Mexican GIs and the registry of foreign GIs and AOs

This post was first published on The IPKat blog:

Recently, the Mexican Industrial Property Law was significantly amended and on 27 April 2018, the first batch of amendments to the Law entered into force. These amendments modified provisions regarding patents, designs, utility models, trademarks and appellations of origin (AOs). Moreover, for the first time, geographical indications (GIs) are regulated under the Mexican Industrial Property Law and a registry of foreign GIs and AOs lodged the Mexican Institute of Industrial Property will be created.

In this post, this Kat summarizes the amendments that came into force on 27 April 2018, particularly with respect to GIs and AOs. More details about the amendments to the provisions related to industrial designs, patents, and utility models, as previously discussed by Kat friends, can be seen here.

A post by this Kat regarding the second batch of amendments, which will enter into force on 10 August 2018 and were published on 18 May 2018 in the Federal Official Gazette (DOF), will follow!

Geographical Indications and Appellations of Origin

Title V of the Mexican Industrial Property Law was thoroughly amended, inter alia to regulate GIs, provide for oppositions within the examination procedure for the declaration of protection and create a registry of foreign GIs and AOs lodged the Mexican Institute of Industrial Property (IMPI). Some of the highlights [amendments in red when the exact wording is included] are the following:

Definitions and the express provision that the common or generic name of a product can be included in a GI or AO. The definitions of GIs, AOs and geographical zone are provided in articles 156, 157 and 158 of the Mexican Industrial Property Law, respectively.

An AO refers to the “name of a geographical zone or the one containing such name, or another name known to refer to the aforementioned zone, used to designate a product originating therein, when its quality or characteristics are due exclusively or essentially to the geographical environment, including both natural and human factors, and which have given the product its reputation”.   A GI refers to “the quality, reputation or other characteristics of the product must derive fundamentally from the geographical origin”. A geographical zone is defined as “one consisting of the entire territory or a region, locality or place of a country”.

Article 162 expressly states that the common or generic name of a product can be part of a GI or AO, and as such it will not hinder the use of such name outside of the scope of protection of the GI or AO.

Declaration of protection and opposition procedure. The declaration of protection of GIs/AOs shall be made ex officio or at the request of “natural persons or legal entities directly involved in the extraction, production or manufacture of the product to be protected; by a chamber or association of manufacturers or producers linked to the product to be protected; federal government agencies or entities; or the governments of the federal entities in whose territory or geographical zone the extraction, production or manufacture of the product to be protected takes place”. The legal requirements for submitting the application, the examination carried out by IMPI (including an opposition proceeding and the possibility to change a GI application into an AO application and vice versa) and other relevant provisions relating to the declaration of protection procedure, are contained in Chapter II.

Grounds for refusal. The grounds for refusal for the protection of GIs/AOs are established in article 163, including that the name is identical or confusingly similar to a previous GI/AO, trademarks, slogans and trade names (registered/published or pending) applied to identical or similar products (or services); the name is descriptive; and that the name is “the technical, generic or commonly used name of the product to be protected, as well as those names that everyday language or business practice have become  the usual or generic designation of the said products”.

Authorization of use. IMPI grants the authorization of use of a GI or AO for 10 years (renewable for additional periods of 10 years each) to those individual or legal entities that comply with the legal requirements established for such purpose. “[T]he user shall be bound to use [the GIs/AOs] in the form in which [they are] protected according to the declaration” and must apply the following notice or abbreviation on the protected product: “Denominación de Origen Protegida” [Protected Appellation of Origin], “Indicación Geográfica Protegida” [Protected Geographical Indication], “D.O.P”, or “I.G.P.”.

The grounds for invalidity are established in Chapter IV and include that the GI/AO was granted on the basis of false information. As well, the GI/AO may be cancelled, e.g., where the notice or abbreviation is omitted or has lapsed for non-use “during the three years immediately prior to the request for an administrative declaration…”.

Recognition of Mexican GIs and AOs abroad. IMPI shall request directly or through the competent authority that the protected GIS/AOs be recognized abroad in accordance with international treaties, commercial agreements or applicable legislation of the concerned country.

Recognition of foreign GIs and AOs in Mexico. A registry will be created by IMPI with the aim of recognizing GIs and AOs protected abroad, in accordance with the international treaties and the provisions established in Chapter V. Upon meeting the legal requirements, the foreign GI/AO will be registered and published in the Federal Official Gazette (DOF) and the holder of the foreign recognized GIs/AO will have “the power to exercise the legal actions of protection of the rights of the said [GIs/AOs]”, such as commencing proceedings based on administrative infringements and criminal offenses.

In addition, grounds for invalidity (e.g. the GI/AO was granted on the basis of false information) and cancellation (when the document in which the protection of the GI/AO was granted is not valid) of the recordal, are established in Chapter IV.

Administrative infringements and criminal offenses.

Administrative infringements are established in article 213 (XXII, XXX-XXXII), including  the use of a name or indication that is identical or confusingly similar to a protected or foreign recognized GI/AO applied to an identical or similar product; the translation  or transliteration of a protected or foreign recognized GI/AO applied to identical or similar products; and an act “to produce, store, transport, distribute or sell, identical or similar products to those protected by a GI/AO national or foreign recognized by the Institute [IMPI], using any indication or term that creates confusion in the mind of the consumer regarding the origin or quality, such as "kind," "type," "style," "imitation", “produced in”, “manufactured in” or other similar terms.”

Article 223 (VII) provides that is a criminal offense “to produce, store, transport, distribute or sell products of national origin that lack the correspondent certification according to the GI/AO and the Official Mexican Standards [NOM], with the aim of obtaining an economic benefit for themselves or a third party.”

There are fines for administrative infringements and imprisonment may be imposed for the commission of a criminal offense. For the “exercise of the civil and criminal actions … it shall be necessary for the owner of the rights to have affixed to the goods, containers or packaging of goods” the notices established in article 165 BIS 18 (“Denominación de Origen Protegida” [Protected Appellation of Origin], “Indicación Geográfica Protegida” [Protected Geographical Indication], “D.O.P”, or “I.G.P.”.)

Trademarks

Article 90 (X) was amended in order to establish as a ground for refusal for a trademark registration, “the common or proper names of geographical zones … as well as the populations when they indicate the origin of the products or services and can cause confusion or error regarding such origin; including those accompanied by indications such as "kind," "type," "style," "imitation" or other similar terms that create confusion in the mind of the consumer or imply unfair competition.”

Comments

The inclusion of GIs and the creation of a registry recognizing GIs and AOs protected abroad as part of the first batch of amendments to the Mexican Industrial Property Law, while long expected, are indeed major breakthroughs.

In addition, the provisions relating to the grounds for refusal for the protection of GIs/AOs, the establishment of administrative infringements and a criminal offense, as well as the legal consequences for not affixing to the goods, containers or packaging of goods the notices or abbreviations indicated in article 165 BIS 18 (the cancellation of the authorization of use and not being possible to exercise civil and criminal actions), strengthen the establishment of GIs and the regulation of AOs.

Moreover, the inclusion of a “standard” opposition proceeding, in which observations, evidence, and pleadings submitted by the applicant and third parties with a legal interest, will be taken into consideration by IMPI during the examination for grant of protection of a GI/AO, has been well received by IP professionals.

Furthermore, the amendments have resolved a controversy relating to AOs already protected in Mexico. Currently, there are 16 protected AOs in Mexico (Tequila, Mezcal, Olinalá, Talavera, Bacanora, Ámbar de Chiapas, Café Veracruz, Sotol, Café Chiapas, Charanda, Mango Ataulfo del Soconusco de Chiapas, Vainilla de Papantla, Chile Habanero de la Península de Yucatán, Arroz del Estado de Morelos, Cacao Grijalva and Yahualica) and before the amendments, there was a controversy regarding the [very strict and literal] interpretation of former articles 156 and 159 V. Thus, it was argued that AOs should be comprised only of the name of the geographical region by reference to the name of the political division (federal entities and municipalities); as well, an AO could not include the generic name of the product (habanero chili, mango, rice).

As to the first point, in Mexico, no federal entity or municipality is called Mezcal or Talavera; rather, they are regions that comprise a group of municipalities (Mezcal, Talavera, Soconusco de Chiapas) or federal entities (Península de Yucatán). Further, some of those AOs also include the generic name of the product.  Whatever the pros and cons of these issues, the disputes have now been resolved by virtue of the new amendments.

As to the second point, in  light of the Manchego cheese dispute during the negotiations of the Trade Agreement between the EU and Mexico (more details here, here and here) and considering that once a foreign GI/AO is recognized in the registry created for such purpose, the holder will have “the power to exercise the legal actions of protection of the rights of them [e.g. administrative infringement actions]”, IPKat readers might wonder whether these amendments might affect and if so, to what extent, the already announced recognition of the Spanish Manchego Cheese in Mexico.

On 21 April 2018, it was announced (more details here, here and here) that the EU and Mexico agreed to recognize the Spanish Manchego Cheese (made from sheep milk) in Mexico, so it will co-exist with the Mexican Manchego Cheese, as long as the labelling of such product specifies that it is made of cow milk and avoids any reference to the Spanish  -sourced product (e.g. the Spanish flag).

This Kat is eager to put her paws on the final text of the Trade Agreement, in which 340 European foods and drinks (including the disputed Manchego cheese) will be recognized in Mexico as geographical indications (GIs), this according to the press release published by the European Commission.  It is  expected that the Trade Agreement will contain some provisions regarding the co-existence of  GIs/AOs whose name has become  the usual or generic designation of some products in Mexico, considering that administrative infringement actions can be exercised by holders of foreign recognized GIs/AOs in Mexico according to the amendments to the Industrial Property Law.

Stay tuned for the amendments published on 18 May 2018 in the Federal Official Gazette (DOF)!

First, fourth and sixth pictures are courtesy of Dante Gbn. Third and fifth pictures are courtesy of Carlos Leyva.
Second picture of “Alipús San Baltazar” is from the official website of the social project Alipús, in words of this Kat “one of the best mezcals ever!”.