A. Introduction.
Mexico has pushed towards an effective national legal system for the protection of intangible rights and, through the years, has adapted its legislation to the international treaties that govern intellectual property worldwide and regionally.
The proximity and close trade relationship with the United States and other commercial partners, has caused the Mexican government to reformulate and ensure adequate enforcement aiming to attract foreign investment and capital.
In recent years, emerging technologies such as non-fungible tokens, artificial intelligence and the metaverse, have raised questions about ownership and protection of IP in the digital environment and posed new challenges for intellectual property law in Mexico and worldwide.
As one of the largest economies in the world and a multicultural country, it is important that Mexico remains at the forefront in terms of intellectual property regulation and enforcement, and it has strived to maintain this position.
B. IP Framework in Mexico.
The free trade Agreement between Mexico, the United States and Canada, T-MEC or USMCA, resulted in the enactment of new legislation on intellectual property in Mexico. This includes the Mexican Federal Law for the Protection of Industrial Property (LFPPI) of 2020, and the amendments to the Mexican Federal Copyright Law (LFDA) with a special focus on the protection of intellectual property in the digital environment.
The LFPPI is innovative as it has introduced new forms of protection for industrial property. Non-traditional trademarks, such as trade dress, smell, and sound marks, provide new alternatives of protection for individuals and companies.
The “secondary meaning” doctrine widely developed in the United States came into existence in Mexico. Unlike the previous law, an otherwise unprotectable trademark may now obtain registration if it has acquired distinctiveness.
A trademark that has been registered or applied-for in bad faith is subject to annulment or refusal. This amendment has intended to deter squatters from seeking registration of trademarks owned by third parties overseas.
For many years, letters of consent were rejected by the examiners with the excuse of avoiding consumer confusion. With the current law a consent is sufficient for two confusingly similar or even identical marks to coexist in Mexican market.
With the purpose of fostering the use of registered trademarks and to remove marks that could block the registration of new marks in which use is intended, a declaration of use must be submitted after the third anniversary of a trademark registration.
As to the LFDA, new provisions protecting IP rights in the digital environment came into effect. One example is the adoption of a notice and takedown system which allows the holder of a copyright to remove infringing content from digital platforms. The amendments also provide a safe harbor for the internet service providers that comply with such system.
Additionally, criminal sanctions are provided to prosecute those individuals eluding or circumventing technological protection measures of copyrighted material.
Few Examples of the Influence of International Treaties
When Mexico became a party to the Nice Agreement concerning the International Classification of Goods and Services, a massive reclassification of the identification and scope of the existing registrations was carried out. Over the years, the Mexican IP authorities have worked on a complementary list to include certain goods or services not expressly mentioned in the international classification.
Another international treaty that has impacted the Mexican IP legal framework is the Madrid Protocol, which came into effect in 2013. Mexico’s adherence to the Madrid Protocol made sense in a globalized world in which more individuals and companies seek to invest and protect its IP rights in Mexico.
While Mexican nationals seldom use the Madrid Protocol and incoming applications greatly outnumber outgoing filings, it is still an interesting tool that should be promoted and utilized. After Mexico’s adhesion to the Madrid Protocol, other Latin American countries such as Colombia and Chile have decided to join.
Furthermore, as a member of the Lisbon Agreement and the agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), Mexico is bound to establish minimum standards for the protection and enforcement of intellectual property, including appellations of origin.
In that regard, Mexico has signed various bilateral and regional free trade agreements that include provisions related to the protection of this IP form, which result in the possibility of enjoying legal protection in foreign countries for the products encompassed by appellations of origin in different sectors and prevent unauthorized uses or misappropriations.
C. IP Enforcement in Mexico.
There is a relative concern on the observance of IP rights. Counterfeiting is a major problem in Mexico that harms not only our intellectual property framework but our economy. Intellectual property legislation has been modernized to dissuade infringing behavior and ensure enforcement of IP rights both in the physical world and the digital environment.
Mexico has two robust authorities to protect and enforce trademarks, patents, and copyrighted works: the Mexican Institute of Industrial Property (IMPI) created in 1993, and the National Institute of Copyright (INDAUTOR) created in 1996.
Both institutes have had an important evolution in terms of modernizing their interaction with the IP system’s users through technological platforms and tools. A public and up-to-date consultation database and the possibility of making e-filings, secures remote and effective access to facilitate the protection and defense of intangible assets.
Additional digitization actions have been implemented since the pandemic in order to promote a culture of rights’ acknowledgement and provide users with legal certainty and transparency.
Further, the LFPPI granted new faculties for IMPI to quantify damages and lost profits through a simplified proceeding that used to take several years to conclude in the past. This amendment reduces the time and effort required to obtain a compensation, by empowering IMPI to address claims for damages. If implemented correctly, this system is certainly a huge step to ensure full and effective compensation for IP rights holders.
D. Mexican own agenda in the IP field.
But Mexico has not only focused on the protection of rights from abroad. As a country with vast cultural richness and diversity, Mexico’s public policy has focused on the protection and safeguard of its cultural assets, such as traditional knowledge and expressions. Special attention has been placed on the rights of indigenous and other communities with the enactment on January 17, 2022, of the Federal Law for the Protection of the Cultural Heritage of Indigenous and Afro-Mexican People and Communities.
We have also seen a rise in the recognition of goods protected by appellations of origin, highly relevant in Mexico, beyond the well-known Tequila and Mezcal. Distilled spirits such as Raicilla, Sotol and Bacanora have seen a boom in commercialization and consumer preference. Mexican products with appellations of origin have grown exponentially and have drawn the attention of foreign investors and celebrities.
The recognition and protection of these appellations of origin are important for preserving traditional knowledge, promoting sustainable production practices, and ensuring quality. As these and other traditional spirits gain popularity both domestically and globally, its adequate legal protection is crucial to guarantee their continued success and recognition as unique products of Mexico, tackle unfair competition and prevent health risks that might arise if the production and quality control regulations are not followed strictly.
Other actions have been put in place regarding the use of IP on advertising material, such as the prohibition of displaying certain designs on child-focused advertising for the sale of high sugar levels products.
The current federal government has focused its efforts on a socially focused agenda, in which social programs seem to have more importance than innovation. However, regardless of this change in political determinations, Mexico remains with a robust intellectual property system that ensures the proper protection and enforcement of IP rights, both for nationals and foreigners.
E. Technology and IP Evolution.
Intellectual property laws must evolve at the pace of a globalized world submerged in a rapidly growing technology that demands legal systems to be harmonized with the parameters of business and human innovation.
Some current forms of IP shall be revisited, while new manners of protecting intangible rights must come to life. Unconventional artistic creations and state of the art inventions, such as artworks created with artificial intelligence (AI) and patents with living matter, are just a few examples on how IP has evolved to conform to new standards and realities.
Likewise, publicity rights in the digital world, brands in the metaverse, copyright associated to NFTs, are becoming more and more frequent and attractive. Social and technological progress demands room for discussion on how intellectual property interacts with new or modernized forms of intangible assets.
Also, as the metaverse and other digital worlds become increasingly important, Mexico will likely continue to play an active role in the international community to ensure that intellectual property rights are protected in this virtual environment.
By adequately securing protection of trademarks, copyrights, and inventions with the relevant authorities, right holders can establish ownership over their own creations and make use of the available legal remedies against infringers.
Now, new technologies and AI have not only posed challenges for the IP sector, but they have also played a decisive role and facilitated the monitoring and enforcement of IP rights in the digital environment. A few examples are watermarks and blockchain technology linked to intangible assets which have helped to avoid unauthorized use and prevent alterations of original works.
The Mexican public sector has benefited from these technological developments. In fact, recently IMPI has implemented advanced AI in trademark clearance searches through a tool called MARCIA which uses AI technology to conduct comprehensive figurative searches by analyzing the elements of a logo and comparing it with existing marks, which helps to determine if such logo could potentially be similar or overlap with another existing design.
Overall, the use of AI in Mexico is a positive development that ultimately has improved the existing tools and has provided a more accurate, efficient, and reliable system for trademark registration and protection.
F. Conclusion
Mexico has made an effort to implement international treaties with focus on its own social and cultural realities, without losing sight of the importance of promoting innovation and technological development. With a solid legal framework and an effective enforcement system in place, Mexico can thrive safely in the new digital era while safeguarding its cultural heritage and unique products and attracting more domestic and foreign investment.
In situations that generate technological challenges for IP legislation and practice, there is a need to assure a solid and up-to-dated intellectual property protection and enforcement system.
Although there is still much left to do in terms of research and development in Mexico, the current IP legal framework includes high standards of protection. Consolidating a top-notch and active surveillance and enforcement system, on the other hand, remains a pending issue.
As we witness the emergence of disrupting technologies such as AI, NFT’s, and the metaverse, we are experiencing a monumental and inevitable transformation in the production, consumption, and exploitation of digital content. Mexico’s legal framework must take a proactive stance in safeguarding the interests of both creators and users, bearing in mind that the virtual world is as real as the physical one, and thus a safe environment where IP rights enjoy solid legal protection must be guaranteed.
Gloria Niembro