Marcela Bolland González and Gabriela Armas Araiza from Uhthoff, Gomez Vega & Uhthoff, S.C address Geographical Indications and their incorporation to the Mexican System of protection.
As has been its tending, Mexico continues to operate the Intellectual Property forum with a very modern and anticipated brain. Now, a recent clause in Industrial Property Law shows this conduct. During the past few decades, Mexico has been seeking to update the trademark system, considering worldwide tendencies and current criteria from adopting and implementing several International Treaties, such as the Madrid System, and recently incorporating an opposition system that, while very unusual, has proven useful so far, even when some adjustments may be in order.
Considering international treaties that are being negotiated or re-negotiated, Mexican authorities encouraged by professionals in Intellectual Property Law, have started to implement modifications such as the amendments published on March 2018.
These amendments refer to some of the regulations regarding industrial models and designs, and substantially to recognition of Geographical Indications (GI), additionally to the already recognized Appellations of Origin (AO).
In this article, we will address Geographical Indications and their incorporation to the Mexican System of protection, specifically considering its importance. According to some experts, it was overdue and has created some potential conflicts with some GI protected abroad intended to extend such protection to Mexico.
The protection for geographical indications comprises three aspects, regulations for obtaining a Declaration in Mexico, regulations for recognition in Mexico of protected GI’s abroad, and defense means such as prohibitions for registration of distinctive signs and infringement for unauthorized use and criminal offenses.
- Declaration of protection of GI or AO in Mexico
Traditionally, Mexico has protected Appellations of Origin, however, this chapter of Mexican Law has been amended to include the respective rules for Geographical Indications as a specific new tool of protection.
It is important to consider that Geographical Indications is the genre among which Appellations of Origin are included, thus constitutes broader protection.
There are Geographic regions or zones understood as a territory, region, location, or place of a Country, among which some are recognized for their specific products with determined quality or characteristics (Geographical Indications).
Among those, we may find some specific goods that are only produced in such region, whose characteristics and quality are essential and exclusive due to their geographical environment comprising natural and human resources (Appellations of Origin).
According to Mexican Law, Geographical Indication (GI) is defined as the name of a geographic region or that includes such name or indication known for denoting such region, which is identified as the place of origin of an specific product with determined quality, reputation or other characteristic that is due essentially to such place of origin.
While an Appellation of Origin (AO) is defined as the name of a geographic region or that includes such name or other known for denoting such region, used to designate a product originated in such place, when the quality or characteristics of that product are due exclusively and essentially to the environmental, natural, or human factors of the place of origin which gave the product its reputation. Both GI and AO are considered Federal property, which protection initiates with a Declaration issued by the Mexican Industrial Property Institute (IMPI), that will be valid until the conditions upon which it was granted subsist and may only be used through an express authorization by the IMPI.
The Declaration for protection may be requested by individuals or entities dedicated to the extraction, production or, manufacture of the protected product by chambers or associations of producers of the protected product, by the Federal Government or by the local authorities of the territory or geographic region in which the product is produced.
The application for a declaration of protection of GI or AO must comply with some formal requirements including:
- General information of applicant;
- Detailed description of the AO or GI, including its characteristics, components, extraction requirements, production processes and its commercial uses;
- Criteria for labeling and commercialization of the goods in case of an GI;
- Places, determined territories, or regions in which the product is extracted, produced or manufactured;
- Detailed description of the essential relation between the name, product, territory or region and the natural and human resources, in case of an AO;
- A technical opinion issued by an authority or expert that confirms the above.
Once the application is filed, an applicant may transform from an GI to an AO or vice versa, within the following two months of filing date, or from the authority´s requirement for transformation.
When formal requirements are met, the application will be published on the Mexican Federal Official Gazette for Opposition purposes, granting a non-extendible term of two months, upon which any interested third party may file an Opposition in writing, exhibiting all the documentation and evidences to prove their objections.
Mexican authorities will notify the applicant granting a two- month term for filing a response to the opposition and objecting evidences. When the deadline expires, an allegation stage may be in order, for both parties for a term of 10 days, upon which the examiner will issue a decision notifying all involved parties.
If the Declaration is granted, it will be published in the Mexican ederal Official Gazette, expressing the terms of the protection, the applicable Mexican Official Norms for production, extraction, packaging, labeling and commercialization, and the territories included.
a.1 Authorization for use
An authorization for use of a GI or AO may be requested by an individual or entity that develops the extraction, production, or manufacturing of the protected goods within protected territories and observes the applicable Mexican Official Norms.
The authorization will be in force for 10 years upon filing date and may be renewed within six months (before or after the date in which it lapses). In the absence of renewal it will be cancelled.
The authorized individual or entity must identify the products using the phrases “Denominación de Origen Protegida” (Protected Appellation of Origin) or “Indicación Geográfica Protegida” (Protected Geographical Indication) or its acronyms in Spanish “D.O.P” or “I.G.P”.
This authorization may be transmitted to a third party when the requirements as an authorized individual or entity are met; it should be recorded before the Mexican Industrial Property Institute to be valid before third parties.
An authorized user may grant through a written agreement a permit for use of the DO or GI only for those who distribute or sell the goods with their trademarks. This agreement should be recorded before Mexican authorities.
- Recognition of AO or GI protected abroad Mexican authority will recognize Geographical Indications and Appellations of Origin which are protected abroad according to International Treaties and applicable law.
The application requesting the recordation and recognition of a GI or AO must be filed by its legitimate owner and comply with some formal requirements, such as an exhibition of the document granting protection abroad and its translation and/or transliteration into Spanish. According to the amendments made on March 2018, there are some prohibitions for registration as distinctive signs, which protect a Geographical Indication or Appellation of Origin. These include similarity on grounds of confusion with other protected or requested Geographical Indications or Appellations of Origin, with a trademark or commercial slogan or name, generic designations of the products object of the Geographical Indication or Appellation of Origin, translation or transliteration of non-protectible Geographical Indications or Appellations of Origin, and those which include the name of a Protected Plant Variety or an Animal Race.
Once the application for recordation and recognition is approved, complying with formal requirements, it will be published on the Federal Official Gazette for opposition purposes during a two-month term, granting the applicant a two-month term to file a response. The authority will issue a decision, that will be notified to involved parties, and if granted the recordation will be published on the Federal Official Gazette.
These prohibitions and opposition opportunity are of utmost importance considering some special cases that have created potential conflicts between protected GI abroad with some generic names or common designation of goods in Mexico. One example of this is “Manchego”, which in our country is a technical, generic, or common name for a type of cheese, while in Spain it is a protected GI related to a determined region and its product consisting in a cheese with specific characteristics different from those in Mexico.
In Mexico this type of cheese is not specially related to any region: it is a well-known type of cheese, derived from cow milk, considered as a generic name, thus used by several companies on the dairy industry used along with their trademarks. While in Spain, it is related to the region named “La Mancha”, and it’s a cheese made with milk obtained from sheep specially bred in that region among other production characteristics, which derive in a singular product.
This is an example of some of the potential practical issues that may arise with the implementation of this amendment, however, from our point of view, there are some resources which owners and involved parties may use to defend previously acquired rights.
- Defense means
One of the protection mechanisms that are implemented regarding GI or AO is an amendment to the prohibition for registering as a trademark names of geographic regions, which may induce confusion to consumers or might constitute unfair competition, including those that incorporate expressions such as “genre”, “type”, “manner”, “imitation”, “made in” or similar.
Moreover, they have included some cancellation grounds, namely:
- lack of use during the immediate previous consecutive three years to filing of cancellation;
- diverse use of the authorized one;
- absence of identification phrases “D.O.P.” or “I.G.P.”;
- cancellation on grounds of false statements or documentation in filing;
- cancellation on grounds of granting against applicable law.
On the other hand, they have included some specific cases of infringements:
- for unauthorized use;
- use of a name that is confusingly similar to a protected national or recognized foreign AO or GI;
- use of the translation or transliteration of a protected national or recognized foreign AO or GI;
- to produce, store, transport, distribute or sell identical or similar goods as the ones protected by an AO or GI, including any element that may induce to confusion such as “genre”, “type”, “manner”, “imitation”, “made in” or similar.
Finally, some criminal offenses have been added in connection with AO or GI, i.e. to produce, store, transport, distribute or sell identical or similar goods as the ones protected by an AO or GI, including any element that may induce to confusion such as “genre”, “type”, “manner”, “imitation”, “made in” or similar, with the intent of obtaining an economic benefit for itself or for others.
The aforementioned amendments to Mexican Law are a step to homologate our system to foreign systems according to international treaties, which require national incorporation on local legislation.
Commercial Globalization and merchandizing requires recognition of other intellectual property rights such as Geographical Indications, which are already protected in several countries, while there are some steps and negotiations that may be taken in order to avoid or attenuate possible conflicts between owners.
Nonetheless, from our point of view, these amendments are a huge necessary step to protect national and foreign owners which have obtained public recognition of their quality and product characteristics throughout years of production and commercialization which current protection was not sufficient or efficient enough.
There are some other proposed amendments being studied by the Congress, which we expect will help enhance Intellectual Property Legislation in Mexico, and grant legal certainty to owners and their rights, this following Mexico’s commitment to maintain its Intellectual Property frame at the head of the International Community.
“Twelve or thirteen word pull quote for her please. Twelve or thirteen word pull quote.”
Marcela Bolland González, Partner, Uhthoff, Gomez Vega & Uhthoff, S.C
Marcela is part of the team that leads the Trademark Department at the Firm in which she has over 20 years of experience in Intellectual Property. Her main practice focuses on handling trademark prosecution and litigation in Mexico, and coordinating trademark filings and related litigation abroad, serving as a liaison between brand owners and agents throughout the world. Marcela joined Uhthoff in 1997 and was appointed as a Partner in 2007. She holds a Law Degree from Universidad Panamericana in Mexico City and an Postgraduate in Intellectual and Industrial Property. She is fluent in Spanish and English.
Gabriela Armas Araiza, Associate, Uhthoff, Gomez Vega & Uhthoff, S.C Gabriela has more than 10 years of experience in Intellectual Property, as from June 2015 she became Associate at the Firm. She holds a Law degree with diploma in Intellectual and Industrial Property from Panamericana University Law School in Mexico City (Universidad Panamericana) and is currently coursing the Master in Intellectual Property and New Technologies at Panamericana University also in Mexico. She is a member of the Mexican Association for the Protection of Industrial Property (AMPPI) and is fluent in Spanish, English and Italian.