An amendment bill on the Mexican Industrial Property Law was favorably voted on both legislative chambers of Senators and Representatives. Both Chambers agreed on most of the text of said bill and it was published on May 18, 2018 in the Mexican Official Gazette. The reforms will enter in force on August 10, 2018.
This bill incorporates one of the most important new trademark figures which were not previously regulated on Mexican legislation: the non-traditional trademarks, namely, holographic signs, sound and smell marks. Chapter 2 of Title 4 denomination was modified to include Certification Marks. A new article 98 and new articles 98 BIS, 98 BIS-1, 98 BIS-2, 98 BIS-3 and 98 BIS-4, which provide for certification marks, were added. Certification marks are also a novelty on a country where the closest figure was just the collective trademark, which is meant to protect common trademarks owned by various associations or societies of producers, manufacturers, merchants of products, and service providers, in order to distinguish products or services of their members as long as they have the same quality or common characteristics between them, from the products or services of third parties.
These provisions on certification marks have been incorporated in the Industrial Property Law for the first time in our history. This will surely be an important step on improving the Mexican economy to benefit a market that worries more and more on the composition, quality and content of the goods and services that are offered and commercialized in this globalized world. With this new standard, companies are able to demonstrate that they use specific methods and materials to make a product or to provide a service.
Certification marks are meant to distinguish products or services whose qualities or other characteristics were certified by their owners, such as, 1) components of the products; 2) the conditions under which the products have been manufactured or the services have been provided; 3) the quality or other characteristics of the products and services and 4) the geographical origin of the products.
The certification mark may be made up of the name of a geographical area, or another known indication, which identifies a product as originating therein when certain quality, reputation, or another characteristic of the product is attributable fundamentally to its geographic origin.
This means, that a Mexican Geographical Indication (a figure included recently on the IP Law from the previous reform that entered in force on April 27, 2018) could be protected as a certification mark to identify the origin, quality, reputation or other characteristic of said product. Therefore, legal entities, chambers, and associations of producers, merchants, dependencies or entities of the Federal Government and/or any entity governments in which territory the goods, which are intended to be protected, will be extracted, produced or commercialized, would be able to request this Certification mark, which includes a geographical indication. . Protecting a National Geographical Indication as a certification mark will constitute a Federal domain asset. Therefore, the authorization of use of this certification trademark to any person will be provided by the Mexican Institute of Intellectual Property.
Of course, the application form of a certification mark should be accompanied by the Rules of Use which must describe the goods or services, the mark, the technical specifications to define the features of the good or service such as the origin of the raw materials, the conditions of the production, the procedure of transformation, its physical, chemical toxic, bacteriological or utilization characteristics, its composition or labeling, the procedure of character verification, modalities and periodicity with which quality controls, penalties, among others should be exercised.
It is important to mention the existent restrictions to seek the registration of this figure. The first is that the holder of a certification mark cannot be a person who develops a business activity dedicated to the supply of products and services of the certified type. The second is that a certification mark cannot be licensed.
Consumers in Mexico now require a guarantee that goods and services meet desired standards. To meet this demand, companies could get now a certification mark. This provides proof of quality for the product or service in question and provides also peace of mind to demanding consumers.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.