On June 6, 2020, Mexico acceded to the Hague System for the International Registration of Industrial Designs, governed by the Hague Agreement. Under the Hague Agreement, industrial designs protect ornamental aspects of an object. However, each country has its own legislation for the protection of industrial designs. For example, in some countries, industrial designs are protected under patent law and are known as design patents. In Mexico, in very general terms, industrial designs are regulated under the laws governing inventions and are classified in two categories: (1) industrial drawings (combination of figures, lines, and colors in two dimensions) and (2) industrial models (tridimensional shapes).
The Hague System is attractive to applicants that have worldwide industrial design portfolios, as they may obtain national rights in the 91 Hague-member countries, including Mexico, by simply filing one international application with the International Bureau of the World Intellectual Property Organization (WIPO) in a single language (French, Spanish, or English), and paying a set of fees in one currency (Swiss francs), instead of separately filing in each Hague-member country. While the application is transmitted to each Local Office for examination, the Hague System reduces application fees, limits the examination period by Local Offices to six months (in some instances, up to twelve months), and simplifies the filing and maintenance process. WIPO’s free fee calculator is available here.
Furthermore, WIPO allows applicants the opportunity to record changes of name, address, or ownership across multiple jurisdictions through a single body. Any substantive aspect of industrial design protection is governed by the domestic legislation of the Hague-member countries. Although international applications may include up to 100 different designs that belong to the same class of the Locarno Classification, the Hague System does not standardize drawing requirements. Therefore, it is advisable to seek advice from local counsel to create a filing strategy that complies with the local practice of the Hague countries of interest.
Mexico acceded to the Hague System to comply with the United States-Mexico-Canada Agreement (“USMCA”) (in Mexico officially known as T-MEC, and in Canada officially known as CUSMA in English or ACEUM in French), the EU-Mexico Trade Agreement (in Mexico known as TLCUEM), and the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (“CPTPP”). The Federal Industrial Property Law (“FIPL”) was published in the Mexican Official Gazette on July 1, 2020 and will enter into force on November 5, 2020. The most relevant changes in connection with industrial designs are: (i) acceptance of industrial designs in animated sequences/graphical interface, (ii) acceptance of dashed lines and points for disclaimers, and (iii) change in the duration of industrial designs from fifteen years to five years (renewable for five-year periods up to five times; i.e. twenty-five years total). Although the prior protection of fifteen years complied with the Hague Agreement, this amendment was created to mirror the duration of EU Community Designs. In sum, companies or individuals that are nationals of, domiciled, or have a real and effective industrial or commercial establishment in a Hague-member country, can now designate Mexico in international industrial design applications and seek to secure protection of ornamental features in Mexico in a more cost-effective manner.