Trademark enforcement procedure
What types of legal or administrative proceedings are available to assert the rights of a trademark owner against an alleged infringer or dilutive use of a trademark, apart from the opposition and cancellation actions mentioned above? Are there specialized courts or other tribunals? Is there a provision in criminal law regarding trademark infringement or equivalent offense?
The execution of trademark registrations should be carried out before the Mexican Institute of Industrial Property by means of an action for infringement.
In these types of actions, the plaintiff can claim the unauthorized use of an identical or similar mark to the point of confusing, being always necessary that such use be made in connection with the same or similar goods or services. to those covered by the corresponding registration.
In addition, the manufacture, transport, distribution and marketing of counterfeit products are activities that constitute crimes that can be prosecuted by means of criminal proceedings before the Federal Prosecutor’s Office.
Format and timetable of the proceedings
What is the format of the infringement procedure?
The administrative infringement procedure begins with filing a complaint with the Mexican Institute of Industrial Property. Along with the claim, the claimant must present and attach all documents offered as evidence. The documents must be submitted in original or in certified true and legalized copies, accompanied by their Spanish translation if they are written in a different language.
The federal law for the protection of industrial property allows the presentation of all types of evidence. The only specific requirement is that confessions and testimony be given in writing.
Once the claimant’s summons has been accepted, the Institute orders the service of the alleged infringer, who will have 10 working days to file his brief in response and supporting documents.
Under Mexican procedural law, the complainant has three days to refute the exceptions and evidence submitted by the alleged infringer.
Thereafter, the Institute will give both parties a period of five to ten days to submit their final allegations. At the end of this mandate, the Institute will be able to start drafting its decision.
The continuation of an infringement proceeding can generally last from seven to twelve 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, the burden of proof rests on the applicant to prove the fact on which an infringement is alleged.
However, the alleged infringer also has the burden of proof of demonstrating the facts on which the exceptions are opposed (for example, the existence of a parallel import status for the infringing goods).
Who can seek redress in the event of alleged trademark infringement and under what conditions? Who has standing to lodge a criminal complaint?
In accordance with the Federal Law for the Protection of Industrial Property, the owner of a trademark registration and duly registered licensees can initiate infringement and criminal actions.
If a registrant wants to prevent licensees from seeking redress for an alleged trademark infringement, such prohibition must be expressly contained in the corresponding license agreement.
Border control and foreign activities
What border enforcement measures are available to stop the import and export of counterfeit goods? Can activities that take place outside the country of registration justify a charge of infringement or dilution?
Only activities carried out on Mexican territory can be considered as constituting an infringement, since the legal effects of trademark registrations are limited to Mexico.
It is possible to register marks in the database of customs marks. This database has a dual purpose of speeding up inspection and customs clearance procedures for registered importers, license holders, etc. holders. This allows them to bring the relevant legal actions to protect their trademark rights as early as possible.
According to this database, customs services are able to effectively detect the importation of counterfeit or counterfeit goods and provide essential support to relevant government agencies (the Mexican Institute of Industrial Property and the Office of the Attorney General ) to act in these areas, because customs authorities can only act by way of an order issued either by one of these bodies or by a judge.
What discovery or disclosure devices are allowed to obtain evidence from an opposing party, third parties or parties outside the country?
Mexican law does not recognize or regulate discovery as understood in other jurisdictions.
However, a special provision of the Federal Law for the Protection of Industrial Property provides that if an applicant or a suspected infringer has provided all the evidence under his control and declares that a certain piece of evidence is in the power of its counterpart, the Mexican Institute of Industrial Property, can order the exhibition of such documents or objects.
In such cases, the authority should take all necessary measures to protect the disclosure of documents or information which may constitute confidential material.
What is the typical timeframe for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?
The typical timeframe for an infringement action before the Mexican Institute of Industrial Property is seven to 12 months, depending on the amount and nature of the evidence submitted.
Once a decision is rendered, its review before the Federal Court of Fiscal and Administrative Justice can take from eight to twelve months.
Finally, decisions rendered by the Federal Court can be challenged by judicial appeal (amparo) which can be decided within six to eight months.
What is the limitation period for bringing an infringement action?
There is no limitation period for bringing an infringement action. However, there is a two-year limitation period for claiming damages which must be taken into account because in order to make such a trademark rights claim, the trademark owners must first obtain a decision from the Mexican Institute of Industrial Property indicating that an infringement has occurred.
According to the Federal Law on the Protection of Industrial Property, the declarant can claim damages directly before the Federal Supreme Court, in which case the two-year period must always be taken into account.
What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?
The costs of infringement litigation depend on many factors, such as the location of the premises of the alleged infringer, the number of premises, travel costs, the type of evidence to be provided and whether protective measures are requested. Thus, a bond must be posted whether or not the alleged infringer appears before the Mexican Institute of Industrial Property, as well as government fees.
In contrast, in Mexico, there are no standardized tariffs or guidelines for professional fees, which may vary depending on the firm engaged. Therefore, it is important to work closely with the lawyer to develop a strategy that saves time and is profitable.
What remedies are available?
The decisions of the Mexican Institute of Industrial Property can be challenged either by an administrative appeal before the Institute or by an action for nullity before the Federal Court of Fiscal and Administrative Justice, which has a chamber specializing in matters of intellectual property.
Subsequently, decisions rendered by the Federal Court can be challenged by judicial appeal (amparo) which must be filed in a circuit court.
What defenses are available for a charge of infringement or dilution, or any related action?
An alleged infringer could structure a parallel import defense if the goods concerned were lawfully brought into the Mexican market by the trademark owner or a licensee.
Another course of action would be to oppose the previous use of the same mark or of a mark similar to the point of causing confusion in Mexican territory in relation to products or services identical or similar to those covered. by the registration on which the infringement is alleged.
In addition, the alleged infringer could challenge the validity of a trademark registration, or oppose its name or corporate name, if it was adopted before the filing date of the registered trademark or that indicated at the time of registration. first use.
What are the remedies available to a winning party in an infringement or dilution action, etc. ? What criminal remedies exist?
During the prosecution of the infringement action, or prior to its filing, the plaintiff may request the adoption of provisional measures to prevent the infringement behavior from continuing for the duration of the dispute.
These interim measures may consist of the seizure of property, the closure of premises, orders to suspend business or service activities related to infringing behavior, or the recovery of allegedly infringing goods.
Likewise, the plaintiff can claim damages from the Mexican Institute of Industrial Property. The plaintiff also has the option of claiming damages directly in Federal Court, without the need for a prior declaration of infringement.
Damages are awarded in an amount equivalent to at least 40 percent of the public selling price of each product or of the price of the provision of services involved in the alleged infringement.
Are ADR techniques available, commonly used and applicable? What are the benefits and the risks?
Depending on the nature of the goods, services, individuals or businesses concerned, the owner of a registered trademark may submit his case to a non-governmental association, such as an industrial chamber.
However, the decisions rendered by these associations are not enforceable beyond the sphere of the association and would therefore have no legal effect.
In addition, in order to be able to claim damages, it is essential to obtain a decision from the Mexican Institute of Industrial Property which declares the existence of the alleged violations.