Custom Recordal of IPRs
Mexican law provides no means by which a trademark owner can officially request the government department responsible for customs control (i.e., the General Customs Administration) to directly protect or enforce IP rights because the government agencies have no legal powers to do so. However, the customs authorities do have a role in the enforcement of IP rights when a competent authority (i.e., IMPI, the FGR, or a judge) issues an order or warrant to enforce said rights.
There is no formal method of recording IPRs with the customs; however, a request can be made to the authorities to enforce the IPRs by issuing an order or warrant to enforce the said IPR.
The procedure of recording the IPRs with the customs authority is effective on both imports and exports.
Mexican customs authorities have been in charge of operating a database of trademark owners that serves both as a watchlist and a source of information that the customs officials resort to in order to better identify shipments carrying suspicious merchandise. The aim is to pass information to other authorities and trademark owners or their registered representatives in Mexico so that they can lodge formal legal action with the intention of detaining or seizing the shipment before clearing the customs procedures. They do not have any ex-officio measures.
It is possible to register a Customs watch application before the Customs Division of the Tax Administration System (Customs), which is a mechanism for identifying, at the Customs, the imported goods that could infringe trademark rights. The request is made by a written petition in which the list of trademark(s) and other relevant information is provided.
For recording purposes, the following information and documents are necessary:
- Trademark and registration numbers before the Mexican Industrial Property Institute (IMPI).
- Name and general information of the owner or authorized licensee of the trademark registrations.
- Name and contact information of the legal representatives or attorney-of-record of the owner of the trademark registrations.
Formal power of attorney issued in favour of the representatives or attorneys-of-record of the trademark owner. The power of attorney must show that the attorneys can lawfully bring actions and suits. The power of attorney must be notarized and legalized by apostille.
Customs identification numbers of the imported products covered by the related trademarks.
- Detailed descriptions of the related products, including specifications, features, and important data that may be relevant to distinguish the original product from counterfeits or lookalikes. It is not necessary to disclose confidential information relating to the products.
Names and all other relevant information associated with authorized distributors and/or importers of the products in Mexico. When a shipment arrives from a different company, the customs will raise an alert and contact the attorneys-of-record for the trademark registrations to confirm the products' authenticity.
- Photographs of the goods and, if applicable, the design of their packing or packing material.
Yes, Mexico has a centralized system.
No, a written request has to be filed.
There is no official fee for recording the IPRs with the customs.
A Customs watch application can be implemented at any time and lasts as long as the trademark registration remains valid and in full force.
The customs suspend the clearance of imported goods upon finding that a merchandise may have infringing goods. These are then retained for a period of 03 to 05 days in which the licensee or the owner has to request for further action, including the filing of a criminal complaint or the request for precautionary measures.
The applicant bears the liabilities and expenses related to suspension of the release of infringing goods.
Intimation of such sort is usually given at the earliest on finding any merchandise, which may be of infringing nature, after the request of recordal is made by the applicant.
The customs inform the rights holder about the presence of such goods, after which, the holder is allowed to decide the further course of action.
When the customs report on a finding, they retain the merchandise for 03 to 05 days in which the owner or licensee of the trademark must file either a:
- Request for the enforcement of precautionary measures and/or infringement actions before the Mexican Institute of Industrial Property; or
- Criminal complaint before the Attorney General's Office requesting the seizure of the counterfeited goods.
The possible remedies awarded by the court include forfeiture and destruction of infringing goods.