The Hague System for the International Registration of Industrial Designs, administered by the World Intellectual Property Organization (WIPO), offers a streamlined and cost-effective mechanism for obtaining design protection across multiple jurisdictions through a single international application. Its principal advantage lies in its simplicity: instead of filing separate applications in each country, a designer can secure protection in over 90 member countries and intergovernmental organizations with one procedure, one language, and one set of fees. This system has significantly facilitated global design strategies for companies, independent designers, and legal practitioners alike, making the international protection of industrial designs more accessible, efficient, and predictable.
However, despite its clear procedural and administrative benefits on a global scale, the implementation of the Hague System in individual jurisdictions can pose significant challenges. This is particularly true in Mexico, where domestic legal requirements, such as the timely submission of a certified copy of the priority document and its translation into Spanish, have led to the unintended consequence of international applicants losing their rights. These procedural pitfalls often arise from a lack of awareness of local formalities, creating a legal environment that can undermine the very advantages the Hague System seeks to offer.
This paper examines these challenges in depth, focusing on the impact of Mexico’s current implementation practices, and explores how comparative analysis with other international frameworks, such as the Patent Cooperation Treaty (PCT) and the USMCA, and TRIPS, can inform necessary legal reforms. The goal is to ensure that Mexico aligns its procedures with the Hague System’s core objective: to provide equitable, accessible, and effective international design protection for all applicants.
Since the Hague System for the international registration of industrial designs came into force in Mexico, it has become evident that, far from benefiting international applicants, the system has in practice resulted in a loss of rights for many. This is primarily due to non-compliance with the requirement set forth both in the Mexican Federal Law for the Protection of Industrial Property and the Hague Agreement itself: the timely submission of a certified copy of the priority document along with its Spanish translation. A significant portion of this non-compliance stems from applicants’ lack of awareness regarding these specific procedural obligations.
In practice, we have encountered numerous cases where international design holders only become aware of this requirement upon receiving a provisional refusal based on lack of novelty, stemming from the non-recognition of the claimed priority. At that point, even though the applicants indeed possess valid priority rights, the window to fulfill the formal requirement has closed, leaving no recourse to salvage their applications. Their only option is to abandon the application altogether. This situation has fostered an atmosphere of legal uncertainty and distrust towards a treaty designed to streamline and facilitate the international registration process.
Given that the essence of the Hague Agreement is to offer a practical solution for securing industrial design protection through a single international application, it is imperative that Mexico reconsider how it handles the priority document requirement. Specifically, instead of demanding the certified copy and translation upfront, the Mexican Patent Office (IMPI) should issue an official notice requesting the missing documentation. This would give applicants a fair opportunity to comply and preserve their rights.
This adjustment is fundamental to ensuring transparency, fairness, and adequate protection of intellectual property rights at both the national and international levels. Moreover, it would bring Mexican practice into closer alignment with other international systems, which already allow procedural flexibility in similar situations. Consider the following international legal instruments:
1. The Patent Cooperation Treaty (PCT) – Rule 17: Priority Document
Rule 17 of the PCT explicitly requires that a certified copy of the priority document be submitted when priority is claimed. However, it also mandates that the designated Offices give applicants a reasonable opportunity to remedy any deficiencies before refusing the priority claim. For example:
- If the applicant fails to submit the priority document within 16 months, the designated Office may disregard the priority claim—but only after giving the applicant the chance to submit the document within a reasonable time.
- The PCT further permits retrieval of priority documents through digital libraries and allows Offices to request these documents directly.
This approach promotes fairness and reduces the risk of losing rights due to procedural oversights, thus supporting a more equitable and transparent process.
2. USMCA – Article 20.8: National Treatment
Article 20.8 of the United States-Mexico-Canada Agreement (USMCA) sets forth the principle of national treatment, requiring each party to accord nationals of the other parties treatment no less favorable than that given to its own nationals in relation to the protection of intellectual property rights.
While the IMPI’s current requirement of a certified priority document aims to apply this principle uniformly, the lack of procedural guidance or flexibility for international applicants places them at a disadvantage. Many are unfamiliar with Mexico’s administrative specifics, which contradicts the spirit of the USMCA to simplify and harmonize international IP procedures. To align with Article 20.8, IMPI should provide clear instructions and reasonable deadlines for international applicants to meet this requirement, thereby ensuring equal opportunity for protection.
3. TRIPS Agreement – Article 3: National Treatment
Article 3 of the TRIPS Agreement (WTO) also mandates national treatment, requiring WTO members to grant foreign applicants protection equivalent to that given to domestic applicants.
This is particularly relevant in cases where international applicants lose rights due to procedural formalities, such as the failure to submit a certified priority document. To truly uphold TRIPS principles, measures must be implemented to ensure that all applicants—regardless of origin—receive adequate support and fair treatment in fulfilling formal requirements.
4. The Hague System – Specifications for Mexico
Under Section 13 of Form DM/1, applicants claiming priority under Article 4 of the Paris Convention must submit a certified copy of the priority document to IMPI within three months following publication in WIPO’s International Designs Bulletin. The document must be submitted physically at the Mexican Patent Office, along with a Spanish translation if applicable.
Failure to comply results in the priority being deemed not claimed.
This rigid approach stands in stark contrast to systems like the PCT, which grant applicants reasonable opportunities to cure defects. The Hague System, as implemented in Mexico, offers no such flexibility—leading to permanent loss of rights for applicants who are otherwise substantively compliant.
Need for Harmonization and Procedural Fairness
The disparity in procedural treatment between the PCT and the Hague System in Mexico highlights an urgent need for harmonization. While the PCT allows late submissions and digital access to priority documents, the Hague System provides no leeway. This imbalance creates an inequitable framework that disadvantages foreign applicants, undermines legal certainty, and discourages the use of the Hague System in Mexico.
Reforming the current practice by allowing IMPI to issue an office action requesting the priority document and its translation would mitigate these issues. It would also restore trust in the international system, align Mexico’s practice with international standards, and encourage broader use of the Hague System by foreign applicants.
Conclusion
The strict procedural requirements imposed by Mexico under the Hague System have inadvertently penalized international applicants, causing avoidable losses of rights. To uphold the principles of national treatment, transparency, and procedural fairness as enshrined in the PCT, USMCA, and TRIPS, it is essential that IMPI adopt a more flexible approach. Such changes would not only strengthen Mexico’s position as a hub for IP protection but also ensure that its system is truly welcoming to global innovators and designers. Ultimately, ensuring that the Hague System functions as a true facilitator of global design rights in Mexico requires a shift in administrative practice, one that places procedural fairness, transparency, and equal treatment of all applicants at its core.
Although this article focuses primarily on the procedural challenges related to the submission of priority documents under the Hague System in Mexico, it is important to note that this is not the only area where international applicants may face significant hurdles. Other aspects of Mexico’s implementation, such as the handling of granting fees, annuity payments, the treatment of divisional applications, the issuance (or lack) of notifications, among others, can also create uncertainty and jeopardize applicants’ rights.
These issues further illustrate the need for procedural harmonization and greater transparency to ensure that Mexico’s adherence to the Hague System truly serves its intended purpose: to facilitate, rather than hinder, international design protection. We will explore these additional areas of concern in future articles.
Carolina Ponce
Teresa Aguilar
