By Jose Luis Villareal | Holland & Knight
- The United States-Mexico-Canada Agreement (USMCA) was signed by the participating countries on Nov. 30, 2018, and has been ratified by the Mexican Senate, but there is no full certainty as to when the agreement will take effect or whether it will be ratified by all its parties, including both the U.S. Congress and Canadian Parliament.
- The USMCA reflects the concern of properly protecting intellectual property (IP) rights in all jurisdictions. Although Mexico has already been reforming its laws and regulations with the purpose of strengthening its IP legislation, certain amendments still might be necessary to fulfill the objective of USMCA’s IP-related provisions.
The United States-Mexico-Canada Agreement (USMCA) was signed by the participating countries on Nov. 30, 2018, and has been ratified by the Mexican Senate.
There is no full certainty as to when the agreement will take effect or whether it will be ratified by all its parties (it still must be approved by the U.S. Congress and Canadian Parliament), but it is a fact that the executed version reflects a particular concern of properly protecting intellectual property (IP) rights in all jurisdictions, which has been considered as one of the key achievements of the agreement.
As a result of the Comprehensive and Progressive Agreement for Trans-Pacific Partnership, the USMCA and its own policy of modernization, Mexico has already been reforming its laws and regulations with the purpose of strengthening its IP legislation. Such is the case of the Mexican Industrial Property Law amendments, published respectively in Mexico’s Official Federal Gazette on March 13, 2018 (mainly addressing industrial designs, appellations of origin and geographical indications), and on May 18, 2018 (primarily focusing on non-traditional marks, trade dress, bad faith, secondary meaning, certification marks, well-known and famous marks, opposition system, declaration of use, description of products and services, coexistence and consent, and prior use-based nullity actions). In addition, several reform initiatives have recently been presented and discussed in the Mexican Federal Congress.
However, certain amendments still might be necessary to fulfill the objective of USMCA’s IP-related provisions, such as those included in Section J: Enforcement of Chapter 20 “Intellectual Property Rights,” some of which are similar to those previously comprehended in the North American Free Trade Agreement’s (NAFTA) Chapter 17, which provides an opportunity to make the necessary adjustments to Mexican legislation.
Among other provisions of Section J, it is stipulated that each party shall:
- ensure that fair and equitable enforcement procedures are available to permit effective action against infringement of IP rights, which shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays, including expeditious remedies to prevent and constitute a deterrent to future infringements (see Article 20.79, paragraphs 1 and 3)
- make civil judicial enforcement procedures available to right holders (see Article 20.82, paragraph 1)
- provide that, in civil judicial proceedings, its judicial authorities have the authority at least to order the infringer to pay the right holder damages adequate to compensate for the injury the right holder has suffered when the infringer knowingly, or with reasonable grounds to know, engaged in infringing activity (see Article 20.82, paragraph 3)
Considerations and Next Steps
In order to initiate civil actions in Mexico arising from the infringement of industrial property rights before the corresponding judicial authorities, based on current jurisprudence of the Mexican Supreme Court deriving from the interpretation of several articles of the Mexican Industrial Property Law, it is necessary to previously obtain a final resolution from the Mexican Institute of Industrial Property (IMPI) declaring an infringement of an industrial property right.
This has resulted on several years of delays for right holders before being able to initiate civil actions arising from the infringement of their industrial property rights. (It should be kept in mind that IMPI’s resolutions may be challenged.)
The implementation of the USMCA deriving from the Mexican Senate’s ratification presents a new opportunity to discuss these issues and make the necessary adjustments for optimizing the enforcement procedure of industrial property rights in Mexico.
Information contained in this alert is for the general education and knowledge of our readers. It is not designed to be, and should not be used as, the sole source of information when analyzing and resolving a legal problem. Moreover, the laws of each jurisdiction are different and are constantly changing. If you have specific questions regarding a particular fact situation, we urge you to consult competent legal counsel.
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