BC&B News.


12 de diciembre 2019Por: Octavio Espejo - BC&B.

We invite you to read the following article written by one of our partners in which he talks about the First expectations after the accession of Mexico to the Geneva Act of the Hague.

The countries of origin of the main filers of industrial designs in Mexico, according to the recent annual reports of the Mexican Institute of Industrial Property (IMPI), are Germany, the United States of America, France, Japan and the United Kingdom. All of them are part of the Geneva Act of the Hague Agreement. The sum of the applications submitted by the applicants of those countries plus the Mexican designs in the last year constituted 82.52% of all the design cases.


Last September, the Mexican Senate approved the country’s accession to this international treaty. The submission of the accession document before WIPO is still pending. However, users of the Hague system will soon have the possibility to designate Mexico (MX) in their international applications.


With the deposit of the accession document, each new contracting party can submit a Set of Declarations to establish the rules and particularities of the local design system. In the following lines, the Declarations that should be carried out, according to the current Mexican law and practice, will be analyzed.


Regarding the term of protection, the local legislation provides protection for a 5-year period renewable up to 25 years of protection in 5-year periods from the filing date of the application. Therefore, the first declaration must establish this maximum possibility of protection.


As for the declaration related to the deferment of publication, the practice dictates that the publication of a regular industrial design application cannot be deferred. The Mexican legislation expressly prohibits anticipating the publication of a design application. Therefore, we can expect that the MX contracting party presents the declaration related to the No Deferment of Publication.


The Mexican industrial design system contemplates a substantive examination of each application in which, among other requirements, the novelty of the design is evaluated. Consequently, the IMPI qualifies as an “Examining Office” in terms of the Geneva Act.

As for the unity of design, the IMPI should declare the unity requirements that a Mexican design application must meet to obtain a registration. In this regard, a Mexican industrial design application may contain a single design, or a group of designs so closely related to each other that they constitute a single design concept. During the substantive examination of the application, the unity is evaluated considering the specific novel design features shared among the embodiments. That is, if they constitute the required “single design” concept. If the result of the official evaluation is a lack of unity between embodiments, or between groups of embodiments, the applicant is requested to divide into the necessary number of applications.


The novelty and the unity of design will be very important for the international applicants who will designate Mexico, since the IMPI expects that most refusals of protection will be based on those requirements.


According to the Treaty the designation fee should not be higher than the equivalent of the amount which the office of that contracting party would be entitled to receive from an applicant for a grant of protection for an equivalent period to the same number of industrial designs. In this regard, the current official filing fees for a MX Industrial Design Application are approximately $122USD for the first embodiment plus $3.72 USD per additional embodiment. The IMPI could adjust the filing fees for the regular applications in the near future to meet obligations as a contracting party.


In addition, the Mexican legislation requires the indication of the identity of the creator, a brief description of the reproduction of the industrial design and a claim. Therefore, we can expect that in a Declaration for MX.


Regarding the Declaration of Recording Changes in the International Register, the current requirements to register a change before the IMPI in a design registration or application are more complex than those required on the Treaty. Therefore, the IMPI should declare the requirement of additional statements and documents to record the changes in order to be in line with the Mexican legislation.


It is uncertain whether the IMPI will notify the declaration related to the non-effect of the designation of Mexico in an international registration for Mexican applicants.


Finally, the other possible Declarations are not applicable to the MX case in view of the current law and practice. Consequently, it is unlikely that the IMPI will extend the Declarations list. From this analysis, it is the intention that regular users of the Hague system can have an approximation of what to expect in the near future when designating Mexico in international applications.