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Trademark infringement in Mexico

In Mexico, as in many other countries, Industrial Property tends to be imitated, copied and/or violated by unfair competition. The Law on Industrial Property envisages a series of actions to defend the interests of the holders of industrial property rights in this situation.
One such action is the Administrative Infringement Action, which may be lodged by the holder of the trademark or patent involved or by the authorised licensee, by basing the petition on one or several of the provisions established in article 213 of the aforementioned Law, and including information on the presumed infringer (should this information not be available, the data should include the location of the establishment undertaking unlawful actions); providing suitable evidence (which generally includes an inspection during which goods may be frozen and an annexed questionnaire regarding said inspection), and, most certainly, a deposit to be established by the Instituto Mexicano de la Propiedad Industrial (IMPI) when applying for the freezing of infringing goods.

After implementing precautionary measures, such as freezing the goods, the presumed infringer is informed of the situation and granted 10 days to lodge a response, to provide observations to the inspection and to submit the appropriate evidence. (The presumed infringer is legally granted an additional 15-day deadline to submit evidence when products are located abroad).

In the response document, the presumed infringer may even request that precautionary measures be lifted by paying a deposit amounting, in principle, to double the amount contributed by the plaintiff.

After said deadline, IMPI may fine the infringer a maximum sum equivalent to twenty thousand days of the general minimum wage legally established in the Federal District ($1,096,000.00 Mexican Pesos, around $84,300.00). The Federal Government may also rule the temporary or final closing and the administrative arrest for 36 hours depending on the severity of the infringement.

It is important to note that IMPI does not have the power to charge the infringer to pay expenses or costs for the trial, nor to set compensations in favour of the holder of the infringed rights. In fact, we are of the same opinion as other colleagues that state that the sole direct benefit of a favourable ruling from IMPI for the plaintiff in a trademark infringement case is the termination of the infringement, and the destruction of the frozen goods.

Finally, and once the IMPI settlement is considered final, i.e. when there is no pending legal appeal, the holder of the infringed intellectual rights (or the licensee) may present the case to a civil court to sue the infringer and demand compensation.

The Industrial Property Law establishes that the plaintiff is entitled to claim at least 40% of the sales price of the products or services rendered in cases regarding compensations for infringement of a registered trademark.

Carmen Sánchez-Puelles