Patents and trademarks in Mexico – Amendments to Law

Dear Colleagues,

On March 13, 2018, amendments to the Industrial Property Law were published in the Federal Official Journal. Such amendments will enter into force on April 25, 2018.

1. Regarding inventions, utility models and industrial designs, the law referred to inventor as the
individual or individuals that appeared with such character in the application of these figures. With
the amendments, the concept of designers is introduced.
2. Applications for utility models and industrial designs must be published in the Gazette as soon as
possible once the formal examination has concluded. Earlier publication cannot be requested for
utility models and industrial designs.
3. For industrial designs, the law was silent regarding the novelty requirements for registration of a
design. However, the amendments clarify the concepts of “independent creation” and “significant
4. Once granted, industrial designs are valid for 5 years since filing date. However, such designs
can renewed for equal periods with a maximum of 25 years.
An industrial design can be renewed within 6 months prior to the expiration date or during the grace
period of 6 months after the expiration date.
Note: Owners of industrial design applications in prosecution phase must submit a petition
within 30 working days after the entry in force of the amendments to obtain the benefit of
Industrial design registrations granted prior to the entry into force of these amendments,

retain the validity granted until their expiration and maintenance fees must be paid for five-
year periods or annuities. These registrations may be renewed for up to two successive

periods of 5 years without exceeding 25 years. The first renewal application for these
registrations must be filed withing 6 months prior to the expiration of 15 years.
5. Divisional patent applications will also be published in the Gazette.
6. Third parties had 6 months after publication of the patent application to submit information
regarding whether patent applications comply with the requirements provided by law. This period
has been reduced to 2 months.

7. The amendments forbid the registration of trademarks containing geographic names, maps,
names of towns, demonyms and adjectives when such trademark indicates the origin of the
products or services and could mislead consumers about the origin of the products or services.
Such prohibition also forbids the expressions “genre”,” kind”, “manner,” “imitation,” “produced in” or
similar expressions that may confuse the consumer about the origin of the products or services.

8. The amendments introduce the possibility of obtaining a declaration for a Geographical
Indication. Prior to the amendments, it was only posible to obtain the declaration of a denomination
of origin.
9. The Mexican Patent and Trademark Office will record and recognize foreign denominations of
origin or geographical indications.

Feel free to contact us if you have any questions.

Kind regards,

Aarón Estrada

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