Mexico deposited its instrument of accession to the Geneva Act with WIPO on 2 March 2020 and the country became the 64th member of the 1999 Geneva Act and 74th member of The Hague Union. This means that from June 6 applicants can designate Mexico in an international design application filed with WIPO or the home office, as Victor Garrido explains.
Preparing to ratify
Before ratification, a lot of work had to be done. Mexico acceded to the Geneva Act by ratifying two important international agreements: the CPTPP (Comprehensive and Progressive Agreement for the Trans-Pacific Partnership) in June 2018, and the USMCA (United States-Mexico-Canada Agreement) in 2019/20.
In parallel to finalizing these agreements, Mexico started to adapt its domestic law to incorporate the Geneva Act provisions. On 27 April 2018, an amendment to the law introduced several changes to the handling of industrial designs, including:
- publication of industrial design applications, which formerly were published only at grant;
- the definition of design novelty in terms of “independent creation” requiring that a design must be different to a “significant degree” from known designs or a combination of features of known designs;
- the requirement to indicate the specific product to which a design is intended to be applied, instead of merely indicating a wide type of products;
- modifying the term of protection of industrial design registrations from a non-extendable 15-year term to a renewable five-year term up to 25 years.
Additionally, a bill for enacting a new IP law is being discussed in Congress at the moment. If passed, the new law will probably maintain all or most of the provisions introduced in the 2018 amendment and consider further aspects concerning the Geneva Act and associated rules and regulations.
When it comes to the practicalities, Mexico is requesting an Individual Fee for designation and renewal. It is important to keep in mind that the designation fee falls due in two parts – the first one at filing and the second one at acceptance.
The current Mexican law does not provide for deferment of publication. It is not expected that the law to be enacted will change this, despite the fact that deferment of publication is one of the most notable features of the Hague System.
Consequently, applicants intending to apply for deferment should consider this before designating Mexico in their international applications.
Mexico requires that an industrial design application refers to a single design or to a group of designs related to each other in such a manner that they conform a single design concept. This means that the examiner may request, through a refusal, that an international application is divided in order to comply with the unity requirement.
Currently, the criteria for evaluating this aspect is quite strict and gives little room for the inclusion of a plurality of designs in a single application. The new IP law will hopefully provide some guidance.
The maximum duration of an industrial design registration is 25 years counted from the international registration date.
Mexico requires that any design application be filed in the name of the design creator. However, a statement that the person identified as the applicant is the creator, or that the creator has assigned the application to the person identified as applicant, is acceptable to fulfil the special requirements.
Industrial design applications are subject to examination by the Mexican Office. The examination will include the following requirements: unity, novelty, clarity, correct design naming and valid claimed priority (if any).
If a refusal is issued, it must be notified to WIPO within 12 months from the publication date of the international registration. WIPO will inform the applicant of the refusal without delay and the response to the refusal must be submitted directly at the Mexican Office within two months with the possibility to extend for another two months. The applicant will need to appoint a Mexican representative to file the response.
With each new member, the Hague System becomes more attractive to brand owners, and Mexican companies will be sure to use the system when it fits with their business needs.
By Victor Garrido, Head of Patents at Dumont, a member of MARQUES.