Main updates in contentious matters
On July 1, 2020, the Federal Law for the Protection of Industrial Property was published in the Mexican Official Gazette, which will come into force within ninety business days. The new Law replaces the former Industrial Property Law in its entirety.
As we had anticipated, there are essential amendments in various fields regulated by this Law. In the following paragraphs, we will focus on the most relevant changes regarding contentious procedures:
Invalidation and Non-use cancellation actions
- Partial invalidation actions are introduced when arguing a prior and uninterrupted use of the mark in Mexico or abroad, or when a trademark was granted by mistake, considering the existence of a previously filed pending application or a valid registration.
- An invalidation action will not be admitted if an opposition procedure was submitted using the same arguments and evidence, and the Mexican Institute of Industrial Property (IMPI) had already resolved on such merits.
- Partial non-use cancellation actions are also introduced.
Provisional Measures and Inspection Visits
- It is now possible to suspend, block, and revoke virtual, digital, or electronic media content.
- The IMPI may adopt provisional measures ex-officio without the need for a bond.
- It is expressly provided that inspection visits may be carried out in physical locations or digital platforms.
- Notifications by electronic means of communication are introduced, although personal notifications remain for serving or summoning the affected party or alleged infringer.
- When the trademark owner resides abroad, without an address of a legal representative in Mexico, the notification will be made through a publication in the Official Gazette and a major newspaper.
- In case of non-personal notifications, priority will be given to notifications through the IP Gazette.
An alternative dispute resolution procedure is included through a so-called conciliation process within infringement matters, which can be requested by any party, at any procedural stage, as long as the resolution on the merits is not issued. The conciliation and its negotiations will not suspend the substantiation of the administrative infringement proceedings.
- Infringement grounds involving industrial secrets are included, explicitly referring to the appropriation of information contained in an industrial secret, as well as producing, selling, importing, exporting, storing, products, or services that use an industrial secret.
- Using a previously registered or a confusingly similar trademark as a domain name, is now considered infringement, when it is related to establishments that operate with the products or services protected by the trademark; or, when its activity refers to the production, import or commercialization of identical goods or services or confusingly similar to those protected by the registered trademark.
- The definition of "use" for determining infringement includes manufacturing, producing, imitating, storing, distributing, importing, exporting, offering for sale, selling, transporting, or putting into circulation.
- The sanctions are increased considerably up to US $950,000.00 (approx.) and US $3,800 (approx.) for each day that the infringement conduct persists.
- Once the resolution is enforceable, it is possible to request damages and losses before the IMPI. The request for payment may be claimed by offering the value of the products and profits no longer received or equivalent payments for licenses of use as evidence. The IMPI will determine the damages and losses, as well as the amount of the corresponding compensation.
- Compensation may be claimed by choice of the affected right owner through the IMPI directly once the procedure is completed, or through the Courts under the common provisions and without the need of a prior infringement declaration. Compensation for the violation of industrial property rights may not be less than 40% of the value demonstrated by the affected owner.
- Express jurisdiction is granted to both federal and common courts to hear disputes in civil, commercial, criminal matters and precautionary measures related to the Law's fields.
- It allows the possibility of appealing before the Federal Court of Administrative Justice, both administrative acts and resolutions that end a procedure.
In further communications, we will discuss some of the referred topics in more detail to give a more comprehensive idea about the changes introduced in the new Law.
We are at your service should you have any questions.