Mexico - Protecting IPMexico-Protecting-IP
Intellectual Property Rights (IPR) in Mexico are covered by the Industrial Property Law (Ley de la Propiedad Industrial) and the Federal Copyright Law (Ley Federal del Derecho de Autor). Responsibility for the protection of IPR is spread across several government agencies. The Office of the Attorney General (PGR) oversees a specialized unit (UEIDDAPI) that prosecutes IPR crimes. The Mexican Institute of Industrial Property (IMPI) administers patent and trademark registrations, and it handles administrative enforcement cases involving allegations of IPR infringement. The National Institute of Copyright (INDAUTOR) administers copyright registrations and mediates certain types of copyright disputes, while the Federal Commission for the Protection Against Sanitary Risks (COFEPRIS) regulates pharmaceuticals, medical devices and processed foods. The Mexican Customs Service (SAT or Aduanas) mandate includes ensuring that illegal goods do not cross Mexico's borders.
After six years in office, the administration of President Enrique Peña Nieto has expended considerable time and political capital overhauling multiple industry sectors in Mexico, but it has not focused on similar reforms on the intellectual property front. There are legislative reforms long identified by the U.S. Government and others. These reforms include such things as granting SAT effective ex-officio authority, including the authority to seize suspected counterfeit and piratical merchandise in-transit. There is reluctance on the part of the Government of Mexico to seriously address these issues.
Mexico is plagued by widespread commercial-scale infringement that results in significant losses to Mexican, U.S., and other IPR owners. There are many issues that have made it difficult to improve IPR enforcement in Mexico, including legislative loopholes; lack of coordination between federal, state, and municipal authorities; a cumbersome and lengthy judicial process; and widespread acceptance of piracy and counterfeiting. In addition, the involvement of Transnational Criminal Organizations (TCOs), which control the piracy and counterfeiting markets in parts of Mexico, continue to impede Federal Government efforts to improve IPR enforcement. Their involvement has further illustrated the link between IPR crimes and illicit trafficking of other contraband, including arms and drugs. Mexico still relies on arrests and prosecutions of counterfeiters and pirates, either upon the filing of complaint by rights holders or acts observed in flagranti, as opposed to mounting proactive investigations that seek to dismantle pirating and counterfeiting networks.
Mexico remains on the Special 301 Watch List in 2018. Long-awaited updates to Mexico’s copyright and enforcement laws, as well as ineffective IP enforcement, particularly with respect to counterfeit goods and online piracy, remain significant challenges. Piracy and counterfeit goods are widespread in Mexico, including online and at notorious physical marketplaces, such as Tepito in Mexico City and San Juan de Dios in Guadalajara. U.S. brand owners face bad-faith trademark registrations, and Mexico’s enforcement against suspected infringing goods at the border remains hampered by overly restrictive policies. The Attorney General’s Office has determined it will not act against in-transit shipments of suspected infringing goods unless there is a determination of economic impact on the Mexican economy, which is virtually impossible to establish given the nature of in-transit movements. In addition, unauthorized camcording in Mexico is a serious concern and continued unabated in 2017. Mexico is now reportedly the second largest foreign source of unauthorized camcords in the world, fueling unlawful availability of first-run movies online, which damages the market for new releases. Similarly, Mexico is reportedly among the top countries for online sharing of infringing video game files and music piracy online, including via unauthorized stream-ripping. Although Mexico ratified the WIPO Internet
Treaties in 2002, Mexico has not enacted legislation to protect against the circumvention of TPMs and RMI. Investigation and prosecution of IP crimes, particularly regarding online IP crimes, continues to be inadequate, due in part to continued government-wide budget cuts. Patent infringement proceedings are lengthy, and stakeholders report concerns about insufficient protection against damages while proceedings take place. In administrative procedures on infringement, preliminary measures can be lifted without any burden of proof on the alleged infringer if the alleged infringer posts a counter-bond, which renders injunctions against continued infringement ineffective.
Mexico made some progress over the past year to better protect and enforce IP rights. Mexico’s customs authorities developed an improved trademark recordation system and launched a system to provide seizure information and automated notifications to rights holders. The Specialized IP Unit also increased seizures and arrests, including shutting down the unauthorized movie streaming site ‘peliculasmas.com.’ With respect to legislative efforts, Mexico passed amendments to the Industrial Property Law in March 2018 to strengthen the trademark opposition system, thwart trademark squatting (by defining “bad faith” and providing a corresponding ground for refusal), and provide protection for certification and non-traditional marks. Mexico also made some progress toward much-needed legislative initiatives to enhance seizure authorities and improve customs procedures, and it appears to be moving in the direction of amending the Criminal Code to include camcording as an offense without the need to prove commercial profit.
Mexico also passed amendments to the Copyright Law in June 2018. Copyright holders may now request precautionary measures to halt the ongoing violation of their rights during the pendency of the cases, similar to what has been available to trademark and patent owners in proceedings filed at IMPI.
More information is available by reading the 2018 Special 301 Report from the Office of the United States Trade Representative (https://ustr.gov/sites/default/files/files/Press/Reports/2018%20Special%20301.pdf).
Guiding Principles for Effective Protection and Enforcement of Your IPR
Protecting Intellectual Property (https://www.export.gov/article?id=Protecting-Intellectual-Property) and to our IPR protection website Stopfakes.gov.
Several general principles are important for effective management of IPR in Mexico. First, it is important to have an overall strategy to protect your rights. Second, IPR is protected differently in Mexico than in the United States, so you need to understand the specific procedures for Mexico. Third, rights must be registered and enforced in Mexico under national legislation. Your U.S. trademark and patent registrations will not protect you in Mexico. On the other hand, signatories of the Berne Convention for the Protection of Literary and Artistic Works provide protection to each other’s nationals’ copyrighted works and provide that nationals of all signatory countries be provided with the same rights as Mexicans.
Registration of patents and trademarks is on a first-in-time, first-in-right basis, so you should consider applying for trademark and patent protection even before selling your products or services in the Mexican market. It is vital that companies understand that intellectual property is primarily a private right and that the U.S. Government generally cannot enforce rights for private individuals in Mexico. It is the responsibility of the rights holders to register, protect, and enforce their rights, and where relevant, retain their own counsel and advisors. Companies may wish to seek advice from local attorneys or IP consultants who are experts in Mexican law. The U.S. Commercial Service in Mexico maintains a list of local
While the U.S. Government stands ready to assist, there is little we can do if rights holders have not taken these fundamental steps necessary to securing and enforcing their IP in a timely fashion. Moreover, in many countries, rights holders who delay enforcing their rights on a mistaken belief that the U.S. Government can provide a political resolution to a legal problem may find that their rights have been eroded or abrogated due to legal doctrines such as statutes of limitations, laches, estoppel, or unreasonable delay in prosecuting a law suit. In no instance should U.S. Government advice be a substitute for the obligation of a rights holder to promptly pursue its case.
It is always advisable to conduct due diligence on potential partners. Negotiate with a full understanding of the position of your partner and give your partner clear incentives to honor the contract. A good partner is an important ally in protecting IP rights. Consider carefully, however, whether to permit your partner to register your IP rights on your behalf. Doing so may create a risk that your partner will list itself as the IP owner and fail to transfer the rights should the partnership end. Keep an eye on your cost structure and reduce the margins (and the incentive) of would-be bad actors. Projects and sales in Mexico require constant attention. Work with legal counsel familiar with Mexican laws to create a solid contract that includes non-compete clauses, and confidentiality/non-disclosure provisions. It is also recommended that small and medium-sized companies understand the importance of working together with trade associations and organizations to support efforts to protect IP and stop counterfeiting. There are a number of these organizations, both Mexico- and U.S.-based. These include:
U.S. Chamber of Commerce
American Chamber of Commerce in Mexico
National Association of Manufacturers (NAM)
International Intellectual Property Alliance (IIPA)
International Trademark Association (INTA)
Coalition Against Counterfeiting and Piracy
International Anti-Counterfeiting Coalition (IACC)
Pharmaceutical Research and Manufacturers of America (PhRMA)
Biotechnology Industry Organization (BIO)
Institute for the Protection of Intellectual Property and Legal Commerce (IPPIC)
Mexican Association for the Protection of Intellectual Property (AMPPI)
National Association of Corporate Lawyers (ANADE)
Mexican Association of Research Pharmaceutical Industries (AMIIF)
Mexican Association of Phonogram Producers (AMPROFON)
Motion Picture Association of America (MPAA)
Business Software Alliance (BSA)
A wealth of information on protecting IP is freely available to U.S. rights holders. Some excellent resources for companies regarding intellectual property include the following:
For information about patent, trademark, or copyright issues—including enforcement issues in the United States and other countries—call the STOP! Hotline at +1-866-999-HALT or visit www.STOPfakes.gov.
For more information about registering trademarks and patents (both in the United States as well as in foreign countries), contact the U.S. Patent and Trademark Office (USPTO) at +1-800-786-9199 or visit http://www.uspto.gov/.
For more information about registering your copyright in the United States, contact the U.S. Copyright Office at +1-202-707-5959 or visit http://www.copyright.gov/.
For more information about how to evaluate, protect, and enforce intellectual property rights and how these rights may be important for businesses, please visit the “Resources” section of the STOPfakes website at http://www.stopfakes.gov/resources.
For information on obtaining and enforcing intellectual property rights and market-specific IP Toolkits visit http://www.stopfakes.gov/business-tools/country-ipr-toolkits. The toolkits contain detailed information on protecting and enforcing IP in specific markets and contain contact information for local IPR offices abroad and U.S. Government officials available to assist small and medium-sized enterprises (SMEs). Also see the Mexico IP Snapshot.
An English-language overview of Mexico's IPR regime can be found on the WIPO website.
Although a firm or individual may apply for example, for a patent or trademark directly, most foreign firms hire local law firms specializing in intellectual property. The U.S. Commercial Service’s Business Service Provider program has a partial list of local lawyers.
Additional resources for rights holders:
J. Todd Reves
Intellectual Property Rights Attaché for Mexico, Central America and the Caribbean
U.S. Trade Center
Liverpool No. 31 Col. Juarez
C.P. 06600 Mexico City
Tel: + 52 55 5080 2189
Senior Legal Specialist for Intellectual Property
U.S. Trade Center
Liverpool No. 31 Col. Juarez
C.P. 06600 Mexico City
Tel: + 52 55 5080 2000, ext. 5222
American Chamber of Commerce Mexico
Paseo de la Reforma 295 Col. Cuauhtémoc
C.P. 06500 Mexico City
Tel.: + 52 55 5141 380
National Institute of Copyright (INDAUTOR)
Puebla No. 143 Col. Roma, Del. Cuauhtémoc
C.P. 06700 Mexico City
Tel: + 52 55 3601 8270
Mexican Institute of Industrial Property (IMPI)
Periférico Sur No. 3106 Piso 9, Col. Jardines del Pedregal
C.P. 01900 Mexico City
Tel: +52 55 56 24 04 01 / 04
+52 55 53 34 07 00
For more information, contact ITA’s Office of Intellectual Property Rights Director, Stevan Mitchell at Stevan.Mitchell@trade.gov.