Mexico: Intellectual Property

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This country-specific Q&A provides an overview to intellectual property law in Mexico.

It will cover intellectual property rights, licensing, enforcement, establishing infringement or liability, and challenges to intellectual property.

This Q&A is part of the global guide to Intellectual Property. For a full list of jurisdictional Q&As visit http://www.inhouselawyer.co.uk/index.php/practice-areas/intellectual-property/

  1. What different types of intellectual property rights exist to protect: (a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how); (b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees); (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).

    See Q2.

  2. What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?

    Inventions

    IP right

    Regular duration

    Procedure to extend the life of IP right

    Patents

    20 years.

    Non-extendable.

    Utility models

    10 years.

    Non-extendable.

    Industrial designs

    25 years.

    Non-extendable.

    Integrated circuits

    10 years.

    Non-extendable.

    Trade secrets

    N/A

    N/A

    Brands

    IP right

    Regular duration

    Procedure to extend the life of IP right

    Trademarks

    10 years.

    Renewal application. No need to prove use. It is extended for 10 years. No limit of renewals.

    Trade names

    10 years.

    Renewal application. No need to prove use. It is extended for 10 years. No limit of renewals.

    Slogans

    10 years.

    Renewal application. No need to prove use. It is extended for 10 years. No limit of renewals.

    Appellations of Origin

    As long as the geographic zone including the natural and huan factors that provide the distinctive characteristics to the product exist..

    Geographical Indications

    As long as the conditions that provide the distinctive characteristics to the product exist.

     

    Copyright and other rights

    IP right

    Regular duration

    Procedure to extend the life of IP right

    Copyright

    100 years after author’s dead.

    Non-extendable.

    Related rights: artist, performers and executors

    75 years.

    Non-extendable.

    Related rights: book publishers

    50 years.

    Non-extendable.

    Related rights: phonogram producers

    75 years.

    Non-extendable.

    Related rights: video producers

    50 years.

    Non-extendable.

    Related rights: broadcasting organizations

    50 years.

    Non-extendable.

    Reservation of rights: periodical publications

    1 year.

    Renewal application. Need to prove use. It is extended for the same period. No limit of renewals.

    Reservation of rights: periodical broadcasts

    1 year.

    Renewal application. Need to prove use. It is extended for the same period. No limit of renewals.

    Reservation of rights: characterized, fictitious and symbolic characters

    5 years.

    Renewal application. Need to prove use. It is extended for the same period. No limit of renewals.

    Reservation of rights: people and groups dedicated to artistic activities

    5 years.

    Renewal application. Need to prove use. It is extended for the same period. No limit of renewals.

    Reservation of rights: advertising promotions

    5 years.

    Non-extendable.

    Plant varieties: for perennial spices

    18 years.

    Non-extendable.

    Plant varieties: for non-perennial spices

    15 years.

    Non-extendable.

  3. Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?

    Inventions

    IP right

    First owner?

    Different for rights created in the course of employment or under a commission?

    Patents

    Inventor

    According to article 14 of the Industrial Property Law, the provisions of the Mexican Labour Law (mainly: article 163), shall be applied when it comes to inventions made by a person subject to an employment relationship.

     

    Therefore, under the scope of article 163 of the Mexican Labour Law, the ownership of a given invention is subject to the following rules: (i) in any case, the inventor shall be identified as the author of the relevant invention; (ii) if the services provided by the employee are related to research activities, the invention’s ownership as well as the exploitation right shall be held by the employer; and (iii) if nothing is agreed between the parties, the ownership of the invention will be held by the inventor, but the employer shall have a preferential right –in equal circumstances- to obtain the ownership as well as the exclusive right to use the relevant invention.

    Utility models

    Inventor

    Industrial designs

    Inventor

    Integrated circuits

    Inventor

    Brands

    IP right

    First owner?

    Different for rights created in the course of employment or under a commission?

    Trademarks

    Applicant

    If the trademark / trade name / slogan was created during the course of employment of under commission then the owner will be the employer.

    Trade names

    Applicant

    Slogans

    Applicant

    Appellations of Origin

    The Mexican Government

    N/A

    Geographical Indications

    The Mexican Government

    N/A

    Copyright and other rights

    IP right

    First owner?

    Different for rights created in the course of employment or under a commission?

    Copyright

    Author

    Article 84 of the Federal Law on Copyright (FLC) provides that in case of a work made in the course of an employment relationship (under a written individual employment contract), the rules that should be applied concerning the ownership of rights are the following:

     

    a)  If there is an intellectual property clause, the same should be complied.

     

    Some individual employment contracts include an intellectual property clause, in which the employer states that the copyright of works created by employees will completely belong to the employer.

     

    b)  If there is no clause or agreement about the ownership of a copyright, the FLC provides that the rights will be owned by both the employer and the employee (50% each).

     

    Furthermore, only the employer is entitled to disclose the work without the employee´s authorization.

     

    c)  If there is not a written contract, the ownership of rights will belong to the employee.

    On the other hand, when it comes to Commissions, unless agreed otherwise, the natural person or legal entity, which commissions a party to create a given work, shall have the ownership of the exploitation rights.

    If there is not a written contract, the ownership of rights will belong to the employee.

    Related rights: artist, performers and executors

    Artist, performers and executors

    No, they are not different.

    Related rights: book publishers

    Book publishers

    No, they are not different.

    Related rights: phonogram producers

    Phonogram producers

    No, they are not different.

    Related rights: video producers

    Video producers

    No, they are not different.

    Related rights: broadcasting organizations

    Broadcasting organizations

    No, they are not different.

    Reservation of rights

    Applicant

    If the reservation of rights was created during the course of employment of under commission then the owner will be the employer.

    Plant varieties

    Applicant

    If the reservation of rights was created during the course of employment of under commission then the owner will be the employer.

  4. Which of the intellectual property rights described above are registered rights?

    All but copyright and related rights.

  5. Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?

    Inventions

    IP right

    Who can apply for registration?

    What is the procedure for registration?

    Patents

    Inventor(s) or assignee(s)

    Application’s filing; formal examination; first publication; in-depth examination; granting or rejection; final publication.

     

    Brands

    IP right

    Who can apply for registration?

    What is the procedure for registration?

    Trademarks

    Any natural person or corporation

    Application’s filing; first publication; opposition (if any); second publication (only if an opposition was filed); response to the opposition (if any); formal examination; substantive examination; granting or rejection; final publication (if granted).

    Trade names

    Slogans

    Appellations of Origin

    (i) The Mexican Patent and Trademark Office; (ii) any company or people associated with the extraction, production and manufacture of the product intended to be protected; (iii) the national chambers or associations of manufacturers related with the subject product; (iv) the Mexican Federal Government and associated entities.

      I.  Application.

      II.  Revision by the Mexican Patent and Trademark Office.

      III.  Publication in the National Official Gazette for opposition purposes.

      IV.  Opposition deadline: Two months as from the publication date.

      V.  Final decision.

      VI.  Publication in the National Official Gazette, if granted.

    Geographical Indications

     

    Copyright and other rights

    IP right

    Who can apply for registration?

    What is the procedure for registration?

    Reservation of rights

    Any natural person or corporation

    Application’s filing; formal and substantive examination; granting or rejection.

    Plant varieties

    Inventor or assignee(s)

    Application’s filing; formal and in-depth examination, granting or rejection.

  6. How long does the registration procedure usually take?

    Inventions

    IP right

    What is the procedure for registration?

    Patents

    3-4 years

    Utility models

    3 years

    Industrial designs

    8-12 months

    Integrated circuits

    2-3 years

    Brands

    IP right

    Registration period?

    Trademarks

    3-6 months.

    Trade names

    Slogans

    Appellations of Origin

    10-12 months.

    Geographical Indications

    Copyright and other rights

    IP right

    Registration period?

    Reservation of rights

    15-30 business days.

    Plant varieties:

    12-18 months.

  7. Do third parties have the right to take part in or comment on the registration process?

    Inventions

    IP right

    Third parties right to take part in or comment?

    Patents

    Yes

    Utility models

    No

    Industrial designs

    No

    Integrated circuits

    No

    Brands

    IP right

    Third parties right to take part in or comment?

    Trademarks

    Yes

    Trade names

    Slogans

    Appellations of Origin

    Yes, as opponents.

    Geographical Indications

    Copyright and other rights

    IP right

    Third parties right to take part in or comment?

    Reservation of rights

    No

    Plant varieties

    No

  8. What (if any) steps can the applicant take if registration is refused?

    Inventions

    IP right

    Available steps if registration is refused?

    Patents

    Challenge the decision by means of either: a Petition for Review before the Mexican Patent and Trademark Office or an appeal before the Federal Administrative Court.

    Utility models

    Industrial designs

    Integrated circuits

    Brands

    IP right

    Third parties right to take part in or comment?

    Trademarks

    Challenge the decision by means of either: a Petition for Review before the Mexican Patent and Trademark Office or an appeal before the Federal Administrative Court.

    Trade names

    Slogans

    Appellations of Origin

    Geographical Indications

     

    Copyright and other rights

    IP right

    Third parties right to take part in or comment?

    Reservation of rights

    Challenge the decision by means of either: a Petition for Review before the Mexican Copyright Office or an appeal before the Federal Administrative Court.

    Plant varieties

    Challenge the decision by means of either: a Petition for Review before the Ministry of Agriculture or an appeal before the Federal Administrative Court.

  9. What are the current application and renewal fees for each of these intellectual property rights?

    Inventions

    IP right

    Application fees

    Renewal fees

    Patents

    Paris Convention, basic fee for up to 30 pages:

    $ 310.5 USD.

    Each exceeding page: $ 4.2 USD

     

    PCT Phase I, basic fee for up to 30 pages:

    $ 214.8 USD.

    Each exceeding page: $ 4.2 USD

     

    PCT Phase II, basic fee for up to 30 pages:

    $ 102.4 USD.

    Each exceeding page: $ 4.2 USD

    From the 1st to the 5th annuity: $ 85 USD each.

     

    From the 6th to the 10th annuity: $ 100 USD each.

     

    From the 11th to the 20th annuity: 115 USD each.

    Utility models

    Paris Convention, basic fee for up to 30 pages:

    $ 136.5 USD.

    Each exceeding page: $ 4.2 USD

     

    PCT Phase I, basic fee for up to 30 pages:

    $ 136.5 USD.

    Each exceeding page: $ 4.2 USD

     

    PCT Phase II, basic fee for up to 30 pages:

    $ 92.2 USD.

    Each exceeding page: $ 4.2 USD

    From the 1st to the 3rd annuity: $ 80 USD each.

     

    From the 4th to the 6th annuity: $ 95 USD each.

     

    From the 7th to the 10th annuity: $ 110 USD each.

    Integrated circuits

    $ 145 USD

    Industrial designs

    Basic fee for one design, $ 136.5 USD. Each exceeding design/embodiment: $ 4.2 USD.

    From the 1st to the 5th annuity: Included in the grant fee. Grant fee: $ 393.8 USD

     

    Each renewal covering five years (up to 25 years): $ 404.5 USD.

    Brands

    IP right

    Application fees

    Renewal fees

    Trademarks

    $ 173 USD

    $ 185 USD

    Trade names

    $ 45 USD

    $ 51 USD

    Slogans

    $ 51 USD

    $ 59 USD

    Appellations of Origin

    $ 100 USD

    N/A

    Geographical Indications

    Copyright and other rights

    IP right

    Application fees

    Renewal fees

    Reservation of rights: periodical publications

    $ 115 USD

    $ 63 USD

    Reservation of rights: periodical broadcasts

    Reservation of rights: characterized, fictitious and symbolic characters

    $ 222 USD

    $ 119 USD

    Reservation of rights: people and groups dedicated to artistic activities

    Reservation of rights: advertising promotions

    N/A

    Plant varieties

    $ 950 USD

    $ 260 USD per annuity.

  10. What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?

    Inventions

    IP right

    Consequence of a failure to pay

    Steps to remedy a failure to pay

    Patents

    To become part of the public domain.

    To file a reactivation request within the 12-month grace period available. Official fees shall be paid.

    Utility models

    Industrial designs

    Integrated circuits

    Brands

    IP right

    Consequence of a failure to pay

    Steps to remedy a failure to pay

    Trademarks

    The lapsing of the right and therefore become available again for any party.

    To file the renewal application within the 6-month grace period available.

    Trade names

    Slogans

    Appellations of Origin

    N/A

    N/A

    Geographical Indications

    Copyright and other rights

    IP right

    Consequence of a failure to pay

    Steps to remedy a failure to pay

    Reservation of rights

    The lapsing of the right and therefore become available again for any party.

    To file the renewal application within a month grace period available.

    Plant varieties

    To become part of the public domain.

    N/A

  11. What are the requirements to assign ownership of each of the intellectual property rights described above?

    Inventions

    IP right

    Requirements

    Patents

    Written assignment agreement (signed by both parties) stating forth:

    1)  Names and nationalities of both parties, and

    2)  Invention’s details.

     

    Finally, get the assignment agreement recorded by the Mexican Patent and Trademark Office.

     

    Utility models

    Industrial designs

    Integrated circuits

    Tradesecret

    Written assignment agreement, signed by both parties, stating for the relevant trade secret and all the mechanism and measures to keep the confidentiality of such information.

    Brands

    IP right

    Requirement

    Trademarks

    Written assignment agreement (signed by both parties) stating forth:

    1)  Names and nationalities of both parties, and

    2)  Sign’s details.

     

    Finally, get the assignment agreement recorded by the Mexican Patent and Trademark Office.

    Trade names

    Slogans

    Appellations of Origin

    N/A

     

    Geographical Indications

    Copyright and other rights

    IP right

    Requirements

    Copyright

    Written assignment agreement (signed by both parties) stating forth:

    1)  Names and nationalities of both parties;

    2)  Work’s details;

    3)  Agreed remuneration; and

    4)  Validity term.

    Related rights

    N/A

    Reservation of rights

    Written assignment agreement (signed by both parties) stating forth:

    1)  Names and nationalities of both parties, and

    2)  Reservation of rights’ details.

     

    Finally, get the assignment agreement recorded by the Mexican Copyright Office.

    Plant varieties

    Written assignment agreement (signed by both parties) stating forth:

    1)  Names and nationalities of both parties, and

    2)  Plant varieties’ details.

     

    Such agreement shall be executed before a Public Notary.

     

    Finally, get the assignment agreement recorded by the Mexican Service Seed Inspection and Certification.

  12. Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?

    Inventions

    IP right

    Requirements

    Consequence of failing to register

    Patents

    1)  Original document or certified copy of the assignment agreement.

    2)  Spanish translation (if required);

    3)  Recordal application stating forth:

      I)  Names and nationalities of both parties;

      II)  Invention’s details;

      III)  New domicile to receive further notifications;

      IV)  If any, name of the new appointed legal representative; and

      V)  Official fees paid.

    The assignment agreement will not have legal effects against third parties.

    Utility models

    Industrial designs

    Integrated circuits

    Trade secret

    N/A

    N/A

    Brands

    IP right

    Requirements

    Consequence of failing to register

    Trademarks

    1)  Original document or certified copy of the assignment agreement.

    2)  Spanish translation (if required).

    3)  Recordal application (official form) stating forth:

      I)  Names and nationalities of both parties;

      II)  Invention’s details;

      III)  New domicile to receive further notifications;

      IV)  If any, name of the new appointed legal representative; and

      V)  Official fees paid.

    The assignment agreement will not have legal effects against third parties.

    Trade names

    Slogans

    Appellations of Origin

    N/A

    N/A

    Geographical Indications

    Copyright and other rights

    IP right

    Requirements

    Consequence of failing to register

    Copyright

    1)  Original document or certified copy of the assignment agreement;

    2)  Parties’ IDs;

    3)  Spanish translation (if required);

    4)  Recordal application; and

    5)  Official fees paid.

    The agreement will not be presumed valid.

    Related rights

    N/A

     

    Reservation of rights

    1)  Original document or certified copy of the assignment agreement;

    2)  Parties’ IDs;

    3)  Spanish translation (if required);

    4)  Recordal application; and

    5)  Official fees paid.

    The assignment agreement will not have legal effects against third parties.

    Plant varieties

    1)  Original document or certified copy of the assignment agreement;

    2)  Parties’ complete name, nationalities and domicile;

    3)  Letter signed by the new owner stating that he will maintain the characteristics of the subject plant variety;

    4)  Spanish translation (if required);

    5)  Recordal application; and

    6)  Official fees paid.

    The assignment agreement will not have legal effects against third parties.

  13. What are the requirements to licence a third party to use each of the intellectual property rights described above?

    Inventions

    IP right

    Requirements

    Patents

    Written agreement stating the following information:

    1)  Parties’ contact details;

    2)  Invention’s details;

    3)  If the license will be exclusive or not;

    4)  If the licensee will be able to initiate legal actions for a possible infringement or rights;

    5)  Validity term not exceeding the IP right term.

    Utility models

    Industrial designs

    Integrated circuits

    Trade secret

    Written agreement stating the following information:

    1)  Parties’ contact details;

    2)  Trade secret’s details;

    3)  Measures or mechanisms to keep the confidentiality of the information;

    4)  Validity term.

    Brands

    IP right

    Requirements

    Trademarks

    Written agreement stating the following information:

    1)   Parties’ contact details;

    2)   Invention’s details;

    3)   If the license will be exclusive or not;

    4)   If the licensee will be able to initiate legal actions for a possible infringement or rights;

    5)   Validity term.

    Trade names

    Slogans

    Appellations of Origin

     

    Written application filed before the Mexican Patent and Trademark Office. Such application shall meet the following additional requirements:

    1)   The applicant’s activities shall be related to extraction, production and manufacturing of the products covered by the appellation of origin;

    2)   That such activities shall be conducted inside the area that the appellation of origin covers;

    3)   All other requirement stated by both the Ministry of Economy and the appellation of origin.

    Geographical Indications

    Copyright and other rights

    IP right

    Requirements

    Copyright

    Written license agreement stating the following information:

    1)  Parties’ contact details;

    2)  Copyright’s details;

    3)  Validity terms; and

    4)  Agreed remuneration.

    Related rights

    N/A

    Reservation of rights

    Written license agreement (signed by both parties) stating forth:

    1)  Names and nationalities of both parties, and

    2)Reservation of rights’ details.

    Plant varieties

    Written license agreement (signed by both parties) stating forth:

    1)  Names and nationalities of both parties, and

    2)  Plant varieties’ details.

  14. Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?

    Inventions

    IP right

    Requirements

    Consequence of failing to register

    Patents

    1)   Original document or certified copy of the license agreement.

    2)   Spanish translation (if required);

    3)   Recordal application stating forth:

         I)   Names and nationalities of both parties;

         II)   Invention’s details; and

        III)   Official fees paid.

    The license agreement will not have legal effects against third parties.

    Utility models

    Industrial designs

    Integrated circuits

    Trade secret

    N/A

    N/A

    Brands

    IP right

    Requirements

    Consequence of failing to register

    Trademarks

    1)  Original document or certified copy of the license agreement.

    2)  Spanish translation (if required);

    3)  Recordal application stating forth:

         I)   Names and nationalities of both parties;

         II)   Sign’s details; and

        III)   Official fees paid.

    The license agreement will not have legal effects against third parties.

    Trade names

    Slogans

    Appellations of Origin

    Since the authorization to use it is granted by the Mexican Patent and Trademark Office, it is automatically registered.

    N/A

    Geographical Indications

    Copyright and other rights

    IP right

    Requirements

    Consequence of failing to register

    Copyright

    1)  Original document or certified copy of the assignment agreement;

    2)  Parties’ IDs;

    3)  Spanish translation (if required);

    4)  Recordal application; and

    5)  Official fees paid.

    The agreement will not be presumed valid.

    Related rights

    N/A

    N/A

    Reservation of rights

    1)  Original document or certified copy of the assignment agreement;

    2)  Parties’ IDs;

    3)  Spanish translation (if required);

    4)  Recordal application; and

    5)  Official fees paid.

    The license agreement will not have legal effects against third parties.

    Plant varieties

    No need to register.

    N/A

  15. Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?

    Both licensees give the same rights to enforce the licensed intellectual property rights. However, such right can be limited completely or partially according to what the parties agreed.

  16. Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?

    According to our Industrial Property and Criminal Law, the sanctions are: imprisonment ranging and/or fine.

    These criminal sanctions may be invoked by means of a criminal complaint filed before The Anti-Counterfeiting Federal Prosecutor.

  17. What other enforcement options are available for each of the intellectual property rights described above? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.

    IP right

    Other enforcement

    Inventions

    ·  Intellectual Property Office proceedings: cancellation, infringement and invalidation actions.

    ·  Alternative Dispute Resolutions, namely, arbitration.

    Brands

    Copyrights

    ·  Civil Courts proceedings: compensation for damages.

    ·  Copyrights Office proceedings: invalidation and infringement actions.

    ·  Intellectual Property Office proceedings: trade-related infringements and preliminary injunctions or preventive measures.

    ·  Alternative Dispute Resolution, namely, arbitration and conciliation.

  18. What is the length and cost of such procedures?

    Inventions and Trademarks

    Procedures

    Length

    Cost

    Intellectual Property Office proceedings

     

    From 8 to 12 months approximately.

    Official fees: $ 150 USD approximately.

    Alternative Dispute Resolutions

    From 3 to 6 months approximately.

    Copyrights

    Procedures

    Length

    Cost

    Civil Courts proceedings.

    From 12 to 15 months approximately.

    No official cost to consider.

    Copyrights Office proceedings

    Official fees: $ 150 USD approximately.

    Intellectual Property Office proceedings

    From 8 to 12 months approximately.

    Alternative Dispute Resolution

    From 3 to 6 months approximately.

  19. Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.

    Court

    How to start

    Basics

    Time to trial

    Format

    Time to judgement

    Any available appeals?

    Federal Administrative Court

    By filing an initial pleading

    1)In written

    2)PoA required

    3)No discovery

    1 - 2 years; however, it would depend on the complexity and particularities of the case.

    1)Initial pleading

    2)Response by the defendant

    3)Closing arguments

    4)Revision of evidence

    5)Ruling/
    Decision

    6 - 8 months; however, this time would depend on the complexity and particularities of the case.

    Yes

    Civil Courts

    Criminal Courts

    Federal Circuit Court

    Mexican Supreme Court

    No

  20. What customs procedures are available to stop the import and/or export of infringing goods?

    An administrative procedure which is conducted by the Mexican Patent and Trademark Office. It is called “border measures”. Its main purpose is to seize or interrupt the free circulation of infringing products at the border.

  21. Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.

    An administrative procedure which is conducted by the Mexican Patent and Trademark Office. It is called “border measures”. Its main purpose is to seize or interrupt the free circulation of infringing products at the border.

  22. What options are available to settle intellectual property disputes?

    Arbitration and Mediation.

  23. What is required to establish infringement of each of the intellectual property rights described above? What evidence is necessary in this context?

    Inventions

    IP right

    Requirements for establishing infringement

    Necessary evidence

    Patents

    Any non-authorized use of the intellectual property right (unfair competition).

    All sort of evidence is allowed but that one contrary to the morality or the law. Examination of parties is not allowed.

     

    Utility models

    Industrial designs

    Integrated circuits

    Trade secret

    Disclosure.

    Brands

    IP right

    Requirements for establishing an Infringement

    Necessary evidence

    Trademarks

    Any non-authorized use of the intellectual property right (unfair competition).

    All sort of evidence is allowed but that one contrary to the morality or the law. Examination of parties is not allowed.

     

    Trade names

    Slogans

    Appellations of Origin

    Any non-authorized use of the intellectual property right (unfair competition).

    Geographical Indications

    Copyright and other rights

    IP right

    Requirements for establishing an Infringement

    Necessary evidence

    Copyright

    Any non-authorized use of the intellectual property right as well as any violation of the author’s moral rights.

    All sort of evidence is allowed but that one contrary to the morality or the law.

     

    Examination of parties is not allowed but only when the case is decided by a civil court.

    Related rights

    Any violation of the holder’s rights.

    Reservation of rights

    Any non-authorized use of the intellectual property right.

    Plant varieties

    Any non-authorized use of the intellectual property right.

    All sort of evidence is allowed but that one contrary to the morality or the law.

  24. How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so? In particular a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties’ expert witness evidence? b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?

    a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties' expert witness evidence?
    There are experts that shall be firstly appointed by each party. Then if the opinion rendered by such experts is contradictory, the judge appoints a third expert to resolve the contradiction.

    b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
    Discovery is not available in Mexico. However, when it comes to confidential information that needs to be submitted in a trial, the court shall implement the required measures to keep its confidentiality.

  25. How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?

    Cross-examination is not available in our jurisdiction. The Courts shall follow certain guidelines and principals when analysing some piece of evidence. Such guidelines and principals are provided in our legislation but also in our jurisprudence.

  26. What defences to infringement are available?

    Infringers might either file a response arguing that the infringement action is groundless and providing evidence that supports the legal use of the intellectual property right in matter; or file an invalidation action (as a counteraction) against the registration used as legal standing by the plaintiff.

  27. Who can challenge each of the intellectual property rights described above?

    Any third party that proves its legal standing to challenge the intellectual property right. The legal standing can be proven –among other scenarios- by means of any prior intellectual property right considered affected because of the existence of the right to be challenged.

  28. When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?

    During the subsistence of the right.

  29. Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?

    Inventions

    IP right

    Forum

    Procedure for challenging each intellectual property rights

    Grounds of invalidation

    Patents

    Mexican Patent and Trademark Office

    1) Initial pleading. Evidence shall be submitted as well;

    2) Response by the defendant along with his evidence;

    3) Closing arguments;

    4) Decision.

    I. Lack of novelty;

    II. Lack of inventive step;

    III. Lack of industrial application.

    IV. When the patent was granted to the wrong person.

    V. Abandonment of the patent application.

    Utility models

    Industrial designs

    Integrated circuits

    Lack of novelty.

    Brands

    IP right

    FORUM

    Procedure for challenging each intellectual property rights

    Grounds of invalidation

    Trademarks

    Mexican Patent and Trademark Office

    1) Initial pleading. Evidence shall be submitted as well;

    2) Response by the defendant along with his evidence;

    3) Closing arguments;

    4) Decision.

    I. Being granted against the provisions of the law;

    II. Earlier use in Mexico or abroad;

    III. False data stated in the application;

    IV. Earlier registration; and

    V. Bath faith.

    N/A

    Trade names

    Slogans

     

    Appellations of Origin

    I. Being granted against the provisions of the Industrial Property Law; and

    II. False data declared in the application.

    Geographical Indications

    Copyright and other rights

    IP right

    FORUM

    Procedure for challenging each intellectual property rights

    Grounds of invalidation

    Copyright

    Mexican Copyright Office

    or

    Civil court

    1) Initial pleading. Evidence shall be submitted as well;

    2) Response by the defendant along with his evidence;

    3) Closing arguments;

    4) Decision.

    I. False authorship;

    II. Earlier creation;

    III. Granted against the provisions of the law.

    Related rights

    Reservation of rights

    I. Earlier registration;

    II. False data declared in the application;

    III. Granted against the provisions of the law.

    Plant varieties

    Ministry of Agriculture

    I. Lack of novelty;

    II. Lack of distinctiveness;

    III. Lack of stability;

    IV. Lack of homogeneity.

  30. Are there any other methods to remove or limit the effect of any of the intellectual property rights described above, for example, declaratory relief or licences of right?

    Inventions

    IP right

    Methods to remove or limit the effect

    Patents

    Educational reasons with non-commercial purposes and/or the exhaustion of the right of the patent owner and/or use an invention before someone else files a patent application and/ the use of the invention referred to in transportation vehicles of other countries when it forms part of such vehicles and when the vehicles are in transit in national
    territory and/or using patents with living beings as a resource for obtaining new products and/or an obligatory license in case of lack of use/national security/public emergency.

    Utility models

    Industrial designs

    Integrated circuits

    Brands

    IP right

    Methods to remove or limit the effect

    Trademarks

    A trademark registration shall not be effective against any third party that markets, distributes, acquires or uses the product to which the registered trademark is applied, after the relevant product has been lawfully introduced in the market and/or when an individual or entity applies his own name or its company or business name to goods or services and/or any third party that can prove an earlier use of an identical or confusingly similar trademark in Mexico to cover identical or similar products.

    Trade names

    Slogans

    Appellations of Origin

    When the subject right has not been used for a minimum period of 3 years before a non-use cancellation action is lodged before the Mexican Patent and Trademark Office.

    Geographical Indications

    Copyright and other rights

    IP right

    Methods to remove or limit the effect

    Copyright

    Copyright could be limited a) if the author is mentioned in the quoting and does not represent a substantial reproduction; b) for scientific, literary or artistic investigation and security purposes; c) reproduction for private use; d) for using as evidence in an administrative or judicial procedure; e) for the use of disabled people with non-commercial purposes; f) for utility public service

    Related rights

    Related rights could be limited a) if the holder of the right is recognized and does not represent a substantial reproduction; b) for scientific, literary or artistic investigation and security purposes; c) reproduction for private use; d) for using as evidence in an administrative or judicial procedure; e) for the use of disabled people with non-commercial purposes; f) for utility public service.

    Reservation of rights

    Any third party that can prove an earlier use of an identical or similar reservation of rights.

    Plant varieties

    Plant varieties could be limited by a license in case of national security or public emergency.

  31. What remedies (both interim and final) are available for infringement of each of the intellectual property rights described above?

    Inventions

    IP right

    Interim remedy

    Final remedy

    Patents

    1) Withdrawal from circulation the merchandise that infringes IP rights;

    2) Stop the use and commercialization of infringing products;

    3) Seizure of infringing goods; and

    4) Closure of the establishment.

    1) Fine

    2) Temporary/permanent closure

    3) Administrative detention

    4) Infringement declaration

    5) Stop the commercialization of the infringing products

    Utility models

    Industrial designs

    Integrated circuits

    Brands

    IP right

    Interim remedy

    Final remedy

    Trademarks

    1) Withdrawal from circulation the merchandise that infringes IP rights;

    2) Stop the use and commercialization of infringing products;

    3) Seizure of infringing goods; and

    4) Closure of the establishment.

    1) Fine;

    2) Temporary/permanent closure;

    3) Administrative detention;

    4) Infringement declaration; and

    5) Order to stop the commercialization of the infringing products.

    Trade names

    Slogans

    Appellations of Origin

    Geographical Indications

    Copyright and other rights

    IP right

    Interim remedy

    Final remedy

    Copyright

    1) Withdrawal from circulation the merchandise that infringes IP rights;

    2) Stop the use and commercialization of infringing products;

    3) Seizure of infringing goods; and

    4) Closure of the establishment.

    Within an administrative procedure, the final remedies available are the following:

    1) Fine;

    2) Temporary/permanent closure;

    3) Administrative detention;

    4) Infringement declaration; and

    5) Order to stop the commercialization of the infringing products.

    On the other hand, if a civil action is initiated, the final remedies available would be the following:

    1) Infringement declaration;

    2) Order to stop the commercialization of the infringing products;

    3) Order to pay damages; and

    4) Order to pay litigation expenses.

    Related rights

    Reservation of rights

    Plant varieties

    1) Withdrawal from circulation the merchandise that infringes IP rights;

    2) Stop the use and commercialization of infringing products; and

    3) Seizure of goods.

    A fine determined by the authority.

  32. What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?

    Enforcement Proceeding

    Cost (approximately)

    Invalidation actions

    $ 4,000 - $8,300 USD

    Cancellation actions

    $ 3,000 - $ 7,500 USD

    Infringement actions

    $ 6,500 - $ 15,500 USD

    Criminal actions

    $ 2,000 - $ 20,000 USD

    There is not any cost recovery available for this kind of procedures but only for civil actions related with copyrights and related rights.