On March 13, 2018, the Official Journal of the Federation published several amendments to the Industrial Property Law. The amendments refer to substantive and procedural issues in the fields of patents, industrial designs, utility models and geographical indications.

The most important changes were the introduction of a special statutory protection for geographical indications and amendments to the statutory provisions about industrial designs, including the term of protection.

The amendment to the statute became effective on April 27, 2018.

In this second part, I will comment on the amendments affecting the protection of geographical indications.

Geographic indications 

The Mexican statute now provides a special protection of geographical indications through a registration issued by the Instituto Mexicano de la Propiedad Industrial or Mexican Patent and Trademark Office (MPTO). A geographical indication is the name of a geographical zone or a name that includes such geographical name or a reference to a geographical zone, that identifies a product as originated from such a zone when its quality, reputation or other characteristic is mainly caused because of its geographic origin.

Mexican law has provided protection for Appeals of Origin for many years. Geographical Indications and Appeals of Origin share some characteristics: they are both geographical names used to identify a product originated there. However, in the case of Appeals of Origin, all the characteristics of the goods that use them are consequence of their geographic origin. Geographical Indications are more flexible about the link to the geographical origin of the goods; if juts one of the characteristics of a product is essentially a consequence of the geographic origin, that is enough to justify the protection of the Geographic Indication.

I have to clarify that Mexico has adopted the use of Appeals of Origin in a very liberal way. For example, “Tequila”, perhaps Mexico’s best known appeal of origin; there are some facts that might call the reader’s attention: Tequila is the name of a town and a municipio or region in the western state of Jalisco known for the production of the blue agave spirit named “tequila”. Nevertheless, there is legitimate tequila produced outside the Tequila region, even outside the state of Jalisco. For example, there is tequila legally identified with the appeal of origin produced in the area of Pénjamo, state of Guanajuato. It is obvious that such a diversity of geographical locations seems inconsistent with an appeal of original, but that is the current state of things in the case of tequila.

Before the March, 2018, amendment to the statute, the protection of Geographical Indications was provided, not with a special registration, but through the legal stipulations against unfair competition. Now there is a special registration for Geographical Indications that would give exclusivity rights. Geographical indications existed before the amendment to the law, but nobody owned them; after registration, the owner will be the federal government.

There are two main reasons behind the creation of a registration for geographical registrations*: On one hand, give consumers certainty about the origin of the goods they purchase; on the other hand, the Geographical Indication may add value to goods from certain region, town or ethnic group, if any of its characteristics is directly related to the geographic origin.

Since registered geographical indications will be owned by the federal government, producers will have to apply for a license to use them through the MPTO.

As for foreign geographical indications and appeals of origin, the amendment created a special registration. The purpose of the registration is give owners of foreign geographical indications or appeals of origin certainty in Mexico by making the general public aware of the existence of the appeal of origin or geographical indication and entitling the entities that appear in the registration as owners of the geographical indication or appeal of origin to file actions against infringers.

This new registration system for appeals of origin and geographical indications add to the protection that Mexico had already the obligation to protect according to the Lisbon arrangement and the Agreement for Economic Cooperation between Mexico and the European Economic Community, regardless if such foreign appeal of origin or geographical indication is recorded in the new registration.

The statute has been amended to explicitly state as a cause of infringement using an appeal of origin or geographical indication, registered or unregistered, Mexican or foreign, without authorization.

Finally, on May 18, 2018, Mexico enacted the most relevant amendments to the trademark law in the last 30 years. A future post will comment on that.

* I thank my colleague Alejandro Luna Fandiño, Chair of the Legislation Committee of the Mexican Chapter of AIPPI, for kindly providing the project of the amendments to the Industrial Property Statute.

Diario oficial 13-mar-18 (diseños)