World Intellectual Property Rights and Remedies

The Mexican Legal system recognizes the Intellectual property as the set of norms that regulate the prerogatives and benefits that the laws recognize and establish in favor of authors and their successors in the creation of artistic, scientific, industrial and commercial works.

There are two classes of Intellectual Property: The Intellectual Property, same that refers to copyright and artistic creations; and the Industrial Property, same that refers to inventions, utility models, industrial designs, and distinctive signs, all related to the scientific, industrial and commercial activity. Once is regulated through the Mexican Copyright Law, and the other through the Industrial Property Law.

2. PATENTS

2.1 NATURE

A patent is a title deed granted by the Mexican State through the respective government office, in this case, the Mexican Institute of Industrial Property, in virtue of which the holder, has the right to make fully use of the invention in a determinate time and place.

The Mexican Industrial Property Law defines the inventions as all those human creations that transform the energy of nature in order to satisfy the mankind needs.
The Mexican Industrial Property Law indicates three requirements for a person to obtain the patent of an invention[ MANUAL DE PROPIEDAD INDUSTRIAL, Universidad Nacional Autónoma de México, 1st edition, México, 2012.]:

-Novelty: that cannot be found in the prior art, namely, all the public domain technical knowledge.

-Inventive step: the creative process of an invention, whose final results are not obvious because of the method employed in the process for a person skilled in the art.

-Industrial applicability: an invention’s practical utility or the possibility of being made or used in any economic activity for the purposes for which it was created.

The Mexican Law also states that there are some things that cannot be object of patents, such as biological, animal breeds, the human body and the living matter that constitutes it, as well as plant varieties; in connection with this, the Mexican Law does not consider invention the theoretical or scientific principles, previously existing findings about nature, the diagrams, plans, rules and methods for carrying out mental processes for playing games or doing business, mathematical methods, software, methods to present information, aesthetic creations and artistic or literary works, surgical and therapeutic methods and juxtaposition of known inventions, alteration of use, form, dimensions or materials thereof.

2.1.1 CREATION OF RIGHTS

In order to constitute legal rights over an invention, the inventor must obtain the patent over such invention.

The process to patent an invention consists of filing an application before the Mexican Institute of Industrial Property, in which the applicant has to attach the detailed description of the invention, along with the respective blueprints, claims, and a summary of the description. Afterwards, the Mexican Authority performs a formal examination of the same. At this stage, the Authority may require the applicant to make the necessary clarifications or provide further details.

The Mexican Institute of Industrial Property has a term of eighteen months to publish the application on the Mexican Industrial Property Gazzete, in order for any person to provide observations about such application within the next six months.

Subsequently, the Mexican Authority conducts the respective substantive examination in order to determine if the invention in study complies with the requirements of novelty, inventive step and industrial applicability. For this specific step, the Authority may request technical support from national specialized institutes or the equivalent of a substantive examination made in another country in which the invention has a granted patent.

Lastly, if the application is denied, the Authority will notify the applicant in writing. However, if the granting proceeds, the applicant has two months to comply with the requirements for its publication and the payment of the respective government fees for the expedition of the certificate ($200.00 USD). If these requirements are not fulfilled before the mentioned term, the application shall be considered abandoned. In order for the patent’s inventor to maintain the rights over their creation, they must meet the respective payment every year during the patent’s validity.

A priority date may be recognized in México when the applicant has previously filed the application for the same invention in a foreign country, under the following requirements:

-Indicate the country and date of first filing abroad at the moment of filing the Mexican application.
-The Mexican application shall not seek to protect additional rights than the application filed abroad.
-The requirements indicated in the Mexican IP Law and the applicable International treaties shall be complied with within the following three months.

2.1.2 BENEFICIARIES OF RIGHTS

As we have previously mentioned, the person who conducts an invention, has the right to make fully use of their invention in a determinate time and place, however, when the same is invented by two or more people, they will be co-holders of the rights over their invention and therefore, co-inventors. In this sense, if the invention is made by people who share a working relationship, the Mexican Labor Law states three possible scenarios:

I.The employee who took part in an invention has the right to be entitled as author of the same.
II.When it is the employee’s job to research or perfection the proceedings employed in the company, the one who has the rights over such invention, is the employer. However, the inventor has a right to be given a complementary compensation for their invention.
III.In any other case, the property of the invention belongs to its inventor or inventors, notwithstanding, the employer has a preferential right to use or patent such invention.

In view of the above, as a general rule, when two people or more are the inventors of something, they all equally have rights over their creation, unless they share a working relationship, where the employer usually has preferential rights over a creation made in such work field.

2.1.3 MAINTENANCE

The Mexican Institute of Industrial Property exhorts all the patent holders to make continuous use of their inventions in order to prevent cancellation or caducity actions (this point will be developed further).

As for the government fees, after being granted a patent, a fee must be paid to the government. The Mexican Law of Intellectual Property also states that in order for an inventor to maintain the rights over a patent, they must meet with the payment of $75.00 USD every year from the first to the fifth year, afterwards from the sixth to the tenth year, the respective payment is of $88.00 USD, and from the eleventh to the twentieth year, $99.00 USD.

2.1.4 EXTENSION: RENEWAL

In México a patent has a non-extendible validity extension of twenty years.

2.1.5 TRANSFER

The rights resulting from a patent, may be encumbered or transferred either wholly or partially. In order for a transference or encumbrance to be binding on third parties, the respective act has to be registered in the Mexican Institute of Industrial Property.
As a relevant fact, we must mention that the right that a person has to be recognized as the inventor of an invention, is undeniable.

The abovementioned rights resulting from a patent, may also be object of a license of use agreement, same that has to be registered before the Institute for it to be binding on third parties as well. On the other hand, a registered license of use might be susceptible of cancellation when a patent lapses, when the patent is declared invalid or by request of the licenser and licensee jointly.

It is important to mention that the existence of a license agreement does not ban the holder from granting more licenses to other entities, nor from exploiting their creation on their own means. However, a registered licensee has the right to execute any legal action to protect their patent rights.

In addition to the above, the Mexican Industrial Property Law states that the Institute has the faculty to grant obligatory licenses when a patent is not being used by its owner within the first three years of its granting, to anyone who makes the respective request before the Authority. In this case, the holder has a lapse of one year to make use of the patent before the Institute grants the first obligatory license of use. After hearing both parties, the Mexican Institute of Industrial Property will decide about such obligatory license, stating all the terms and conditions, as well as the royalties belonging to the patent holder. If the patent is still not being used by the holder within the following two years of the granting of the obligatory license, the Authority may declare administratively the caducity of the patent in matter.

2.1.6 CANCELLATION

A patent can be object of cancellation under the following circumstances:

-When it is granted in violation of the requirements and conditions for their grant.
-When such grant takes place in violation of the provisions of the law in force at the time of grant.
-In case of abandonment of the application.
-When the grant has been invalidated by serious negligence or error, or has been made to a person not entitled to be granted such registration.

Patents shall expire and the rights that they protect shall become in the public domain under the following circumstances:

-Upon expiry of their term;
-When the fee provided for the maintenance of the rights therein is not paid, or is not paid within the six-month grace period following said expiry date;
-On expiration of the period of two years following the date of grant of the first obligatory license, the Institute may for administrative purposes declare the patent lapse if the grant of the compulsory license has not remedied the non-working thereof, or if the patent owner has not proved the working thereof or the existence of reasons that are justified in the opinion of the Institute.

2.1.7 INTERNATIONAL ASPECTS

The Mexican Industrial Property Law does not contemplate any special measures for foreign applicants, licensors, licensees, nor assignees, as it expressly states in article 11 that patent or registration owners may be individuals or companies.

2.2 ATTACKS ON OWNERSHIP

2.2.1 PRIOR INVENTORS OR USERS

If there was a previous inventor or user of a patent in study, such application would not be object to granting because the same would not comply with the novelty requirement mentioned in point number 2.1, not to mention that during the formal examination, the Mexican Authority accepts observations and information from third parties in order to avoid situations like these.

In view of the above, the Mexican Industrial Property Law also states that once a patent is granted, the holder may demand the damages from third parties who have had made use of the patent in process without their consent after the application’s publication date.

2.2.2 PUBLIC INTEREST (GOVERNMENT) INTERVENTION

The Mexican Industrial Property states the existence of licenses of public utility for the use of certain patents which are necessary in cases of national emergencies, for instance, in cases of serious diseases causing an emergency situation or threatening the security of the country, the pharmaceutical companies may request the granting of licenses of public utility to the Mexican Institute of Industrial Property.

Lastly, a patent and the rights the same protect, become public domain when the patent in matter lapses, or when the holder does not comply with the requested payment for the maintenance of their rights.

2.3 INFRINGEMENT ACTIONS

The Mexican Industrial Property Law establishes infringement procedures that can be exercised when an industrial property right has been vulnerated; please be advised that these could be initiated directly with an infringement claim or as a consequence of requesting preliminary injunctions. Once the injunction is requested, the right holder has a 20-day term to file a formal infringement claim before the Authority.

This administrative procedure takes about 1 year before the Mexican Institute of Industrial Property issues a final resolution, and the decision could be still challenged before the Federal Court of Administrative Affairs, and later through an amparo appeal to be filed and ruled before a Federal Circuit Court.

2.3.1 NATURE OF INFRINGEMENT

Any person whose Industrial Property right has been violated, has the faculty of requesting before Mexican Institute of Industrial property the administrative declaration of infringement against the infringer.

Specifically, for patents, the Mexican Law considers the following to be administrative infringements:

-Causing to appear as patented, goods that are not. If the patent has expired or declared invalid, there shall be infringement after one year following the expiration date or the invalidity declaration date.
-Manufacturing or developing goods protected by a patent without the consent of the owner thereof, or without the appropriate license.
-Offering for sale goods protected by a patent knowing that those have been manufactured without the consent of the owner of the patent.
-Using patented processes without the consent of the owner of the patent or the appropriate license.
-Offering for sale goods that are the result of the use of a patented process knowing that they have been used without the consent of the holder or licensee.
-When the patentee, licensee, user or distributor start an infringement proceeding against one or more third parties, once the Institute has determined in a previous proceeding that such action cannot proceed.

2.3.2 INJUNCTIONS

The Mexican Institute of Industrial Property may execute preliminary injunctions in administrative action procedures against infringers in order to prevent additional damage to a holder’s rights protected by the Intellectual Property Law in México, such actions could be the following:

-Order the withdrawal from circulation or ban the distribution of merchandise that infringes rights protected by the Mexican Industrial Property Law.
-Order the withdrawal from circulation of objects manufactured or use illegally, wrappers, containers, packaging, paperwork, advertising material, signs, labels, tags, paperwork that infringe any right protected by the Industrial Property Law.
-Prohibit with immediate effect the marketing of use of the goods by which an Industrial Property right is violated.
-Order the seizure of goods.
-Order the suspension of a service or the closure of the establishment by which an Industrial Property right is being violated.

2.3.3 CONFISCATION

In connection with the confiscation of goods, after certain lapse of time, the Authority orders their destruction.

3. COPYRIGHT

3.1. NATURE

According to the Mexican Copyright Law, Copyright is the recognition that the State makes in favor of any creator of literary and artistic works, by virtue of which it grants its protection so that the author enjoys exclusive prerogatives and privileges of a personal and economic nature. The first integrate the so-called moral rights and the second, the economic rights.

3.1.1. CREATION OF RIGHTS

The recognition of copyright and related rights does not require registration or document of any kind nor will it be subordinated to the fulfillment of any formality. However, registration will guarantee the legal security of the authors, the owners of neighboring rights and the holders of the respective economic rights and their successors in title, as well as to give adequate publicity to the works (declarative).

3.1.2. BENEFICIARIES OF RIGHTS

The Mexican Copyright Law, has the purpose of safeguarding and protecting the rights of authors, performers, publishers, producers and broadcasting organizations.

3.1.3. DURATION

The authors economic rights will be valid for the duration of the author’s life and, after his death, one hundred years more. When the work belongs to several co-authors, the one hundred years will be counted from the death of the last one. Or, one hundred years after the work has being disclosed.

The authors moral rights are considered perpetual and will never prescribe.

3.1.4. TRANSFER

Authors may freely transfer their economic rights or grant exclusive or non-exclusive use licenses. Any transfer of author’s economic rights will be onerous and temporary. The acts, agreements and contracts by which economic rights are transmitted must invariably be celebrated in writing, otherwise they will be null and void.

3.1.5. INTERNATIONAL ASPECTS

Foreign authors or rights holders and their successors in title shall enjoy the same rights as nationals, under the terms of the Mexican Copyright Law and international treaties on copyright and related rights subscribed and approved by Mexico.

3.2. ATTACKS ON OWNERSHIP

Persons who consider that they are affected in any of the rights protected by the Mexican Copyright Law, may choose between asserting the corresponding legal actions before the Federal Courts or be subject to the administrative settlement procedure. The administrative settlement procedure is the one that is substantiated before the Mexican Copyright Office, at the request of any of the parties to resolve in a friendly way a conflict arising from the interpretation or application of the Law.

3.3. INFRINGEMENT ACTIONS

The Federal Courts shall hear any disputes arising as a result of the application of the Mexican Copyright Law. However, The Mexican Copyright Law considers that any infringement against any of the moral right of the author will be sanctioned by the Mexican Copyright Office. On the other hand, it is the Mexican Institute of Industrial property who will sanction any infringement to the economic rights.

3.3.1. NATURE OF INFRINGEMENT

The nature of infringements can be divided in to two, as one kind affect moral rights and the other ones affect economic rights.

3.3.2. ACTION FOR DAMAGES

The Federal Courts shall hear disputes regarding any civil remedies such as compensation for damages for violations of the rights conferred by the Mexican Copyright Law.

3.3.3. INJUNCTIONS/CONFISCATIONS

The Federal Courts and / or Courts of the States and / or the Mexican Institute of Industrial Property may adopt the provisional measures in order to prevent or avoid the violation of their economic rights stated in the Mexican Copyright Law.

3.3.5. CUSTOMS ACTION

The Federal Courts in any case and the Mexican Institute of Industrial Property, in the case of infringements on the economic rights of authors, are empowered to issue a resolution suspending the free circulation of goods of foreign origin at the border, in the terms of the provisions of the Customs Law.

4. TRADE AND SERVICE MARKS

4.1. NATURE

According to the article 88 of the Industrial Property Law, a trademark is understood as any sign perceptible by the senses and susceptible of represented in a way that allows to determine the clear and precise object of protection, which distinguishes products or services from others of the same type or category in the market.

4.1.1. CREATION OF RIGHTS

According to the article 87 of the Industrial Property Law, the right to the exclusive use of a trademark is obtained through the registration before the Mexican Institute of Industrial Property.

The trademark application is filed before the Mexican Institute of Industrial Property, with a pay of $174.00 USD of Government Fees related to the examination of the same. The Authority will execute the respective substantive examination and formal examination, and in parallel, the opposition procedure may be carried out.

The priority will be recognized as filing date if the same is claimed within six months after its submission in any of the countries of the Paris Convention.

4.1.2. BENEFICIARIES OF RIGHTS

According to the article 87 of the Industrial Property Law, any person, physical or moral, may make use of trademarks in the industry, in commerce or in the services they provide.

4.1.3. MAINTENANCE

The trademark shall be used on the national territory in the form in which it was registered or with modifications that do not alter its distinctive character.

The owner of a trademark must declare before the Institute, accompanying the payment of $64.00 USD of Government Fees, the actual and effective use of the trademark. Said declaration must be submitted during the three subsequent months, counted as of the third year after the registration was granted. If the owner does not declare the use, the registration will be cancelled.

The display of the legends “Registered Trademark”, “Registered Collective Trademark” or “Registered Certification Mark”, the letters “T.M.” or the ® symbol, may be used only for the products or services for which the trademark is registered.

The registration of a trademark shall have a term of 10 years, starting from the filing date of the application, and may be renewed for periods with same duration. The renewal of the registration of a trademark shall be requested by the owner together with the payment of $231.00 USD of Government fees, declaring the actual and effective use of the trademark.

The application will be submitted within the six months prior to the expiration of its term. However, the Institute will process those applications that are submitted within a six month period following the expiration of the term. Once this term expires without submitting the renewal application, the registration will expire by operation of law.

4.1.4. TRANSFER

The owner of a registered or pending trademark may, by agreement, license one or more persons to use the trademark in relation to all or some of the goods or services to which said trademark applies. The license shall be registered before the Institute in order to be binding on third parties. Use of the trademark by the user holding a license registered with the Institute shall be considered made by the owner of the trademark.

A franchise shall exist where, together with the licensing of the use of a trademark, granted in writing, technical know-how is transferred or technical assistance provided, so that the person to whom the license is granted can produce or sell goods or provide services consistently according to the operating, commercial and administrative methods established by the owner of the trademark, in order that the quality, prestige and image of the products or services distinguished by said trademark may be maintained.

The rights deriving from an application for the registration of a trademark or those conferred by a registered trademark may be encumbered or transferred. Such transfer of rights shall be registered with the in order to be enforceable against third parties.

For the purposes of their transfer, the registrations of the trademarks of one and the same owner shall be considered linked when said trademarks are identical and protect similar products or services, or are confusingly similar and are applied to the same or similar products or services. When the owner of the registrations of two or more linked trademarks considers that there will be no confusion in the event of one of them being used by another person for the products or services to which the trademark concerned is applied, he may apply for the removal of the linkage.

4.1.5. CANCELLATION

It is possible to file administrative declarations of nullity before the Institute. The nullity cases are the following:

I. It is granted in violation of the provisions of the Law or that which was in force at the time of registration;

II. The trademark is identical or confusingly similar to another that has been used in the country or abroad prior to the filing date of the application in respect of the registered trademark and has been applied to the same or similar products or services, provided that the person who asserts the stronger right by virtue of prior use proves uninterrupted use of the mark in the country or abroad prior to the filing date or, where applicable, prior to the date of first declared use by the person who has registered it;

III. The registration was granted on the basis of false information contained in the application;

IV. The registration was granted in error, by mistake, or owing to a difference of judgment, there being another registration in force which is considered infringed because it is that of an identical or confusingly similar trademark applied to identical or similar services or products;

V.- The agent, representative, user or distributor of the holder, or any other person that has had a, direct or indirect, relationship with the holder, of a registered trademark abroad, requests and obtains the registration at his/her/its name of this trademark or another similar trademark in a degree of confusion, without the express consent of the holder of the foreign trademark, and

VI.- It had been obtained in bad faith.

The invalidity actions provided in sections II, III and IV may be exercised within a five-year term, as of the date on which the publication of the registration in the Gazette becomes effective. Those actions related to sections I, V ad VI may be exercised at any time.

The registration of a trademark will expire in the following cases:

I.- When it is not renewed as provided for by this Law; and

II.- Where the trademark had not been used during the three consecutive years immediately preceding the application of administrative expiration declaration, unless there is a justified cause at the opinion of the Institute, and

III.- When the statement of actual and effective use is not made.

4.1.6. INTERNATIONAL ASPECTS

As mentioned above, any person, physical or moral, may make use of trademarks in the industry, in commerce or in the services they provide, thus, the nationality of the owners does not limit their trademark rights.

4.2. ATTACKS ON OWNERSHIP

As mentioned above, a trademark will be null through a cancellation action if the agent, representative, user or distributor of the holder, or any other person that has had a, direct or indirect, relationship with the holder, of a registered trademark abroad, requests and obtains the registration at his/her/its name of this trademark or another similar trademark in a degree of confusion, without the express consent of the holder of the foreign trademark.

4.2.1. PRIOR TO USERS

As established in article 151 of the Industrial Property Law, a trademark will be null if the same is identical or confusingly similar to another that has been used in the country or abroad prior to the filing date of the application in respect of the registered trademark and has been applied to the same or similar products or services, provided that the person who asserts the stronger right by virtue of prior use proves uninterrupted use of the mark in the country or abroad prior to the filing date or, where applicable, prior to the date of first declared use by the person who has registered it.

4.2.2. PUBLIC INTEREST (GOVERNMENT) INTERVENTION

The Institute may declare the registration and use of trademarks as mandatory in respect of any product or service, or prohibit or regulate the use of trademarks, registered or not, either ex officio or at the request of representative organizations, where:

I. Use of the trademark is a factor associated with monopolistic or oligopolistic practices or unfair competition which cause serious distortions in the production, distribution or marketing of certain products or services;

II. Use of the trademark impedes the efficient distribution, production or marketing of goods and services; and

III. Use of trademarks prevents, hinders or increases the cost of the production supply or distribution of staple goods or services to the public in cases of national emergency and for as long as such an emergency persists.

The relevant declaration shall be published in the Official Journal.

4.3. INFRINGEMENT ACTIONS

The infringement procedures can be exercised before the Institute when an industrial property right has been vulnerated.

4.3.1. NATURE OF INFRINGEMENT

The following shall constitute administrative infringements in connection with trademarks:

-Distributing or placing products on sale or offering services with the indication that they are protected by a registered trademark when they are not; if the registration of the trademark has expired or been declared invalid or cancelled, there shall be infringement one year after the date of lapse or, where applicable, the date on which the relevant action became effective;

-Using a trademark confusingly similar to another registered trademark to protect products or services identical or similar to those protected by the registered trademark;

-Using a registered trademark or one confusingly similar thereto without the consent of its owner as an element of a commercial name or business name, or vice versa, provided that said commercial names or business names are related to establishments working with the products or services protected by the trademark;

-Using as trademarks the names, signs, symbols, abbreviations or emblems referred to the prohibitions establishes in the Industrial Property Law.

-Using a trademark previously registered or confusingly similar thereto as a commercial name or business name or part of such a name by an individual or company whose activity is the production, import or marketing of goods or services identical or similar to those to which the registered trademark is applied without the written consent of the owner of the trademark registration or of the person empowered to give such consent;

-Using a registered trademark without the consent of the owner thereof or without the appropriate license on goods or services identical or similar to those to which the trademark is applied;

-Offering for sale or distributing goods identical or similar to those to which a registered trademark is applied in the knowledge that said trademark has been used on those goods without the consent of the owner thereof;

-Offering for sale or distributing goods to which a registered trademark is applied and which have been altered;

-Offering for sale or distributing goods to which a registered trademark is applied after having partially or totally altered, replaced or deleted said trademark.

The infringement procedures could be initiated directly with an infringement claim or as a consequence of requesting preliminary injunctions, in accordance with the following:

a)Preliminary Injunctions

These are remedies that under the Mexican Industrial Property law are requested through an administrative procedure followed by the Mexican Trademark Office (MTO). Such measure are usually initiated, by requesting the MTO to carry out an inspection visit at the places where the infringing is taking place.

The Trademark Office has amongst other things the power to order to stop using the infringing mark; prohibit, with immediate effect, the marketing or use of the illegal denomination in all services and goods related; placement of closure seals; order the suspension of the rendering of the service or even, the closing of an establishment.

In order to proceed with the above measures, the owner of the trademark must file a bond to guarantee possible damages to the alleged infringer in case the MTO does not uphold the infringement.

However, the defendant is entitled to file a counter-bond to lift the preliminary injunction measures, by posting a counter-bond sufficient to cover for the possible damages and losses of the requesting party (at least 40% more of the amount offered). The initial bond is usually set by the MTO according to the merits of the case and the same Office could increase said bond depending on the provisional measures imposed at the time of the inspection.

Since the alleged infringer is not aware that a request for preliminary injunctions has been filed, he is notified of our actions only at the time when the inspection visit takes place or when is notifies of the action ordering the cease of the conducts alleged as illegal.

After the inspection visit is carried out or the order has been notified, the right holder has a 20-day term to file a formal infringement claim before the MTO.

b)Infringement Claim

As mentioned before, an infringement claim could be filed as a consequence of the preliminary injunctions or without necessarily having requested them beforehand.

Once the infringement action is formally initiated, the alleged infringer is summoned to appear in its defense and given a ten-working day term to respond the claims. After the response is formally admitted the MTO give a three day term to plaintiff to object evidence and reply the considerations exposed by counterpart; afterwards a ten day is given to both parties to file their final pleas before the MTO, who will then study the substance of the case and issue its resolution.

This administrative procedure takes about 1 year before the MTO issues a final resolution, and the decision could be still challenged before the Federal Court of Administrative Affairs (TFJA) and later through an amparo appeal to be filed and ruled before a Federal Circuit Court (FCC).

4.3.5. CUSTOMS ACTION

Please note that the “Database of Registered Trademarks for Customs Purposes” is an instrument that formally started on January 2nd, 2012 (such Database was created by Decree published in the Federal Official Diary of July 29th, 2011) with the purpose of speeding inspection and clearance procedures of registered importers, licensees, etc., and, at the same time, improve inspection methods intended to detect counterfeit and IP-infringing merchandise while at the same time establish reliable information channels to alert owners and/or right holders so they can produce the relevant legal actions to protect their trademark rights as early as possible. Such Database is administered and operated by the General Customs Administration (AGA), which is a part of the Mexican Ministry of Revenue and Finance (SHCP-SAT).

It is very important to point out that for the moment being, this Database only covers certain trademark registrations thus Copyrights and Patents are not registerable nor monitored by Customs although it is expected that in the near future the system will be expanded to include both.

Notwithstanding the above, it is important to stress that although this “Customs Database of Registered Trademarks” has several limitations, mainly because Customs Officials may only take action by means of an Order or Warrant issued by a competent authority (the Mexican Institute of Industrial Property -IMPI-, General Prosecutor’s Office -PGR- and/or a Judge), which means AGA cannot undertake any legal measures on its own (it cannot detain, seize or block a shipment of counterfeit or infringing merchandise if it there is no order issued by the competent authorities as previously mentioned), and such order or warrant is only issued if the affected right holder files a formal legal action against the potential infringer or counterfeiter.
 
As you can readily see, even if AGA officers do not possess the sufficient legal powers to act against a shipment of infringing merchandise, the Customs Database is still very important because the Database improves the chances of prompt detection of infringing/counterfeit merchandise and allows the trademark owner to decide to act against this illegal phenomenon with anticipation.

In this regard, the registration in “Official Database of Registered Trademarks for Customs Purposes” begins by preparing a legal brief directed to AGA in which you credit legal representation (via a Power of Attorney) for the titleholder of the trademarks that are to be registered, along with a list of the trademarks that are to be included in the Customs Database, as well as other relevant information as described; once the brief is filed, you receive a notice by e-mail and are given a user name and a password so you can enter a dedicated website that is operated by AGA in order to update and monitor the information concerning registered trademarks.  

Furthermore, please bear in mind there is no specific timeframe nor deadline to register the trademarks before customs, and there is also no need to renew the registration in such Database, once the information is included, it is indefinitely valid; additionally, the process is rather swift and most information is captured in about 10 working days.

5. TRADE AND SERVICE NAMES

The commercial name of an industrial, commercial or service firm or establishment and the right to its exclusive use shall be protected without the need for registration. The protection shall cover the geographical area of the actual clients of the firm or establishment to which the commercial name is applied, and shall extend to the entire Republic if the name is widely and consistently publicized at the national level.

Any person using a commercial name may apply with the Institute for its publication in the Gazette. Such publication shall produce the effect of establishing the presumption of good faith in the adoption and use of the commercial name.

The application for publication of a commercial name shall be filed in writing with the Institute together with the documents that prove the actual use of the commercial name in connection with a certain area of business.

The effects of publication of a commercial name shall last for ten years, starting from the filing date of the application, and may be renewed for periods with same duration. If not renewed, the effects shall cease.

In the absence of special provisions as the abovementioned, commercial names are regulated by the provisions of the Law relating to trademarks.

INDUSTRIAL DESIGNS AND UTILITY MODELS

6.1 NATURE

The utility models are all those objects, items, appliances or tools which, as a result of a modification in their arrangement, configuration, structure or form, offer a different function with respect to their component parts or advantages regarding their utility.

In order to obtain a registration before the Mexican Institute of Industrial Property, a utility model has to comply with the following requirements:

-Novelty: that cannot be found in the prior art, namely, all the public domain technical knowledge.
-Industrial applicability: an invention’s practical utility or the possibility of being made or used in any economic activity for the purposes for which it was created.

In México, an industrial design could be understood as:

-Industrial blueprints, which are any combination of shapes, lines or colors incorporated in an industrial product for ornamentation purposes and show a specific appearance of its own.
-Industrial models, which are constituted by any three-dimensional shape that serves as a model or pattern for the manufacture of an industrial product, showing a specific appearance of its own which does not involve any technical effects.

In order to obtain a registration before the Mexican Institute of Industrial Property, a utility model has to comply with the following requirements:

-Novelty: that is created independently or differs significantly from known designs or combinations of known features of designs.
-Industrial applicability: an invention’s practical utility or the possibility of being made or used in any economic activity for the purposes for which it was created.

6.1.1 CREATION OF RIGHTS

According to the Mexican Industrial Property Law, the process to obtain the registration of a utility model or an industrial design is the same as the process to obtain a patent. (See point 2.1.1) The same rules are applicable to the priority recognition of a utility model or industrial design in México.

6.1.2 BENEFICIARIES OF RIGHTS
According to the Mexican Industrial Property Law, the beneficiaries of the rights derived of a registration are the same that are mentioned in the respective patent chapter for the matter. (See point 2.1.3)

6.1.3 MAINTENANCE

The Mexican Industrial Property Law, states that in order to maintain the rights over a utility model registration, they must comply with the annual payment of $71.00 USD from the first to the third year, $72.00 USD from the fourth to the sixth and $83.00 USD from the seventh on.

On the other hands, the Mexican Industrial Property Law, states that in order to maintain the rights over a industrial design registration, they must comply with the annual payment of $71.00 USD from the first to the ninth year and $76.00 USD from the tenth on.

6.1.4 EXTENSION: RENEWAL

The Mexican Industrial Property law mentions that the registration of a utility models has a non-extendible validity lapse of ten years.

As for industrial designs, according to a recent reform to the Mexican Industrial Property Law, a registration could be renewed every five years after meeting the payment of $382.00 USD. However, such renovations can not exceed the term of twenty-five years.

6.1.5 TRANSFER

For industrial designs and utility models, the rules regarding the transference of a registration, are the same that are applicable to the transference of a patent (see 2.1.5), except for the obligatory license which does not apply to industrial designs, nor to utility models.

6.1.6 CANCELLATION

These figures can be object of cancellation under the following circumstances:

-When it is granted in violation of the requirements and conditions for their grant.

-When such grant takes place in violation of the provisions of the law in force at the time of grant.

-In case of abandonment of the application.

-When the grant has been invalidated by serious negligence or error, or has been made to a person not entitled to be granted such registration.

Registrations shall expire and the rights that they protect shall become in the public domain under the following circumstances:

-Upon expiry of their term;

-When the fee provided for the maintenance of the rights therein is not paid, or is not paid within the six-month grace period following said expiry date;

-When it is not renewed in the terms of the Law, in the case of the registration of an industrial design.

6.1.7 INTERNATIONAL ASPECTS

The Mexican Industrial Property Law does not contemplate any special measures for foreign applicants, licensors, licensees, nor assignees, as it expressly states in article 11 that patent or registration owners may be individuals or companies.

6.2 ATTACKS ON OWNERSHIP

6.2.1 PRIOR USERS

If there was a previous designer or user of an application of registration in study, such application would not be object to granting because the same would not comply with the novelty requirement mentioned in point number 6.1, not to mention that during the formal examination, the Mexican Authority accepts observations and information from third parties in order to avoid situations like these.

6.2.2 PUBLIC INTEREST (GOVERNMENT INTERVENTION)

Not applicable

6.3 INFRINGEMENT ACTIONS (PROCEDURES, EFFICACY, COSTS)

The first administrative infringement contemplated by the Mexican Intellectual Property Law is engaging in acts contrary to the proper practice and custom in industry, commerce and services, that constitute an act of unfair competition related to Industrial Property.

This administrative procedure takes about 1 year before the Mexican Institute of Industrial Property issues a final resolution, and the decision could be still challenged before the Federal Court of Administrative Affairs, and later through an amparo appeal to be filed and ruled before a Federal Circuit Court.

6.3.1 NATURE OF INFRINGEMENT

As mentioned before, the Mexican Industrial Property law contemplates infringement procedures that can be executed when an Industrial Property right is vulnerated, which may begin through an administrative action for infringement or by requesting preliminary injunctions (in this specific case, once the injunction is requested, the right holder has a 20-day term to file a formal infringement claim before the Authority).

6.3.2 ACTION FOR DAMAGES

Anyone whose Industrial Property right has been violated, has the faculty of requesting before Mexican Institute of Industrial property the administrative declaration of infringement against the infringer.

Specifically, for utility models and industrial designs, the Mexican Law considers the following to be administrative infringements:
-Manufacturing or developing goods protected by a utility model or industrial design registration without the consent of the owner thereof or without the appropriate license.
-Offering for sale or distributing goods protected by a utility model or industrial design registration knowing that they have been manufactured or developed without the consent of the owner of the registration or without the appropriate license.
-Reproducing or imitating industrial designs protected by registration without the consent of the owner thereof or without an appropriate license.

6.3.3 INJUNCTIONS: AGAINST WHOM, BY WHOM

The Mexican Institute of Industrial Property may execute preliminary injunctions in administrative action procedures against infringers in order to prevent additional damage to a holder’s rights protected by the Intellectual Property Law in México, which could be the following:

-Order the withdrawal from circulation or ban the distribution of merchandise that infringes rights protected by the Mexican Industrial Property Law.
-Order the withdrawal from circulation of objects manufactured or use illegally, wrappers, containers, packaging, paperwork, advertising material, signs, labels, tags, paperwork that infringe any right protected by the Industrial Property Law.
-Prohibit with immediate effect the marketing of use of the goods by which an Industrial Property right is violated.
-Order the seizure of goods.
-Order the suspension of a service or the closure of the establishment by which an Industrial Property right is being violated.

6.3.4 CONFISCATION

In connection with the confiscation of goods, after certain lapse of time, the Authority orders their destruction.

7. LICENSING

a)Patents

Licences (and sub-licences) can be granted for patents, utility models and industrial designs. They can be exclusive or non-exclusive.

A license must be made in writing and registered with the Mexican Institute of Industrial Property along with a fee.

b)Trade marks

Licences can be granted over trade mark applications and registrations, and can be exclusive or non-exclusive. It is also possible to restrict the licence to certain products or services. Goodwill is implicitly included in a licence.

A trade mark license must be made in writing and be signed by both licensor and licensee. The agreement must identify the marks included in it and the extent to which they are licensed.

To be enforceable against third parties, the license must be registered with the Institute.

There are two main reasons to grant and register a trade mark license: To prove that the use of the mark by the licensee is made on behalf of the trade mark owner (to avoid facing a cancellation action on grounds of non-effective use of the mark in Mexico); and to prove that the licensee has the right to use the mark in Mexico.

c)Copyright

Moral rights cannot be licensed. Economic rights can be licensed to third parties and the licence can be granted on an exclusive or non-exclusive basis. It is possible to grant partial licenses for a licensee to have the right to use only certain economic rights in connection with the licensed work.

A copyright license must be in writing and contain information on its term and any consideration paid. The license must be registered with the National Copyright Institute to be enforceable against third parties. This is particularly important when an exclusive license is granted because registration proves that the licensee can use the work on an exclusive basis.

d)Trade secrets and confidential information

Confidential information and industrial secrets can be subject to both exclusive and non-exclusive licences.

There is no prescribed way to transfer confidential information or industrial secrets. A written assignment is recommended, with provisions on how using the information and preventing unauthorized disclosures.

e)Main terms that should be included in a license

A license must include the following terms:

-Name and address of licensor and licensee.

-Whether the license is exclusive or non-exclusive.

-The rights that are subject to the licence, including information registration or application number if possible.

-The territory in which the licensee is authorised to use the marks.

-Term of the agreement. For patents, the term established in the agreement must not exceed the date of expiration of the relevant patents.

-For trademarks and patents, the products, services and processes subject to the licence or an indication that the licence is granted for total coverage.

-For trademarks and patents, a provision must be included to establish which of the parties will be entitled to take enforcement action. If no provision is included, the licensee is authorised to exercise discretionary action to defend the trade mark or patent as if it were the owner of it.

-For copyright, the license can be granted for all the economic rights or only for certain rights or abilities deriving from them.

-Consideration or royalty payments must be included in a copyright licence. For trademarks or patents, it is possible to not include the payment terms in the main body of the licence but to place them in a schedule instead.

References

DERECHO DE LA PROPIEDAD INDUSTRIAL E INTELECTUAL, Universidad Nacional Autónoma de México, 1st edition, México, 1991

MANUAL DE PROPIEDAD INDUSTRIAL, Universidad Nacional Autónoma de México, 1st edition, México, 2012.

Industrial Property Law, Mexico, Available at: http://www.diputados.gob.mx/LeyesBiblio/pdf/50_180518.pdf

Federal Author Law, Mexico, Available at: http://www.dof.gob.mx/nota_detalle.php?codigo=4907028&fecha=24/12/1996

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