Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

There are civil and criminal proceedings available against trademark infringement. Administrative procedures are not available for that purpose. The criminal proceedings are of public action, meaning that the IP Prosecutor shall act if he or she learns of a trademark infringement (the least of the cases), and he or she will act when the rights holder denounces criminal offences against its trademark rights.

Civil proceedings are available for trademark dilution and for trademark infringements.

Border enforcement mechanisms are available through the courts. Border officers are not empowered to act ex officio before a suspicious import or export for which they may have reasonable grounds to believe that it infringes trademark rights; rather, the rights holder or a customs or border officer, when presented with reasonable evidence that an import may infringe trademark rights, may request a judge for customs measures.

There are no specialised tribunals or courts to deal with trademark infringement cases. Regarding criminal offences, there is a specialised intellectual property prosecutor office.

Procedural format and timing

What is the format of the infringement proceeding?

Criminal procedures are filed before the Permanent Attention Bureau of the Prosecutor’s Office; the file is further transferred to the IP Prosecutor’s Office (IPO). The rights holder shall bring before the IP Prosecutor, evidence of its right and evidence of the alleged infringement. The IPO will verify the information and conduct its own investigation, and if it finds there are reasonable grounds, it may request the judge to initiate the case and request raid and seizure orders. If no person is arrested, a six-month period will be granted to complete investigation; at the end of the six-month period, the judge will decide if the case is closed or it is suspended until new evidence is presented. If individuals are arrested as a result of the raids or other executed measures, a three-month period devoted to conclude the investigation is granted; at the end of such a period the conclusions of the investigation are to be presented as well as the accusation against the defendants. After accusation, the judge will set the date and time for oral debate and will issue sentence immediately after the oral debate. Against the judge’s sentence, the ‘special appeal’ may be filed.

Criminal trials, depending on their complexity, may last from eight months up to three years (or even longer).

IP civil proceedings are to be addressed through the ‘oral civil process’. The rights holder should file suit, including identification of all evidence to be offered for the case. Along with the suit, injunctions can be requested. The judge will evaluate the facts and the rights at sight and may grant the injunctions prior to the first hearing. The proceeding is developed through oral hearings (up to three; however, if there is a countersuit by the defendant in first hearing, there could be more hearings).

The judge shall issue sentence after the final hearing. Depending of the recourses and other legal defences (ie, amparo action) used by the parties, the proceeding may last one to three years, including appeal proceedings.

Both civil and criminal proceedings may be interrupted by the promotion of the amparo action (action used to obtain protection against alleged violations to constitutional rights, such as due process), which will result in substantial delay to the completion of the proceedings.

Burden of proof

What is the burden of proof to establish infringement or dilution?

Regarding trademark infringement cases, the burden of proof resides on the plaintiff. The only case in which there is a reversal of the burden of proof is in the civil oral proceeding for trademark cancellation on the grounds of failure to use.

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

Trademark owners or exclusive licensees (unless the licensee has been expressly denied such power in the licence agreement) may seek for remedy before trademark infringement (civil or criminal). The trademark owner shall bring before the competent authority evidence of its right and evidence of the infringement.

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

The available measures are restricted to the suspension of the dispatch of the imported or exported goods for a period of 10 days, in which they will be inspected by the presumed affected in the presence of the authority, the consignee and any other interested so the evidence that supports an action for infringement can be obtained. Documents or activities that take place outside the country of registration may support arguments related to trademark infringement or dilution. For example, affidavits, administrative acts and court decisions issued in another country where a case has been or is being discussed may be invoked in support of an alleged infringement, for which one must obtain certified copies of the documents in the given country and comply with the correspondent consular authentication (and translation into Spanish if the documents are in a foreign language) in order to submit it in court.

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

Discovery of documents is allowed in civil proceedings. A party in the proceeding who needs to support its arguments in a document that is under control of the adversary or a third party (including documents outside of the country) may request it to the judge, submitting a copy of such document or at least, data showing that the petitioner knows about its content; the party requesting discovery of documents shall prove that such document is in the domain or has been in the domain of the adversary or third party.

If the document is outside the geographical territory of competence of the judge or court or outside the country, the proceedings for requesting it should comply with the correspondent formalities through a petition that the judge or court shall address. If the documents are located outside the country, the judge shall direct the petition via the Supreme Court. These proceedings take time to be executed.

Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

In civil proceedings, preliminary injunctions are typically decided within one month counted from the date on which the lawsuit is received (lawsuits are not filed directly before the tribunal, but are filed at the administrative distribution centre (electronic distribution); a lawsuit is normally delivered to the assigned tribunal three days after having been submitted). Once the trial is in progress, one can request injunctions at any time before the case is decided. Injunctions cannot be requested in appeal proceedings.

In criminal proceedings, preliminary injunctions are requested in the preparatory phase; during the trial phase, one may request additional injunctions. Injunctions cannot be requested when appealing or during the appeal process.

Limitation period

What is the limitation period for filing an infringement action?

The infringement actions must be exercised within two years after the rights holder became aware of the infringement, or, five years after the infringement was last incurred, the term that expires first.

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

Litigation costs will vary depending on the case, its complexity, evidence needs and other criteria; quotes are provided upon revision of the case facts and rights related to the facts.

Appeals

What avenues of appeal are available?

Final decisions in a civil or criminal proceeding are subject to appeal.

Administrative decisions from the Trademark Office proceedings can be reviewed via a ‘contentious administrative’ judicial process; a decision that is further subject to a cassation process before the Supreme Court.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

Both civil and criminal proceedings guarantee due process and the right to defence. Therefore, a defendant will have the opportunity to be heard and to submit evidence before a claim. In civil oral proceedings, the defendant may, at the first hearing, countersuit, and the proceedings will be developed in parallel.

Regarding criminal proceedings, the alleged infringer will have the chance to present evidence to vanish the claimed offence before the IP prosecutor; however, as in civil cases, the judge may order preliminary injunctions previous to serving notice of the claim to the defendant.

A defendant, declared innocent, may act against the plaintiff to claim damages.

Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

A successful party in an action for infringement or dilution will be entitled to claim damages and loss (monetary relief). The law provides for alternatives to establish damages, including statutory damages.

The judge may also decide to grant injunctive relief, ordering the adoption of actions or prohibiting actions to avoid recurrence of the infringement and ordering the defendant disclose all the information related to other individuals or entities involved in the commission of acts that lead to the infringement, means to carry out the infringement, distribution systems and others.

Regarding infringing merchandise, the judge will order destruction of the counterfeit merchandise; however, the judge may also order a donation to a charity entity, removing labels and signs.

In criminal cases, remedies available to a successful party also include monetary relief and injunctive relief.

ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

The Arbitration Law excludes from arbitration those matters that, in a given law, have an established proceeding. Therefore, a trademark infringement cannot be subject to arbitration. Nevertheless, IP contractual matters may be subject to arbitration. Benefits of arbitration reside in more expedited procedures and specialised arbitrators.