as to the geographical origin of the product.

  • Pursuing or achieving the aim of denigrating the products or services, the industrial or commercial activity or the establishment of another party. (This provision does not apply to fair comparative advertising.)

  • Using a trade name or a name confusingly similar to it without the consent of its owner or without the appropriate licence to distinguish an industrial, commercial or service establishment in the same or a similar field.

 
18. Which courts deal with trade mark infringement actions?

The following deal with trade mark infringement actions:

  • IMPI.

  • The Federal Court of Fiscal and Administrative Justice.

  • District judges.

  • Circuit courts.

 
19. What are the defences to trade mark infringement actions?
  • A trade mark annulment action.

  • A trade mark cancellation action.

 
20. What are the remedies in trade mark infringement actions?

If IMPI encounters irrefutable proof of infringement in the course of its inspection, it can confiscate:

  • Any equipment, specifications or plans used in the perpetration of the defendant's infringing acts.

  • Any documents from which elements of proof may be inferred.

  • Any goods and any other material relating to the infringement.

In addition, IMPI may impose the following sanctions in cases of administrative infringement:

  • A fine of up to 20,000 days of the general minimum salary payable in the Federal District.

  • An additional fine of up to the amount of 500 days of the general minimum salary payable in the Federal District for each day that the infringement persists.

  • Temporary closure of the defendant's business for up to 90 days.

  • Permanent closure of the defendant's business.

  • Administrative detention of the defendant for up to 36 hours.

In determining the appropriate sanction in each case, IMPI is required to consider the:

  • Intentional character of the act or omission constituting the infringement.

  • Economic circumstances of the infringer.

  • Seriousness of the infringement.

In the event of a second or subsequent offence, the fines previously imposed by IMPI are doubled, up to three times the maximum fines stated above.

 
21. Is there a fast-track and/or a small-claims procedure for trade mark infringement actions?

There is no answer content for this Question, as it is a new addition to the template that did not exist at the time of writing.

 

Copyright

22. What are the legal requirements to obtain copyright protection?

The following legal requirements are:

  • Originality. Works must be original creations.

  • Fixation. Copyright protection vests from the moment the work is fixed in a material form.

  • Expression. Works must be susceptible of disclosure or reproduction in any form or manner.

 
23. Can copyright be registered?

The process for registering copyright is relatively simple and inexpensive. The application must be filed with the National Copyright Institute (Instituto Nacional del Derecho de Autor) (INDA), and must include:

  • The name, nationality and domicile of the author.

  • The name or title of the work.

  • Foreign priority information, if applicable.

  • The classification of the work, as described above.

  • A power of attorney, if the application is filed through a legal representative.

  • The appropriate government fee.

  • A copy of the work.

Works deposited with INDA are generally available for public inspection. Computer programs, publishing contracts and unpublished works are only disclosed with the permission of the author or by court order.

 
24. When does copyright protection start and how long does it last?

The term of protection is the life of the author plus 100 years. For works with multiple creators, protection extends for 100 years after the death of the last surviving author. Non-original works such as databases, where the protection does not extend to the data or material contained therein, are protected for five years. Neighbouring rights are protected for a term of 50 years from the date of first publication or fixation, except for broadcasts, which are protected for a term of 25 years.

 
25. On what grounds can a copyright infringement action be made?

The Federal Copyright Law distinguishes between acts of "copyright infringement" (Article 229) and acts of "trade-related infringement" (Article 231).

The following acts, among others, constitute copyright infringement:

  • The conclusion by a publisher, impresario, producer, employer, broadcasting organisation or licensee of a contract for the purpose of transferring copyright in a manner contrary to law.

  • Violation by the licensee of the terms of the compulsory licence accorded under the Federal Copyright Law.

  • Failure to insert the required copyright notice in a published work.

  • Publication of a work without a mention on the copies of the work of the name of the author, translator, compiler, adapter or arranger.

  • Publication of a work in a manner that damages the reputation of the author, translator, compiler, arranger or adapter.

  • Fraudulent use in a work of a title that causes confusion with a work published previously.

The following acts, among others, constitute trade-related infringement:

  • Communication to the public or public use of a protected work by any means and in any form without the express prior authorisation of the author, his lawful heirs or the owner of the author's economic rights.

  • Use of the likeness of a person without his permission or that of his successors-in-title.

  • Production, manufacture, stocking, distribution, transportation or marketing of unlawful copies of protected works.

  • Offering for sale, stocking, transporting or distributing protected works that have been distorted, altered or mutilated without the permission of the owner of the copyright.

  • Import, sale, rental or any act that affords possession of a device or system, the purpose of which is to deactivate electronic devices for the protection of a computer program.

  • Retransmission, fixation, reproduction and dissemination to the public, without due authorisation, of the broadcasts of broadcasting organisations.

  • Use, reproduction or exploitation of a work subject to a reserved rights certificate without the consent of the owner.

  • Use of exploitation of a name, title or denomination or physical or psychological characteristics or operational characteristics in such a way as to mislead or cause confusion.

 
26. Which courts deal with copyright infringement actions?

The following deal with copyright infringement actions:

  • IMPI.

  • The Federal Court of Fiscal and Administrative Justice.

  • District judges.

  • Circuit courts.

 
27. What are the defences to copyright infringement actions?

A copyright registration annulment action.

 
28. What are the remedies in copyright infringement actions?

Administrative procedures in copyright cases before IMPI are similar to those in trade mark and patent cases. IMPI is empowered to:

  • Inspect the premises of the alleged infringer.

  • Seize evidence and infringing goods.

  • Temporarily or permanently close the infringer's business.

  • Order the administrative detention of the infringer.

In addition, IMPI is empowered to impose fines ranging from 500 to 15,000 times the minimum daily wage in the Federal District (currently about US$2,100 to US$64,000), depending on the nature and severity of the offence. An additional fine of 500 times the minimum daily wage may be imposed for each day the violation persists.

Once an administrative declaration of infringement is obtained, a party can bring a civil action for damages and losses. The minimum award is 40% of the retail price of the infringing works.

 
29. Is there a fast-track and/or a small-claims procedure for copyright infringement actions?

There is no answer content for this Question, as it is a new addition to the template that did not exist at the time of writing.

 

Registered designs

30. What are the legal conditions to obtain a registered design right?

Industrial designs that are new and industrially applicable are eligible for registration. Designs that are created independently of known designs or combinations of known features of designs, and differ significantly from these, are considered new.

The protection conferred on an industrial design does not cover those elements or features that were dictated solely by technical considerations or by the performance of a technical function, and which do not embody any arbitrary contribution on the part of the designer. Further protection does not cover those elements or features whose exact reproduction was necessary to allow the product incorporating the design to be mechanically assembled or connected to another product of which it constitutes an integral part or component. This limitation does not apply to goods in which the design element lies in a shape or form intended to permit the multiple assembly or connection of the goods or their interconnection within a modular system.

An industrial design is not protected where its appearance consists solely of the elements or features referred to in the previous paragraph.

 
31. Which authority registers designs?

IMPI registers patents.

The following must be enclosed with applications for the registration of industrial designs:

  • A graphic or photographic reproduction of the design concerned.

  • An indication of the type of product for which the design will be used.

The description submitted in the application must refer briefly to the graphic or photographic reproduction of the design, with a clear indication of the angle from which the illustration is seen.

 
32. On what grounds and when can third parties oppose a registered design application?

There are no opposition proceedings for third parties concerning designs.

 
33. When does registered design protection start and how long does it last?

The registration of industrial designs has a non-renewable term of 15 years, starting from the filing date of the application, subject to the payment of the relevant fee.

 
34. On what grounds can a registered design infringement action be made?

The following constitute administrative infringements:

  • Manufacturing or developing goods protected by an industrial design registration, without the consent of its owner or without the appropriate licence.

  • Offering for sale or bringing into circulation goods protected by an industrial design registration, in the knowledge that they have been manufactured or developed without the consent of the owner of the patent or registration or without the appropriate licence.

  • Reproducing or imitating industrial designs protected by registration without the consent of its owner or without the appropriate licence.

 
35. Which courts deal with registered design infringement actions?

The following deal with registered design infringement actions:

  • IMPI.

  • The Federal Court of Fiscal and Administrative Justice.

  • District judges.

  • Circuit courts.

 
36. What are the defences to registered design infringement actions?

The main defence is the design annulment action.

 
37. What are the remedies in registered design infringement actions?

Administrative infringements of the Industrial Property Law or other provisions derived from it are punished as follows:

  • A fine of up to 20,000 days of the general minimum salary payable in the Federal District.

  • An additional fine of up to 500 days of the general minimum salary payable in the Federal District for each day that the infringement persists.

  • Temporary closure of the business for up to 90 days.

  • Permanent closure of the business.

  • Administrative detention for up to 36 hours.

 
38. Is there a fast-track and/or a small-claims procedure for registered design infringement actions?

There is no answer content for this Question, as it is a new addition to the template that did not exist at the time of writing.

 

Unregistered designs

39. What are the legal conditions for unregistered design rights to arise?

Unregistered design rights do not arise in Mexico.

 
40. When does unregistered design protection start and how long does it last?
 
41. On what grounds can an unregistered design infringement action be made?
 
42. What are the defences to unregistered design infringement actions?
 
43. What are the remedies in unregistered design infringement actions?
 

Confidential information

44. What are the legal conditions for rights in confidential information to arise?

A trade secret is any information kept by a natural or legal person that:

  • Is confidential in character.

  • Relates to the nature, characteristics or purposes of products, to production methods or processes, or to ways or means of distributing or marketing products or rendering services.

  • Is associated with securing or maintaining a competitive advantage.

  • Is subject to sufficient systems or means for preserving confidentiality.

  • Is maintained in documents, electronic or magnetic media, optical discs, microfilm, film or other similar material.

 
45. On what grounds can an action for unauthorised use of confidential information be made?

A party is liable for payment of damages resulting from the disclosure of a trade secret if that party obtains the trade secret (Article 86, Industrial Property Law):

  • Through work, employment, position, practice of his profession or in the conduct of business, provided he has been warned to maintain the secret.

  • By engaging an employee who is working for or has worked for another person and has access to the trade secret, for the purpose of obtaining the trade secret.

  • By any other unlawful means.

The following are criminal offences (Article 223, Industrial Property Law):

  • Revealing to a third party a trade secret that was known by virtue of employment, position, responsibility, the practice of a profession or business relations, or as a result of the grant of a licence for its use, without the consent of the person keeping the trade secret, having been advised of its confidentiality, for the purpose of procuring an economic benefit for oneself or for the third party, or for the purpose of doing harm to the person keeping the secret.

  • Appropriating a trade secret without the right to do so and without the consent of the person who keeps it or its authorised user, to use it or reveal it to a third party for the purpose of procuring an economic benefit for oneself or for the third party, or for the purpose of doing harm to the person keeping the trade secret or to its authorised user.

  • Using information constituting a trade secret that is known by virtue of employment, position, responsibility, the practice of a profession or business relations, without the consent of the person keeping it or its authorised user, or that has been revealed to one by a third party, in the knowledge that the third party was so acting without the consent of the person keeping the trade secret or its authorised user, for the purpose of procuring an economic benefit or doing harm to the person keeping the trade secret or its authorised user.

 
46. Which courts deal with actions for unauthorised use of confidential information?

The following deal with actions for unauthorised use:

  • Federal Criminal Courts.

  • Federal Circuit Courts.

 
47. What are the defences to actions for unauthorised use of confidential information?

Information will not be considered a trade secret if it becomes public, is obvious to an expert, or must be disclosed by operation of law or pursuant to a court order, except as follows:

  • Information disclosed to a legal authority for the purpose of obtaining a licence, permit, authorisation, registration, and so on.

  • Information disclosed in a judicial or administrative proceeding. The authority will adopt measures necessary to maintain the secret.

  • Information which must be disclosed to establish the safety of pharmaceutical products or agricultural chemicals is protected under specific international treaties.

 
48. What are the remedies in actions for unauthorised use of confidential information?

The following remedies apply:

  • Imprisonment for two to six years.

  • A fine corresponding to 100 to 10,000 days of the general minimum wage payable in the Federal District (about US$425 to US$42,500).

 
49. Is there a fast-track and/or a small-claims procedure for actions for unauthorised use of confidential information?

There is no answer content for this Question, as it is a new addition to the template that did not exist at the time of writing.

 

The regulatory authority

Mexican Institute of Industrial Property (Instituto Mexicano de la Propiedad Industrial) (IMPI)

W www.impi.gob.mx

Main areas of responsibility. Trade mark registration; patent registration; design registration; appellations of origin granting; enforcement of IPRs.

Guidance on application procedure. There is no guidance on application procedure available in English.


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