EnforcementTrademark 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?
The enforcement of trademark registrations should be made before the Mexican Institute of Industrial Property by means of infringement action.
In these types of actions, the plaintiff can claim unauthorised use of an identical or a confusingly similar mark, it being always necessary that such use is performed in connection with goods or services that are identical or similar to those covered by the corresponding registration.
Additionally, manufacturing, transportation, distribution and commercialisation of counterfeit goods are activities that constitute felonies that may be pursued by means of criminal actions before the Federal Prosecutor’s Office.Procedural format and timing
What is the format of the infringement proceeding?
The administrative infringement procedure commences with the filing of a claim before the Mexican Institute of Industrial Property. Together with the claim, the plaintiff must exhibit and attach all documents offered as evidence. Documents must be submitted in the original or as certified and legalised copies and accompanied by their Spanish translation if they are drafted in a different language.
The Mexican Law of Industrial Property allows submission of all types of evidence. The only particular requirement is that confessions and witness proof should be rendered in writing.
Once the plaintiff’s writ is admitted, the Institute orders the service of the alleged infringer, who will have a 10-working-day period in order to file its responsive brief and supporting evidence.
According to Mexican procedural law, the plaintiff has a three-day term in order to rebut the exceptions and evidence submitted by the alleged infringer.
Thereafter, the Institute will grant both parties a five to 10-day term in order to submit final allegations. Once this term expires the Institute will be able to commence with the drafting of its decision.
Prosecution of an infringement procedure may typically last seven to 12 months, depending on the amount and nature of the evidence submitted by the parties.Burden of proof
What is the burden of proof to establish infringement or dilution?
As a general rule, it is the plaintiff who has the burden of proof to demonstrate the fact upon which an infringement is alleged.
However, the alleged infringer also has the burden of proof to demonstrate the facts upon which exceptions are opposed (eg, the existence of a parallel imports status for the infringing goods).Standing
Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?
According to the Law of Industrial Property, the owner of a trademark registration and duly recorded licensees may initiate infringement and criminal actions.
If a registrant wants to prevent licensees from seeking remedy for an alleged trademark violation, then such a prohibition must be expressly contained in the corresponding licence agreement.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?
Only activities performed within Mexican territory may be alleged as infringing conduct as the legal effects of trademark registrations are limited to Mexico.
According to current legislation, it is possible to record trademarks at the Customs Trademark Database. This database has a dual purpose of speeding inspection and clearance procedures of registered importers, licensees, etc, and, at the same time, improve inspection procedures intended to detect counterfeit and IP-infringing merchandise while also establishing reliable information channels to alert owners or rights holders, enabling them to produce the relevant legal actions to protect their trademark rights as early as possible.
According to such database, customs agencies are able to effectively detect the importation of infringing or counterfeited goods and provide much-needed support for the competent government agencies (the Mexican Institute of Industrial Property and the General Prosecutor’s Office) to act in these matters, because the custom authorities may only take action by means of an order issued by either one of those agencies or a judge.Discovery
What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?
Mexican legislation does not recognise or regulate discovery as it is understood in other jurisdictions.
However, a particular provision in the Law of Industrial Property provides that if a plaintiff or an alleged infringer has offered all the evidence they have under their control and states that a certain piece of evidence is in the power of their counterpart, the authority may order the exhibition of such documents or object.
In such cases, the authority should take all the necessary steps to protect the disclosure of documents or information that may constitute confidential material.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?
The typical time frame for an infringement action before the Mexican Institute of Industrial Property is seven to 12 months depending upon the amount and nature of evidence that is submitted.
Once a decision is rendered, its revision before the Federal Court of Fiscal and Administrative Justice may take anywhere from eight to 12 months.
Finally, the decisions rendered by the Federal Court may be contested by means of a judicial appeal (amparo) that can be ruled within a six to eight-month period.Limitation period
What is the limitation period for filing an infringement action?
According to Mexican law, there is no limitation period for filing an infringement action. However, there is a statute of limitation of two years to claim damages that must be taken into account because to make such a claim upon trademark rights, brand owners must first obtain a decision from the Mexican Institute of Industrial Property stating an infringement has existed.Litigation costs
What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?
Costs related to infringement litigation depend on many factors such as the location of the premises of the alleged infringer, the number of premises, travel expenses, the type of evidence to be rendered and whether or not provisional measures are requested. Thus, a bond must be submitted if the alleged infringer appears before the Mexican Institute of Industrial Property or not, as well as government fees.
On the other hand, in Mexico, there are no standardised tariffs or guidelines regarding professional fees, which may vary depending on the engaged firm.
Therefore, it is important to work closely with counsel to come up with a time- and cost-effective strategy.Appeals
What avenues of appeal are available?
The decisions of the Mexican Institute of Industrial Property may be challenged either by an administrative recourse before the same Institute or by means of a nullity action before the Federal Court of Fiscal and Administrative Justice, which has a chamber specialising in intellectual property matters.
Thereafter, the decisions rendered by the Federal Court may be contested by means of a judicial appeal (amparo) that has to be filed before a circuit court.Defences
What defences are available to a charge of infringement or dilution, or any related action?
An alleged infringer could structure a defence upon parallel imports if the involved goods were legally introduced into the Mexican market by the brand owner or a licensee.
Another line of action would be to oppose prior use of the same or a confusingly similar mark within Mexican territory in connection with goods or services identical or similar to those covered by the registration upon which the infringement is alleged.
Additionally, the alleged infringer could challenge the validity of a trademark registration or oppose its name or corporate name if the same was adopted prior to the filing date of the registered mark or the one stated as of first use.Remedies
What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?
During the prosecution of the infringement action, the plaintiff may request the adoption of provisional measures to prevent the infringement conduct persisting during the time of litigation.
These provisional measures may consist in seizure of goods, closing of premises, orders for suspending commercial or service activities related to the infringing conducts or even retrieval of goods alleged to be infringing.
Once there is a final and conclusive decision declaring the existence of a trademark infringement, the plaintiff may claim damages, for which purpose an action would have to be lodged before a civil court.
According to Mexican law, damages are awarded in an amount equivalent to at least 40 per cent of the public selling price of each product or the price of the rendering of services involved in the alleged infringement.ADR
Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?
Depending on the nature of the involved goods, services, individuals or companies, the owner of a registered trademark can submit its case to a non-governmental association such as an industrial chamber.
However, the decisions rendered by such associations are not enforceable beyond the association’s sphere and thus would not have legal effect.
Moreover, in order to be able to claim damages it is essential to obtain a decision from the Mexican Institute of Industrial Property declaring the existence of the alleged infringements.