The Reform of the Mexican Industrial Property Law (“Decreto por el que se reforman y adicionan diversas disposiciones de la Ley de la Propiedad Industrial“, hereinafter “The Decree”) entered into force on 27 April 2018.
While the inclusion of Geographical Indications (GIs) – article 157 – which will be available together with the existing Appellations of Origin (AO) scheme, as well as the introduction of a procedure for the recognition of foreign GIs and AO – Chapter V – represent positive steps, some provisions of the Decree seem to contradict the international rules on GIs and AO. In particular:
- Art. 163. VI (“It cannot be protected as an AO or a GI: … The translation or transliteration of a non-protectable AO or GI”): this provision has no precedent in international and national legislation on GIs (the concept of “non-protectable” GIs and AO is extremely ambiguous) and is in contradiction with another provision of the Decree. If an AO / GI is registered in Mexico, it will be protected according to the law (Article 213. XXXI of the Decree covers translation and transliteration: It will not be possible to “use the translation or transliteration of a foreign or national protected AO/GI recognized by the Institute, for the same products or similar products”, including for services). If the registration is refused (based on grounds compatible with international rules), the protection will not be granted to the name at issue, nor to its translation, transliteration. If Mexico applies this provision, it would breach its international obligations under the Lisbon Agreement (art. 3), the TRIPS Agreement (art. 23) and its legislation would not be consistent with art. 11.2 of the Geneva Act of the Lisbon Agreement;
- With respect to the procedure for the recognition of foreign AO / GIs, art. 177 (“The recognition of a foreign AO/GI does not produce effects vis-à-vis third parties who market, distribute, purchase or use a product bearing the AO/GI name at issue, if such product had been legally introduced in the country by its holder or licensee. This case includes the importation of legitimate products bearing a foreign protected AO/GI made by any person for its use, distribution or commercialization in Mexico”) is extremely problematic. Once protection is granted to a GI / AO, any infringement must be stopped (the concept of accepting a product’s name infringing a protected AO/GI, legally introduced in the country” before protection is granted, is not compatible with well-established GIs rules and IPRs principles). If Mexico implements such a provision, it would breach its international obligations under the Lisbon Agreement (art. 3 and 5), the TRIPs Agreement (art. 22 and 23), and its legislation would not be consistent with Article 11 of the Geneva Act of the Lisbon Agreement.
oriGIn has sent these comments to relevant Mexican authorities.
