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At-a-glance: Instituto Mexicano de la Propiedad Industrial (IMPI) Periférico Sur No 3106, Col Jardines del Pedregal, CP 01900, Mexico Tel: +52 55 5334 0700 Fax: +52 55 5624 0406 Email: buzon@impi.gob.mx Website: www.impi.gob.mx Instituto Nacional... [more]

In the past year, Mexico has taken a series of steps on the path toward a stronger IP environment: accession to the Madrid Protocol, signing of the Anti-Counterfeiting Trade Agreement (ACTA), a court decision in favour of data protection exclusivity (DPE) rights and the adoption of new comparative advertising rules.

On November 19 2012, the Mexican government deposited its instrument of accession to the Madrid Protocol with the World Intellectual Property Organization (WIPO). Mexico becomes the third country in Latin America to join, following Cuba and Colombia. The benefits of joining the international trade mark system include the ability to protect a trade mark in 86 countries by filing one application and paying one fee.

Not everyone in Mexico, however, has welcomed the news. "While the Madrid Protocol encourages more filings internationally, it overlooks the possibility of applications being flawed when important local factors are not taken into account," remarks one partner. "At some point, this could jeopardise the trade marks or risk future deals."

Others have criticised the Madrid Protocol alleging that it will essentially benefit foreign and not local companies, while others describe it as a political move rather than a legal one. "Mexico signed the protocol because it wanted to join the Trans-Pacific Partnership Agreement," said one partner.

Several IP professionals have also pointed out that, with accession to Madrid, Mexico needs a trade mark opposition system more than ever. "By introducing the opposition proceeding in the Mexican industrial property law, any application filed before the Mexican Trademark Office (either locally or through the Madrid System) would be published for opposition, thus giving trade mark owners the opportunity to oppose registration when their exclusive rights could be threatened," argues one attorney.

Without such a procedure in place, a trade mark owner is forced to file a cancellation action after a new mark infringing upon his rights has been registered. This means losing time and money, since a decision to cancel a mark can take several years.

The decision to sign ACTA in July 2012 also drew controversy. The government signed the agreement "to combat the problem of counterfeiting and piracy of trademarks, inventions, intellectual and artistic works, in a more efficient way", said IMPI in a statement at the time. Critics claim that ACTA will invade online privacy and hinder freedom of expression. IMPI, however, promises to abide by Mexican laws that provide for the protection of fundamental rights, such as freedom of speech, privacy, due process and access to information.

According to the Global Intellectual Property Center (GIPC), which released the first edition of its International IP Index in January 2013, Mexico ranked fifth of 11 economically and geographically diverse countries surveyed for quality of IP environment, with a score of 12.23, out of a possible 25. Some of the country's IP-related weaknesses are a lack of a sufficient framework to promote cooperative action against online piracy, software and music piracy rates of more than 50% and ineffective border measures, according to GIPC.

The report, however, also highlights the strengths of Mexico's IP system. These include: fair and transparent use of compulsory licensing, standard civil and criminal remedies, pre-established damages for copyright infringement and regulatory data protection for chemical-based pharmaceutical products introduced in 2012.

During the past year, several constitutional actions have been filed seeking publication of pharmaceutical patents covering formulations, combinations, or second medical uses in the linkage gazette, which was set up by IMPI in 2004 linking all pharmaceutical patents and keeping the health ministry up to date.

The country also made changes to its advertising law, adopting stricter rules in relation to deceitful and abusive advertising. The guidelines, published in July 2012 by the Consumer Protection Bureau, "seek to provide a clear framework in connection with the criteria that shall be applied by the Consumer Protection Bureau in order to prevent and/or sanction deceitful or abusive advertising that may lead consumers to error or confusion regarding the characteristics and qualities of the products or services in the market," explains one lawyer.

The country's patent and trade mark authority underwent changes of its own. As many anticipated, IMPI's leadership changed soon after Enrique Peña Nieto and the Institutional Revolutionary Party (PRI) took office in December 2012. Miguel Angel Margain became IMPI's new director general as of January 2 2013. Previously a partner at Arochi Marroquín & Lindner, Margain succeeded José Rodrigo Roque Díaz, who had assumed the position in April 2011.

"We expect a lot of changes, a lot of improvements with this new government," says one partner.