oriGIn Alerts 03 May 2018: #Japan #Singapore #EU #Mexico

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#Japan #Singapore #EU: Trade agreements covering GIs toward conclusion and ratification

On 18 April, The Commission presented to the Council the outcome of negotiations for the Economic Partnership Agreement with Japan and the Trade and Investment agreements with Singapore

Once approved by the Council, the two agreements will be sent to the European Parliament for ratification. The European Commission expects the entry into force before the end of its current mandate in 2019.


#EU #Mexico: New agreement on trade covers GIs

On 21 April, the EU and Mexico reached an in principle agreement towards the modernized Global Agreement: http://trade.ec.europa.eu/doclib/press/index.cfm?id=1833 and https://www.gob.mx/se/prensa/comunicado-conjunto-de-los-comisionados-malmstrom-y-hogan-y-el-secretario-de-economia-de-mexico-guajardo-villarreal

On the GIs chapter (not yet available):

  • More than 340 EU and Mexican GIs will be protected through the agreement; 
  • The protection is solid as it covers translation, delocalisers and “style”, “type”, “method”, etc.;
  • The 1997 Spirits Agreement between Mexico and the EU will be incorporated into new agreement, so any more robust protection conferred by the new trade agreement will apply to spirits GIs as well;
  • There will be limitations concerning the full protection of some EU GIs in Mexico, for which oriGIn is asking clarification and further details to the EU. 


#Mexico: Reform of the Industrial Property Law

The Reform of the Mexican Industrial Property Law (“Decreto por el que se reforman y adicionan diversas disposiciones de la Ley de la Propiedad Industrial“, hereinafter “The Decree”) entered into force on 27 April 2018.

While the inclusion of Geographical Indications (GIs) – article 157 – which will be available together with the existing Appellations of Origin (AO) scheme, as well as the introduction of a procedure for the recognition of foreign GIs and AO – Chapter V – represent positive steps, some provisions of the Decree seem to contradict the international rules on GIs and AO. In particular:

  • Art. 163. VI (“It cannot be protected as an AO or a GI: … The translation or transliteration of a non-protectable AO or GI”): this provision has no precedent in international and national legislation on GIs (the concept of “non-protectable” GIs and AO is extremely ambiguous) and is in contradiction with another provision of the Decree. If an AO / GI is registered in Mexico, it will be protected according to the law (Article 213. XXXI of the Decree covers translation and transliteration: It will not be possible to “use the translation or transliteration of a foreign or national protected AO/GI recognized by the Institute, for the same products or similar products”, including for services). If the registration is refused (based on grounds compatible with international rules), the protection will not be granted to the name at issue, nor to its translation, transliteration. If Mexico applies this provision, it would breach its international obligations under the Lisbon Agreement (art. 3), the TRIPS Agreement (art. 23) and its legislation would not be consistent with art. 11.2 of the Geneva Act of the Lisbon Agreement; 
  • With respect to the procedure for the recognition of foreign AO / GIs, art. 177 (“The recognition of a foreign AO/GI does not produce effects vis-à-vis third parties who market, distribute, purchase or use a product bearing the AO/GI name at issue, if such product had been legally introduced in the country by its holder or licensee. This case includes the importation of legitimate products bearing a foreign protected AO/GI made by any person for its use, distribution or commercialization in Mexico”) is extremely problematic. Once protection is granted to a GI / AO, any infringement must be stopped (the concept of accepting a product’s name infringing a protected AO/GI, legally introduced in the country” before protection is granted, is not compatible with well-established GIs rules and IPRs principles). If Mexico implements such a provision, it would breach its international obligations under the Lisbon Agreement (art. 3 and 5), the TRIPs Agreement (art. 22 and 23), and its legislation would not be consistent with Article 11 of the Geneva Act of the Lisbon Agreement.

oriGIn has sent these comments to relevant Mexican authorities.  


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