Mexico - Protecting Intellectual PropertyMexico - Protecting IP
Protecting Intellectual PropertyIntellectual 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 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 Prevention of Sanitary Risks (COFEPRIS) regulates pharmaceuticals, medical devices and processed foods. The Mexican Customs Service’s (Aduanas) mandate includes ensuring that illegal goods do not cross Mexico's borders.
After five years in office, the administration of President Enrique Peña Nieto (EPN) has expended considerable time and political capital overhauling multiple industry sectors in Mexico, but has not focused on similar reforms on the intellectual property front. Legislative reform long identified by the U.S. Government and others – such as granting customs effective ex-officio authority and providing the authority to seize suspected counterfeit and piratical merchandise in-transit–have been dormant, and 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 in flagranti, as opposed to mounting proactive investigations that seek to dismantle pirating and counterfeiting networks.
Mexico is listed on the Watch List in USTR’s 2017 Special 301 Report. Obstacles to U.S. trade include the wide availability of pirated and counterfeit goods in both physical and virtual notorious markets. The 2016 USTR Out – Of-Cycle-Review of Notorious Markets listed two Mexican markets, Tepito in Mexico City, and San Juan de Dios in Guadalajara.
There have been some recent positive developments. For example, Mexico formally joined the Madrid Protocol in 2012, which provides a simple streamlined process for trademark owners to apply for trademark protection in multiple jurisdictions. Additionally, a significant positive development in 2016 was the passage of legislation establishing opposition procedures for trademark applications, which is expected to increase due process and transparency in the trademark registration process, helping to address the issue of bad-faith trademarks. In addition to IMPI’s online trademark registration system, a new online patent registration system was just recently added. Moreover, as a result of the North America Competitiveness work plan, the United States, Canada, and Mexico entered into a Trilateral Patent Prosecution Highway (PPH) pilot program, which allows a patent holder in one country to fast track the examination of that same patent application in the other country in order obtain the corresponding patent faster and more efficiently. Mexico is a signatory to numerous international IPR treaties, including the Paris Convention for the Protection of Industrial Property, the Bern Convention for the Protection of Literary and Artistic Works, and the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights. Although Mexico is a signatory to the WIPO Internet Treaties (WCT and WPPT), which were ratified in 2002, it has yet to fully implement them.
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. Third, rights must be registered and enforced in Mexico, under local laws. Your U.S. trademark and patent registrations will not protect you in Mexico. There is no such thing as an “international copyright” that will automatically protect an author’s writings throughout the entire world. Protection against unauthorized use in a particular country depends, basically, on the national laws of that country. However, most countries do offer copyright protection to foreign works under certain conditions, and these conditions have been greatly simplified by international copyright treaties and conventions.
Guiding principles for effective protection and enforcement of your IPR
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 Mexico 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 attorneys but assumes no responsibility for the professional ability or integrity of the providers listed.
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 seen as 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 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: 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 for copyright protection 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.
- Check information on obtaining and enforcing intellectual property rights and market-specific IP Toolkits. The toolkits contain detailed information on protecting and enforcing IP in specific markets and also contain contact information for local IPR offices abroad and U.S. Government officials available to assist small- and medium-sized enterprises (SMEs).
- 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.
J. Todd Reves
Additional resources for right holders:
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
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. Cuaúhtemoc 06500
Tel.: + 52 55 5141 380
National Institute of Copyright (INDAUTOR)
Puebla No. 143
Col. Roma, Del. Cuauhtémoc
06700 México, D.F.
Tel: + 52 55 3601 8270
Mexican Institute of Industrial Property (IMPI)
Periférico Sur No. 3106
Piso 9, Col. Jardines del Pedregal
Mexico, D.F., C.P. 01900
Tel: +52 55 56 24 04 01 / 04
+52 55 53 34 07 00
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