Appellations of Origin and Geographical Indications.

March 16, 2018

Re. Mexico – Appellations of Origin and Geographical Indications.

On March 13, 2018, it was published in the Mexican Official Diary a Presidential Decree whereby relevant amendments to the Mexican Industrial Property Law (IPL) were introduced. The amendments will be effective as from April 27, 2018.

Besides the amendments concerning patents, industrial designs and utility models of which we had informed through a separate Newsletter, the amendments include very important changes with respect to Appellations of Origin (AOs), and for the first time in Mexico specific protection forGeographical Indications (GIs) is included.

For many years, Mexico has granted protection to AOs as Mexico is a contracting party of the Lisbon Agreement since February 1964. Up to date Mexico has sixteen Appellations of Origin, being the most relevant “TEQUILA” and MEZCAL”.

In turn, GIs were not recognized as such by any Mexican legal body. Mexico is rich in designations which protection was not provided by the AOs framework and thus legal protection for GIs was a long time demand in Mexico.

Essentially the AOs and GIs are defined in the IPL following the WIPO’s Lisbon Agreement definitions as in both cases the rationale is to protect signs identifying the geographical origin of goods whose characteristic and/or reputation are essentially attributable to such origin. The relevant difference between GIs and AOs being that for the latter the quality and reputation factors must be due exclusively or essentially to the geographical environment including natural and human factors.

The highlights are the following:

• Protection for either AOs or GIs starts as soon as the Mexican Institute of Industrial Property (IMPI) issues a so- called “Declaratory of Protection”.
• A Declaratory of Protection of AOs or GIs is to be issued ex officio or by petition of individuals or legal entities directly involved in the production or manufacturing of the designated product. In addition, the industrial chambers or associations, and the local government authorities at the geographical zones involved, shall qualify for requesting the Declaratory of Protection.
• Various grounds of refusal for a Declaratory of Protection are provided, being the most relevant: technical, generic or common use names; descriptiveness; names either identical or confusingly similar to those already protected or pending; prior rights as derived from a trademark application or registration covering identical or similar products or services.  Thus, very relevant is that prior trademark rights shall be respected.  However, an important omission is that nothing is mentioned with regard to prior rights as derived from trademark notoriety or fame.
• All applications for protection must be published in the Mexican Official Diary so that any party proving legal interest may file an opposition.
• As the Mexican Government owns the Declaratory of Protection, a DOs or a GIs can be used only by the corresponding authorization issued by IMPI.
• Who will be entitled to apply for the use of AOs or GIs? Only those directly involved in the extraction, production, or manufacturing of the protected product(s) and that such activity is performed at the protected territory or geographical zone. The applicant shall comply with the applicable official standards, if any.

• There is no fixed term for IMPI to issue the authorization of use, but once granted the authorization will expire in ten years renewable for identical terms.
• The authorization of use can be assigned only to a third party who meets the corresponding legal requirements to qualify as user. Sublicense is allowed only to those distributing or selling the products of their trademarks.
• The authorization of use is subject to invalidation when granted in violation of the IPL or when false data or false documents were submitted.  Cancellation of the authorization of use will proceed for lack of use for three full years or when used in a different manner than that set up in the Declaratory of Protection, or when the D.O.P or I.G.P legends are omitted.
• Administrative offenses:  (1) The use of AOs or GIs without the corresponding authorization from IMPI. (2) The use of names identical or confusingly similar to a protected national or international AO or GI in connection with equal or similar products. (3) Produce, storage, transport, distribute or sell product equal or similar to those protected  under a AO or GI national Declaratory or those foreign AOs or GIs recognized by IMPI, using any type of indication or element misleading consumers as to the quality or origin of the products, including those as “kind”, “type”, “manner”, “imitation” or the like.
• Criminal offense:  Produce, storage, transport, distribute or sell products of Mexican origin not having the corresponding certification applicable to the AO or GI and the corresponding official standard, with the purpose of obtaining a direct or indirect economic benefit.
• Recognition of AOs and GIs protected in a foreign country. IMPI will recognize those protected in a foreign country upon the terms of the International Treaties. The owner of an AO or GI protected in a foreign country will be entitled to apply for its recognition by filing an application before IMPI and enclosing the document showing the protection under the laws of the corresponding country or according to the international treaties.  The grounds of refusal, opposition rules and invalidation are set identically as those for national applications. Cancellation, however, will proceed when the document showing foreign protection is not valid any longer in such country.

We will be pleased to advise you further with respect to these important amendments.

This newsletter is intended only as a general discussion of the addressed issues, and should not be regarded as legal advice.