Overview of Mexico's design system

Mexico's design system has been significantly revised and raised to international standards with the new Industrial Property Law that went into effect in 2020. This article provides an overview of the system for Japanese practitioners, including the registration requirements for designs (industrial designs) in Mexico, application procedures, term of protection, and the relationship with the Hague Agreement.

Registration requirements

To be registered as a design in Mexico, two main requirements must be met: novelty and industrial applicability. Designs must be novel throughout the world (have aunique and distinct appearancecompared to known designs) and cannot be registered if they are considered to be a combination of existing designs or substantially identical to a well-known design. Another condition is that the design can actually be commercialized industrially or manually (industrial applicability).

Furthermore, the protection of a design is limited to the esthetics (decorative features) of the product, and if the shape etc. is determined purely for functional reasons (i.e. a shape that depends only on function), it cannot be protected as a design. For example, structures and shapes that serve only to fulfill the technical functions of a product cannot be protected by design rights, and such inventive elements should be considered for patents and utility models.

Application procedure

Design application procedures in Mexico generally follow the patent application process and proceed as follows.

• Submission of application: The applicant files an application for design registration with the Mexican Institute of Industrial Property (IMPI). The application form should include the name and address of the applicant and creator (designer), the name of the design (e.g. "pattern for handbags", etc.), and the Locarno classification to which the design belongs. The application also includes adrawing or photographic representation of the design and a brief description. If you are applying through an agent, you will need to submit a Power of Attorney. Additionally, if you wish to claim priority based on an earlier application filed in another country, you must declare this at the time of filing.
• Method review: After submitting your application, IMPI will first review the formal requirements. The application form and required documents will be checked for any deficiencies, and if there are any deficiencies, you will be notified and given an opportunity to make corrections (within two months from the date of notification). If your application passes the formal examination, you will proceed to the next stage.
• Application publication: Mexico has introduced an early application publication system, in which design applications are published in the Official Gazette as soon as possible after passing formality examination. Publication generally takes place within several months to one year from the filing of the application, and there is no system for applicants to postpone publication (request for non-disclosure).
• Opposition: After publication, third parties can oppose the design application. Under the current system, the period for filing an opposition to a design application is three months after publication, during which interested parties can submit a written opinion or provide information stating that the application does not meet the registration requirements. If an objection is filed, IMPI will notify the applicant and the applicant will have an opportunity to file a counter-argument within two months of receipt of the notification. The appeal system was introduced in a new law that came into effect in 2020.
• Substantive examination: After the publication and opposition period has passed, substantive examination will be conducted by IMPI. The examiner checks whether the design meets the registration requirements (novelty, industrial applicability, non-functionality, etc.). Mexico does not have arequest system for designsand applications are automatically submitted to substantive examination. The examiner may issueup to two notices of reasons for refusal if necessary, and the applicant will have anopportunity to respond to each notice within two months from the date of the notice (plus two months extension possible).
• Registration (setting registration): Design applications that pass examination will be approved for registration, and IMPI will notify you of the decision to register. When the applicant pays the prescribed registration fee, a design right will be granted and a registration certificate will be issued. The initial registration fee protects you for the first five years, and you can maintain your rights thereafter by paying a renewal fee.

Protected target

Subject of protection (definition of design) is clearly stipulated by law. The Mexican Federal Industrial Property Protection Law (Ley Federal de Proteccion a la Propiedad Industrial) classifies what can be protected as industrial designs into the following two types:

• Intentional drawing (dibujo industrial): Refers to combinations of shapes, lines, and colors for decorative purposes that are incorporated into industrial or handicraft products. This is what gives the product a unique and appropriate appearance. This includes so-called two-dimensional designs (for example, designs, patterns, prints, patterns on fabrics, etc. on the surface of products).
• modelo industrial: refers to a three-dimensional shape that serves as amold or pattern for the manufacture of industrial or handicraft products. However, it refers to something that gives a special appearance to a product, unless the shape is meant to perform some technical function. This corresponds to three-dimensional design (shape design of the product itself), and typical examples include the external design of furniture, containers, and vehicles.

As mentioned above, in Mexico, designs related to the aesthetics of products are subject to design rights. Only registered designs can be protected; Mexico does not have a system of protection for unregistered designs, such as the one found in the European Community design system. Obtaining a design right gives you the exclusive right to seek injunctions and compensation for damages against others who manufacture, use, sell, or import your registered design without permission.

Novelty exception (grace period)

Mexican design law provides an exception to the loss of novelty (grace period) under certain conditions, even if a design is made public before filing. Specifically, if the creator (designer) of the design or his/her successor(s) makes the design publicly known (through publication, publication, implementation, exhibiting at an exhibition, etc.) within 12 months prior to the filing date (priority date if priority is claimed), the fact that the design is publicly known does not impair the novelty of the design.

In order for this exception to apply, the subject of disclosure must be the right holder (although there is no explicit provision regarding unauthorized publication or leakage by a third party, it is generally understood that leakage due to unfair competitive acts may also be subject to protection). Mexican law does not clearly stipulate the procedural requirements for applying the grace period, and it is thought that they will be determined qualitatively during the examination process as necessary.

Drawing requirements

There are certain requirements and practical considerations for drawings (or photographs) submitted in a design application.

• Format of drawings/photos: In Mexico, both line drawings (drawings) and photographs are accepted as illustrations showing the design. In many cases, drawings (rendered diagrams) created with CAD, etc. are used, but due to the nature of the design, if line drawings cannot sufficiently show the characteristics, it is recommended to submit photographs. Drawings and photographs can be submitted in black and white or color.
• Number and content of views: To fully disclose the design, the applicant submitsthe necessary multiple views. There are no clear regulations regarding the minimum number of visual drawings that must be submitted, and the applicant must prepare enough drawings to sufficiently specify the shape and pattern of the design. Normally, if it is a three-dimensional object, submit a front, back, side, top, bottom, or perspective view, and if it is a flat pattern, a pattern drawing, etc. will be submitted. It is important to submit drawings that disclose all the essential parts of the design.
• Description of the design: The application may include a Description that supplements the submitted drawings. In the explanation, include a brief explanation of each figure submitted (e.g., "Figure 1 is a front view of the product, Figure 2 is a right side view...", etc.) and supplementary information about the features of the design. In particular, if there are parts drawn with broken lines or dotted lines in the drawing, it is common to clearly state in the explanation that these are parts that are not claimed as a design.
• Other points to note about drawings: As a general rule, drawings must be clean images without dimension lines, scales, explanatory text, etc. When taking photos, be careful not to include the background. Mexico has an electronic filing system in which drawing data is electronically uploaded when filing online.

Protection period

The duration of a Mexican design right is calculated from the filing date. Once a design is approved for registration, it is granted a protection period of 5 years starting from the filing date. This 5-year term automatically occurs on the filing date, so the rights for the first 5 years are secured at the time of registration.

Under old Mexican law, the duration of a design was 15 years (non-renewal), but the period was extended due to the 2018 law reform and the new Industrial Property Law that went into effect in 2020. This allows protection for up to 25 years in line with Western countries and the international Hague System. Regarding the renewal procedure, you only have to pay the renewal fee before the expiration of each five-year period, and if you forget the deadline, you may be granted a grace period (usually late payments of less than six months will be accepted with a surcharge).

Other related systems

Priority

Mexico is a party to the Paris Convention, and it is possible to claim priority by filing an application in Mexico within 6 months of the earliest design filing date in a foreign country, including Japan. \nIf you are claiming a priority right, you must declare the priority date and country of priority application at the time of filing in Mexico, and then submit an official certificate of priority application (priority document, a certified copy by the patent office of the country of filing) within three months thereafter. If the priority document is in a language other than Spanish, a Spanish translation must also be attached. In addition, a prescribed fee must be paid to IMPI for each priority claim.

Application published

Mexico has adopted an early application publication system for design applications. After passing the formality examination, the application contents are immediately published in the official gazette (Industrial Property Gazette), and as a general rule, there is no system for keeping the application private. An opposition can be filed within a specified period of time (under current law, 3 months) starting from publication, and the contents of the design will be made known to the public as soon as possible. Therefore, if you are planning to apply for a trademark or publish a copyrighted work before filing, it is recommended that you take a strategy of filing the design application in advance, keeping in mind the risk that such publication will impair the novelty of the design.

Amendment/change of design

As a general rule, changes and modifications (amendments) to the contents of a design application after filing are limited to the scope of the contents disclosed at the time of filing. Adding new drawings or changing the shape of the design is not permitted as this will change the gist of the application. On the other hand, if it is pointed out in formality examination or substantive examination, amendments that substantially change the scope of the design, such as correction of minor errors or supplementary explanation for clarification, are permitted.

For example, typical examples include correcting incorrect reference numbers in drawings, or adding explanatory text to supplement the meaning of broken lines. In addition, if the examiner points out that it violatesuniformity requirements, you candivide the application and transfer some of the designs to a separate application. In Mexico, it is possible to change the design name and applicant information stated in the application, but as a general rule, changes in name (change in applicant) after filing are limited to assignments, and registration with IMPI is required.

Partial design

Although there is no institutional distinction in Mexico like "partial designs" in Japan, it is practically possible to file a design application to protect only a part of a product. In that case, a method is used in which a drawing depicting the entire product is drawn in which only the parts for which the rights are claimed are drawn with solid lines and the rest are drawn with dashed lines, etc. By clearly stating in the explanation that the dashed line is not the part for which you are seeking design registration, you can obtain rights only for the part shown in solid lines.

For example, if you want to protect only the design of the smartphone screen icon, you can show the outline of the smartphone body with a broken line, and draw the icon part with a solid line in color when filing an application. In this way, even partial design elements can be substantially protected by careful drawings.

Whether multiple designs can be filed in one application

In Mexico, it is possible to include multiple designs (aspects) in one design application. However, this is only possible if the multiple designs are closely related to each other and are deemed to constitute a single design concept. The examiner will consider the common features of each design included in the application and determine whether theunity requirement is met.

For example, if there are different variations of a chair based on the same concept (such as the presence or absence of armrests), it may be acceptable to combine them into one application. If you file a combination that does not meet the uniformity requirements, you will be required to file adivisional application during the examination process. Note that in Mexico, there is no system in which each design is linked in a separate application, unlike the related design system in Japan. There is no formal link between the divided applications and each has its own rights.

Infringement and enforcement of design rights

Remedies for infringement of design rights in Mexico are mainly carried out through administrative procedures. The Industrial Property Institute (IMPI) is an organization with jurisdiction over the protection of intellectual property rights, and has the authority to determine whether there is a violation of design rights and issue orders such as injunctions. Article 213, No.

The act of manufacturing and selling a product that closely resembles a registered design falls under infringement if it is determined to be imitation, even if there are slight differences in design. If a design right holder discovers a product that is suspected of infringing, he or she can file an administrative injunction application (declaration of infringement) with IMPI. If IMPI investigates and finds that there is an infringement, it can issue an injunction or halt production or sales to the infringer, and in some cases, impose measures such as seizure or confiscation of the product or fines. Infringement determinations through administrative procedures generally take about one year to reach a conclusion, although it depends on the case.

In addition to the administrative remedies provided by IMPI, design owners can also bring civil lawsuits to enforce the injunction and claim damages. However, in Mexico, the IMPI first determines whether there is an administrative violation, and the results are often reflected in civil compensation claims, and compared to other countries, it is distinctive in that administrative enforcement is the main focus. Infringement of design rights is usuallynot subject to criminal penalties. In addition, the customs office (customs authority), as an auxiliary agency of IMPI, cooperates in interdicting counterfeit products based on requests from IMPI.

Relationship with international applications (Hague Agreement)

Mexico has recently joined the Hague Convention (Geneva Act 1999), an international design registration system. The instrument of acceptance of accession was deposited with WIPO on March 6, 2020, and the Hague Agreement entered into force for Mexico on June 6, 2020. Once an international registration application designating Mexico is published and sent to IMPI via WIPO, IMPI examines it in the same way as a home country application.

Mexico has established several declarations and appendices upon joining the Hague Agreement. The main points are as follows.

• One design, one application (unity) requirement: Under Mexican law, when multiple designs are included in one application, there is a requirement that only a single design concept be included. This requirement also applies to international design registration applications. Even if you file multiple designs at once, if you specify Mexico, IMPI may ask you to divide the application.
• Timing of publication: The Hague Agreement allows for a publication deferral that delays the publication of international registrations by up to 30 months, but Mexico has declared that it does not recognize this delay option. Therefore, for international design applications that designate Mexico, examination will begin in Mexico as soon as the application is published by WIPO.
• Examination and Notification Procedures: IMPI conducts the same substantive examination for international design applications as for domestic applications, and issues a Refusal if the requirements are not met. This notification of refusal must be made within12 months of the publication of the application for Mexico. If no notification is received from IMPI within 12 months, the international registration remainsine granted protection in Mexico. If a notification of refusal is issued, the applicant must respond to IMPI within2 months (+2 months extension possible).
• Final registration and renewal: For international designs determined by IMPI to be granted protection, a notification to that effect will be sent via WIPO and a final registration fee will be required. The applicant can pay the prescribed registration feewithin two monthsdirectly to IMPI (in Pesos) or in Swiss Francs through WIPO. The duration of the design right after registration and the renewal procedure are the same as for domestic applications, and it can be protected for up to 25 years with renewal every five years starting from the date of international registration.

When a Japanese company seeks to protect a design in Mexico, there are two ways: (1) Direct application (filing with IMPI through a local agent); (2) Designation of Mexico in the Hague International Application. In the latter case, there are advantages of unifying the procedures and filing in English, but it would be desirable to have expert support in terms of the complexity of responding to notices and dealing with split applications.

Comparison table of main items

Below is a table summarizing the main items regarding Mexico's design system.

Item	Overview (Mexican design system)
Protected	Decorative appearance of industrial or handicraft products. Applies to 2D (design drawings) and 3D (design models) designs. Purely functional shapes are not protected.
Registration requirements	Novelty (clearly different from known designs) and industrial applicability are required. The shape and pattern must not be too similar to existing designs. Features that rely solely on functionality cannot be registered.
Novelty exception	If the application is filed within 12 months of publication by the creator (right holder), the publication will not prejudice novelty (grace period). Applicable to exhibition exhibitions, company website postings, etc.
Application procedure	After submitting the application to IMPI, formality examination → Publication of application → Opposition period (3 months after publication) → Substantive examination → Rights arise upon registration assessment and registration fee payment. If all goes well, registration will takeapproximately one and a half to two years from application.
Drawing requirements	Submit a detailed representation of the design in drawings or photographs. Includemultiple viewsas necessary to sufficiently show the overall shape and pattern of the product. An explanation of the drawing can be attached to clarify parts that are not claimed, such as parts indicated by broken lines.
Protection period	Valid for 5 years from the filing date. It can be renewed every 5 years thereafter and can be extended for up to 25 years. It can be updated up to 4 times (total of 25 years).
Priority	Based on the Paris Convention, priority can be claimed if the application is filed within 6 months from the date of the earlier application in a foreign country such as Japan. You must declare your country and date at the time of application and submit a priority certificate (with Spanish translation) within 3 months.
Partial design	Partial design system is no clear statement. However, by drawing only the parts of the product you want to protect as solid lines and using broken lines for other parts, it is possible to obtain rights to partial designs.
Multiple designs in one application	Possible (multiple aspects can be applied). However, only designs that belong to asingle design concept. If the uniformity requirements are not met, a divisional application will be directed. There is no related design system.
Infringement/Enforcement	Focus on administrative measures. IMPI will determine whether or not it is an infringement (imitation), and if it is found to be an infringement, it will suspend production and sales and impose an injunction and fine. Decisions are usually made approximately one year after the petition is filed.
International Application (The Hague)	Affiliated (effective June 2020). It is possible to specify Mexico in a Hague application from Japan. The examination standards and procedures by IMPI are the same as for domestic applications. Uniformity requirements also apply to international applications. Publication cannot be postponed.

References

• World Trademark Review - Octavio Espejo Hinojosa, "Protecting and enforcing design rights: Mexico" (November 14, 2019)
• JETRO (Japan External Trade Organization) "Survey Report on the System and Operational Status of Anti-Counterfeit Products in Latin America" (March 2022) - "United States of Mexico" Chapter
• Chambers and Partners - Janett Lumbreras, "Prosecution of International Designs in Mexico" (September 28, 2023)
• WIPO Magazine - "A new provision of the 2018 Industrial Property Law reform..."
• Independent Administrative Agency Industrial Property Information and Training Center (INPIT) Overseas Industrial Property Information
• iPNOTE Blog - Patricio Gonzalez, "Navigating the Design Registration Process in Mexico: Tips for Success" (October 16, 2024)
• Ley Federal de Proteccion a la Propiedad Industrial, WIPO Hague System materials, etc.