Trademark counterfeiting is regulated in Mexican Industrial Property Law as follows:
Art. 223. The following conducts constitute crimes:
II. Counterfeiting trademarks in bath faith and with the intention of commercial speculation
III. Producing, storing, transporting, introducing to the country, distributing or selling, with bath faith and with commercial speculation purposes, objects that bear counterfeits of marks protected by the law, likewise, supplying in any manner and in bath faith materials destinated to produce objects bearing counterfeit trademarks protected by the law.
The following government bodies play different roles on the enforcement of anti-counterfeiting activities:
- Attorney General’s Office,
- Mexican Institute of Industrial Property,
- Deputy Attorney’s Office for the Specialized Investigations of Federal Crimes,
- Head of the Special Unit in Charge of the Investigation of Copyright and Industrial Property Crimes composed of Three Attorney Offices:
- Industrial Property,
- Inspection and Supervision,
- Federal Preventive Police,
- Mexican Copyright Office,
- International Police (INTERPOL),
- Mexican Customs.
- Federal Courts,
- Supreme Court of Justice.
Trademarks, Slogans, Trade Names and Patents.
Please note that Industrial Property Crimes are investigated and prosecuted ex parte, eventhough according to Criminal Law, these type of crimes are considered felonies.
First of all, a writ suing the presumed felon should be filed before the Attorney General’s Office, an in particular before one of the Attorney’s Offices in charge of Industrial Property as mentioned herein.
The Attorney’s Office will request the Mexican Institute of Industrial Property prove of the ownership of the trademark registration being counterfeited.
The Attorney General’s Office will grant a term to carry out an inspection in the premises of the presumed counterfeiter of the trademark registration to seize all merchandise bearing the trademark of interest, thus, serving the presumed counterfeiter of the criminal accusations against him/her. Since this type of crime is considered a felony, the presumed counterfeiter will be held detained in the
Attorney General’s Office during the prosecution of the criminal procedure.
Once this is done, the Attorney General’s Office will request the assistance of the Mexican Institute of Industrial Property in order to determine if goods seized in possession of the presumed counterfeiter are considered counterfeit goods, pursuant to Mexican Industrial Property Law by means of a written legal opinion provided by the Mexican Institute of Industrial Property.
Furthermore, the Attorney General’s Office will have to determine if all the elements of the corpus delicti have been integrated. If all the aforementioned elements have been integrated, then, the Attorney General’s Office will request the assistance of the Federal Criminal District Judge to issue a decision in which criminal penalties has incurred the presumed counterfeiter.
The above decision may be appealed by the counterfeiter before the Federal Criminal District Judge, and this decision may be combated by a Constitutional Proceeding (Mexican Amparo).
- Engaging in acts contrary to proper practice and custom in industry, commerce and services which amount to unfair competition and which relate to the subject matter regulated by Mexican Industrial Property Law;
- Causing to appear as patented products goods that are not. If the patent has lapsed or been declared invalid there shall be infringement after one year following the date of lapse or, where applicable, the date on which the declaration of invalidity became effective;
- Placing products on sale or in circulation or offering services with the indication that they are protected by a trademark when they are not; if the registration of the mark has expired or been declared invalid or cancelled, there shall be infringement after one year following the date of expiration or, where applicable, the date on which the relevant declaration became effective;
- Using a similar mark to the extent of confusion to another registered mark to protect products or services identical or similar to those protected by the registered mark;
- Using a registered mark or one confusingly similar thereto without the consent of its owner as an element of a trade name or business name, or vice versa, provided that said trade names or business names are related to establishments working with the products or services protected by the mark;
- Using, within the geographical area of the effective clientele or in any part of the Republic in the case provided, a trade name that is identical or confusingly similar to another already being used by a third party to protect an industrial, commercial or service establishment in the same or a similar field;
- Using as marks the names, signs, symbols, abbreviations or emblems;
- Using a mark previously registered or confusingly similar thereto as a trade name or business name or part of such a name by a natural person or legal entity whose activity is the production, importation or marketing of goods or services identical or similar to those to which the registered mark is applied without the written consent of the owner of the registration or of the person empowered to give such consent;
- Performing, in the course of industrial activities or trade, acts that confuse, mislead or deceive the public by causing it wrongly to believe or assume:
- Pursuing or achieving the aim of denigrating the products or services, the industrial or commercial activity or the establishment of another party. This provision shall not apply to the comparison of products or services protected by the mark for the purpose of informing the public, provided that the comparison is not tendentious, false or exaggerated within the meaning of the Federal Consumer Protection Law;
- Manufacturing or developing goods covered by a patent or by a utility model or industrial design registration without the consent of the owner thereof or without the appropriate license;
- Offering for sale or bringing into circulation goods covered by a patent or by a utility model or industrial design registration in the knowledge that they have been manufactured or developed without the consent of the owner of the patent or registration or without the appropriate license;
- Using patented processes without the consent of the owner of the patent or without the appropriate license;
- Offering for sale or bringing into circulation goods that are the result of the use of patented processes in the knowledge that they have been used without the consent of the owner of the patent or of the person who holds an exploitation license;
- Reproducing or imitating industrial designs protected by registration without the consent of the owner thereof or without the appropriate license;
- Using a registered trade announcement or one confusingly similar thereto without the consent of the owner thereof or without the appropriate license for the purpose of advertising goods, services or establishments identical or similar to those to which the announcement applies;
- Using a trade name or a name confusingly similar thereto without the consent of the owner thereof or without the appropriate license to distinguish an industrial, commercial or service establishment in the same or a similar branch;
- Using a registered mark without the consent of the owner thereof or without the appropriate license on goods or services identical or similar to those to which the mark is applied;
- Offering for sale or bringing into circulation goods identical or similar to those to which a registered mark is applied in the knowledge that the said mark has been used on those goods without the consent of the owner thereof;
- Offering for sale or bringing into circulation goods to which a registered mark is applied and which have been altered;
- Offering for sale or bringing into circulation goods to which a registered mark is applied after having partially or totally altered, replaced or deleted said mark;
- Using an appellation of origin without the appropriate authorization or license;
- Reproducing a protected layout design without the authorization of the owner of the registration in its entirety, or any part that is considered original in itself, by incorporation in an integrated circuit or in another way;
- Importing, selling or distributing any of the following in violation of the provisions of this Law, without the authorization of the owner of the registration, in any form for commercial purposes:
(a)that a relation or association exists between a given establishment and that of a third party,
(b)that products are manufactured according to specifications, licenses or authorizations from a third party,
(c)that services are rendered or products sold according to authorizations, licenses or specifications from a third party,
(d)that the product concerned comes from a territory, region or locality different from the true place of origin, in such a way as to mislead the public as to the geographical origin of the product;
(a) a protected layout design;
(b) an integrated circuit incorporating a protected layout design; or
(c) a product incorporating an integrated circuit that itself incorporates an unlawfully reproduced protected layout design;
Civil remedies: Compensation for material damages or indemnification for damages and losses due to violation of the rights conferred by Mexican Industrial Property Law shall in no case be less than 40 percent of the public selling price of each product or the price of the rendering of services where violation of any one or more of the industrial property rights provided for in the aforementioned Law is involved.
- A writ must be filed before the Federal Civil Courts requesting remedies in view of damages and losses caused to the owner of a any Industrial Property registration.
- The defendant will have to file a reply to the initial writ providing all the proof pertaining it’s good faith in using the alleged Industrial Property registration.
- Once this is done, a period of exhibitions will be done to convince the judge of the parties rights and allegations.
- Furthermore, a resolution will be issued in this behalf.
- The losing party is entitled to appeal the aforementioned resolution before the Federal Civil District Judge, this resolution may be combated by a Constitutional Proceeding (Mexican Amparo)
Criminal penalties: According to the Mexican Industrial Property Law, Counterfeit Crimes may be punished by means of:
- Imprisonment of two to six years and a fine of 100 to 10,000 days of minimum wage payable in the Federal District on persons that sell to any final consumer in a public place, with ill intentions or with commercial speculation purposes, objects that bear counterfeit goods protected by Mexican Industrial Property Law. If the sell is carried out in a commercial establishment, or in an organized or permanent form.
- Imprisonment for two to six years and a fine corresponding from 100 to 10,000 days of the general minimum wage payable in the Federal District shall be imposed on persons who commit any of the offenses. Counterfeiting penalties- imprisonment from three to ten years and a fine of 2,000 to 20,000 days of the general minimum wage payable in the Federal District shall be imposed.
To be entitled for the exercise of the civil and criminal actions, the holder of the registration should apply to the products, wrappings, or packing of the products covered by an IP right the statements and indications of registrations such as TM, â , or otherwise have declared or announced to the general public consumer that the products or services are protected by an IP right.
An appropriate marking is essential to be entitled to file either Civil or Criminal Actions to combat counterfeiting activities.
Regardless of the institution of criminal proceedings, the aggrieved party in any of the offenses referred in the Mexican Industrial Property Law may demand from the perpetrator or perpetrators thereof compensation and the payment of damages, for the prejudice sustained as a result of the said offenses.
Compensation for material damages or indemnification for damages and losses due to violation of an IP right shall in no case be less than 40 percent of the public selling price of each product or the price of the rendering of services where violation of any industrial property rights.
In the event of the final ruling on the substance of the dispute finding that an administrative infringement has indeed been committed, the Mexican Institute of Industrial Property shall decide on the fate of the seized goods, after hearing the parties, and in doing so shall abide by the following rules:
It shall make available to the competent judicial authority the goods that have been seized as soon as it receives notice that the judicial action seeking compensation for material damages or payment of damages and losses has been initiated;
It shall place them at the disposal of any persons specified by the award where an arbitration procedure has been chosen;
It shall where appropriate proceed according to the terms laid down in the agreement that the owner concerned and the presumed infringer have entered into regarding the fate of the goods;
In cases not included in the foregoing sections, each of the parties concerned shall submit in writing, within the five days following that on which they are given sight thereof, his proposal regarding the fate of the goods that have been seized or withdrawn from circulation or whose marketing has been prohibited;
It shall give the parties sight of the proposals submitted in order that they, by common consent, may decide on the fate of the said goods, which decision they shall communicate to the Mexican Institute of Industrial Property in writing within the five days following that on which they were given sight;
If the parties fail to announce in writing their agreement on the fate of the goods within the period allowed, or if none of the situations referred to, has arisen within a period of 90 days from the issue of the final decision, the governing board of the Mexican Institute of Industrial Property may decide on:
(II) The destruction thereof.
Registration of a mark shall not be effective against any person who markets, distributes, acquires or uses the product to which the trademark is applied after the said product has been lawfully introduced to the market by the owner of the registered mark or his licensee.
This case shall include the importation of legitimate products to which the registered mark is applied, carried out by any person for use, distribution or marketing in Mexico by him pursuant to the terms and conditions laid down in the regulations under this Law;
According to Mexican Industrial Property Law, all the elements contained on a trademark and its get-up can be registered separately, and any violation of its registrations may be exercised by a Civil or Criminal Action. However, the Law does not expressly protect trade dress.
According to the Federal Mexican Customs Law, goods imported into Mexico should bear registered trademarks in Mexico or the invoice of the purchase of a good bearing a foreign trademark. Moreover, the imported goods may be considered legitimate if they comply with the following requirements:
That the introduction of the goods into commerce of the country in which it is imported, is made by the person that is the owner or the licensee of the registered trademark in that country.
That the owners of the trademark registration in Mexico and in the foreign country should be on the date in which the importation of the goods occurred, the same person or members of the same economic group of common interest or their licensees or sublicensees.
There is no recordal process for Industrial Property rights in Customs regulated in our country, however they are obliged to advise the Mexican Institute of Industrial Property.
Customs notifies the Attorney General’s Office of any counterfeiting of Intellectual Property Registrations.
The actions available to the importer for counterfeit goods are the same actions described in the criminal procedure herein.
The Interinstitutional Committee for the Combat of Industrial Property Crimes, has the following members:
- Attorney General’s Office.
- Mexican Customs.
- Mexican Public Safety.
- Federal Preventive Police.
- Mexican Institute of Industrial Property.
- Mexican Institute of Copyright.
- American Embassy.
- Chamber of Commerce for Clothing.
- Mexico City Chamber of Commerce.
- Chamber of Commerce for Editorials.
- Chamber of Commerce for Television.
- Chamber of Commerce for Electric Manufacturers.
- Mexican Society of Authors and Composers.
- Motion Pictures Association.
- Mexican Association of Intellectual Property.
- Phillip Morris.
- Mossimo Inc.
- British American Tobacco.
- Auto Desk.
- Calvin Klein.
- United Pictures.
- Hanna Barbera.
- Louis Vuitton Malletier.
- Mattel Inc.
- Several Law Firms specializing in IP Law.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.