• (230) 4278861, 4260399

Enforcement of IPRs in Mexico


Enforcement of IPRs
Mexico is among the top five countries that are known to produce and consume counterfeit and pirated goods. The main challenge lies in the fact that the administrative measures are weaker to enforce the IPRs. Also, excessive formalities and requirements placed on the IP rights holders brings forth the issue of balance of convenience.
Mobile phones, apparels, etc. most often face counterfeiting and piracy in Mexico.
The most pertinent legislation is the Industrial Property Law.
Copyright, Trademarks, Designs, Patents, and Layouts of Integrated Circuits are the different types of IPRs protected by IPR enforcement in Mexico.
Foreign trademark registrations are invalid and unenforceable in Mexico. Their existence is relevant only when the IMPI is analyzing the registrability of a trademark in Mexico; however, it is not mandatory for the IMPI to consider them. Therefore, before seeking an action against an infringing act, it is preferable to register and record an IPR, especially in the instance of a trademark.
There is no need for a cease and desist letter before bringing a suit. Whether a letter is sent depends on the specific circumstances of the case. Usually, cease and desist letters work well when alleged infringers are individuals or companies duly established in the market, or when it is possible that the infringement is carried out without bad faith.
Before sending a cease and desist letter, it is recommended to obtain or document the infringement for evidential purposes. If the letter does not receive a response, a notarial or public attested certification of facts should be obtained.
Yes - Under Article 79 the Federal Law for Administrative Procedure (which is applicable in a supplementary manner to any trademark-related legal action), the IMPI can impose a fine only within 05 years from the moment the act considered to be an infringement was committed.
If the infringing act is continuous, the statute of limitations of 05 years will begin from the date on which the allegedly infringing act stopped.
A) Government Authorities - Yes
B) Police Officials - Yes
C) Judiciary - Yes
D) Customs - Yes
A) Injunctions - Yes
B) Monetary Compensation – Yes
C) Raids - Yes
D) Seizures – Yes
E) Destruction - Yes
The first stage of the infringement proceeding (prosecuted before the IMPI) usually takes approximately 01 year to be completed.
The second stage (prosecuted before the Federal Court of Administrative Affairs Specialised Chamber in IP Matters) also takes approximately 01 year to be completed.
The final stage (prosecuted before a federal circuit court) usually takes 06 months to be completed.
A) Responsible Authority - Specialized Prosecutor’s Office, Mexican Institute of Industrial Property (IMPI), Federal Court of Administrative Affairs Specialised Chamber in IP Matters, Attorney General’s Office
B) Imprisonment Term - Trademarks: up to 10 years; Copyright and Patents: up to 06 years
C) Monetary Fine - Trademarks: up to 20,000 days of the minimum wage, (approx. $80,000); Copyright: a fine equal to 3,000 days to 30,000 days of minimum wage; Patents: fine up to $800,000
Criminal actions can only be brought against more serious nature of offences, like what is commonly known as 'piracy' or 'counterfeiting' (i.e., when an individual falsifies a trademark or copyright to use it on goods or services in an attempt to imitate a genuine good or service commercialized by the original mark's owner). Therefore, the level of punishment may not always be deterrent in instance wherein the criminal proceedings cannot be initiated.
Depending on the nature of the dispute, it is possible to use ADR or arbitration (for example, damages or contract obligations breach involving IPRs). However, disputes related to the annulment or lapsing of trademark registrations must be resolved by the Mexican Industrial Property Institute (IMPI) in the first instance. The IMPI is not entitled to recognize the decisions by arbitral courts or mediation bodies.
The remedies available under border control measures (customs) in Mexico include forfeiture and destruction of infringing goods.
The applicant must bear the costs of the customs intervention during enforcement.
If an IP rights holder abuses the enforcement measures in Customs Recordal, the customs shall no longer be obliged to act pursuant to the request made by the proprietor. Any such request shall be treated as if it has been abandoned.
Court Proceedings