Litigation FAQ

The first instance is usually the Instituto Mexicano de la Propiedad Industrial or Mexican Patent and Trademark Office (MPTO). The MPTO has authority to decide patent, design, trademark, unfair competition and copyright infringement associated with trade. The MPTO also has authority to issue preliminary measures against infringers and to decide invalidation and cancellation actions involving patents and trademarks.

The infringement, invalidation and cancellation cases involve a full administrative trial with the MPTO. The time the MPTO takes to decide a case is very variable; now, the minimum would be eighteen months.

The decisions of the MPTO may be appealed, either by filing a revisión administrativa or petition of administrative review with a higher rank official of the MPTO; an appeal with the Tribunal Federal de Justicia Administrativa or Federal Court of Administrative Affairs (FCTAA); or an amparo or appeal with a Federal District Court (exceptional case). Most appeals are filed with the FCTAA; the FCTAA has a Sala or Panel specialized in IP.

The FCTAA takes between twelve to eighteen months to render a decision; District Judges are usually faster. The FCTAA or the Judge’s decision may be appealed with a Tribunal Colegiado de Circuito or Federal Court of Appeals.

Infringement and invalidation actions regarding registered plant varieties are filed with the Ministry of Agriculture.

Invalidation actions against registration of works with the Public Copyright Registry must be filed with the FCTAA.

All the steps of a typical IP case take place in Mexico City.

Yes, although it is not exactly an injunction. We call them preliminary measures; the courts and MPTO (depending on the specific case) have authority to issue them.

Preliminary measures may include a provisional order to the infringer and/or to third parties to stop the manufacture and/or sell of the infringing product or service, an order to recall the infringing goods from the retailers, and the seizure of infringing products.

To obtain the preliminary measures, the plaintiff must file a bond (to guarantee payment of the damages the preliminary measures may cause to the defendant in case the MPTO or the courts decide there was no infringement), file evidence of the existence of an actual or potential infringement and prove that it marked the products with a warning about the existence of the patent, with the ® symbol or an equivalent. The MPTO usually allows curing the lack of marking by publishing a notice in some major newspaper, informing about the existence of the trademark registration or patent.

It is also possible to ask the MPTO to request the assistance of custom authorities to stop the importation of infringing products.

Yes.

The statute stipulates that a licensee is allowed to file infringement actions against third parties, unless otherwise explicitly stipulated in the agreement. Even non-exclusive licensees and franchisees are allowed to oppose infringers if the recorded agreement does not expressly state that they can’t.

The owner of a trade secret, registered trademark, patent or copyright may choose between filing an action for payment of damages with a court of common jurisdiction or an administrative infringement action with the MPTO.

The courts and the MPTO have authority to issue preliminary measures to stop the infringing activities.

The infringement decision issued by the MPTO has two main consequences: a) a final order against the infringer, ordering it to stop the infringing activities, and b) a fine on the infringer.

If the infringer does not comply with the cease order, the MPTO will impose more fines or even order the closure of the premises of the infringer.

The fine that the MPTO would impose on the infringer may be as high as $22,405,000.00 Mexican pesos (about US$1,224,000.00) in a patent or trademark infringement action and up to $3,584,800.00 Mexican pesos (about US$160,000.00) if it is a copyright trade-related infringement. All fine monies would be for the federal government, not for the plaintiff.

The MPTO has no authority to award damages or legal fees.

After the infringement decision from MPTO becomes final, the plaintiff may start an ancillary procedure with the MPTO to seek the payment of damages and losses.

Under Mexican law, plaintiff may only sue for actual damages and losses, and must prove the cause-effect link between the infringement and the actual damage or losses, regardless the venue (the MPTO or a court).

Under the current statute (enacted in 2020), the trademark owner or licensee may file the action for payment of damages or losses due copyright, trademark or patent infringement or unfair competition with a court, without a prior final administrative infringement decision issued by the MPTO.

The Federal Industrial Property Law provides different ways to help plaintiffs calculating the minimum amount of damages and/or losses it may claim due trademark or patent infringement or unfair competition: 40% of the estimated commercial cost of a license; 40% of the retail price of the goods or services sold by the infringer (assuming the price of a legitimate product or service); 40% of the actual plaintiff’s lost profits; 40% of the profits earned by the infringer.

On the other hand, the Copyright Law stipulates that the right holder is entitled to claim as damages, at least the equivalent of 40% of the retail price of the goods sold by the infringer, (assuming the price of a legitimate copy) if it is feasible to calculate the amount of the damages in such a way.

Yes, against patents and trademark applications.

Patent applications may be subject of an opposition within a two-month term after the publication of the application in the Official Gazette. Publications in the Official Gazette take place only after the approval of the formal examination. The purpose of the opposition is allowing any third party to show the examiner any possibly relevant prior art. It is up to the examiner to consider such prior art as relevant for the examination of the application.

Trademark, tradename and slogan (aviso comercial) applications may also be subject of oppositions. Oppositions are filed to alert/inform the examiner about prior registrations/applications, or some other statutory prohibition affecting the application.

Trademark applications are published within a ten-day term after the filing date; third parties with legal standing may file the opposition and the evidence required to support the opposition within a one-month term.

If the opposition is filed, the examiner will issue an office action, informing the applicant about the opposition, so the applicant may answer it within a two-month term. Failure to timely answer the opposition would result in the automatic abandonment of the trademark/slogan/tradename application.

The invalidation and cancellation actions are filed with the MPTO, as first instance.

1. Trademarks. Invalidation.

The invalidation of registered trademarks and slogans, on any grounds, have retroactive effects, as if the registration was never issued. There are several causes of invalidation of a Mexican trademark registration:

1.a. Registration issued against a statutory provision (i.e., unfair registration of a well-known or famous trademark or registration of a logo reproducing a copyrighted design without authorization from the right-holder).

The statute of limitations stipulates that the invalidation action on the above-stated ground may be filed at any time.

1.b. Earlier and continuous use, in Mexico or abroad, of an identical or confusingly similar trademark, to identify the same or similar products or services.

This cause of cancellation is somehow unique of Mexico, given that it allows the cancellation of a Mexican trademark registration based only in the use of an identical or confusingly similar trademark in other countries. The statute does not demand reciprocity from the plaintiff’s country or that the plaintiff’s trademark is well-known in Mexico.

The plaintiff must prove that it started using the trademark in any country in the world before the filing date of the Mexican trademark registration, or before the date of first use in Mexico stated in the defendant’s trademark application.

The statute of limitations stipulates that the invalidation action on the above-stated ground must be filed within a three-year term (for registrations issued before August 10, 2018) or five-year term (for registrations issued on August 10, 2018, and on) term, counted from the date of publication of the registration in the Industrial Property Gazette.

1.c. Stating false information in the trademark application (registrations applied before November 5, 2020) or stating a false date of first use in the application (registrations applied for on November 5, 2020, and on).

Applicants must be careful with the information stated in the application, to avoid the registration from becoming vulnerable to this cause of invalidation.

The statute of limitations stipulates that the invalidation action on the above-stated ground must be filed within a five-year term, counted from the date of publication of the registration in the Industrial Property Gazette.

1.d. Existence of a trademark registration or application for an identical or confusingly similar trademark in Mexico, for the same or similar goods or services, in the name of a third party.

The statute of limitations provides that the invalidation action must be filed within a five year-term, counted from the date of publication of the registration in the Industrial Property Gazette.

1.e. Registration of a trademark identical or confusingly similar to one already registered abroad, if the application was filed by an agent, representative, distributor or licensee of the trademark owner, without authorization. In this case, the statute explicitly provides the presumption that the trademark was filed in bad faith.

The statute of limitations stipulates that the invalidation action on the above-stated ground may be filed at any time.

1.f. Registration obtained in bad faith. This cause of invalidation affects only trademark registrations issued on August 10, 2018, and on.

The statute of limitations stipulates that the invalidation action on the above-stated ground may be filed at any time.

2. Trademarks. Cancellation.

2.a. Lack of use of the registered trademark (as registered in the case of trademarks with a device or claim on special stylization or color) for three consecutive years in Mexico, on at least one of the products or services covered by the registration.

This cause of cancellation becomes available only after the third anniversary of issuance of the registration. It is not automatic; a third party with legal standing must file the cancellation action. It should not be confused with the cancellation due lack of filing of the statement of use after the third anniversary of issuance of the registration.

2.b. Cancellation due lack of declaration of effective and actual use. Owners of Mexican trademark registrations (including Madrid registrations designating Mexico) issued on August 10, 2018, and thereafter, must file a statement of actual and effective use of the registered trademark when the registration or protection becomes three years old. The term is three months after the third anniversary of the registration; there are no extensions or reminders, and failure to file the statement of use would result in the automatic cancellation of the registration.

2.c. Tolerated erosion of the distinctiveness of the registered trademark, to the extent that it becomes the generic name of the product or service identified with the mark.

A trademark/slogan/tradename registration may be subject of a partial invalidation or cancellation (i.e., affecting only some of the goods/services described in the registration), if the application was filed on November 5, 2020, and on. For trademark/slogan/tradename registrations filed before November 5, 2020, there is no partial cancellation or invalidation.

3. Patents. Invalidation.

3.a. Issuance without complying with the requirements provided in the law for patentability (novelty, inventive step and industrial use) or against a statutory patentability prohibition (i.e., claims on human cloning procedures).

The statute of limitations stipulates that the invalidation action on the above-stated ground may be filed at any time.

3.b. Insufficient description of the invention to an extend that it may not be reproduced by a person skilled in the art.

The statute of limitations stipulates that the invalidation action on the above-stated ground may be filed at any time.

3.c. Claims not supported in the specification.

3.d. Divisional applications stating claims that could not be subject matter of a divisional application. As a rule, a divisional application may not be divided again.

3.e. If the original scope of the claims was illegally extended as a consequence of a limitation of correction of the patent.

3.f. Illegal acknowledging of a priority claim, with consequences in the determination of the novelty or inventive step of the claimed invention.

3.g. Double patent on the same invention,

3.h. Issuance of patent to an applicant that had no right on the invention.

The statute of limitations stipulates that the invalidation action on any the above-stated grounds may be filed at any time.

3.i. If there was a serious error or oversight by the Mexican Patent and Trademark Office, or if the patent was issued to someone not entitled to obtain it.

The statute of limitations stipulates that the invalidation action on the above-stated ground may be filed within a five-year term after the publication of the patent in the Official Gazette.

Invalidation of patents always have retroactive effects, destroying all consequences of the filing.

4. Patents. Cancellation.

4.a. Lack of payment of annuities.

Annuities are due only after the allowance of the patent, and the first ones must be paid when paying the issuance fee. Failure to pay the annuities within the regular or grace term or requesting the reinstatement of the patent would result in the cancellation of the patent.

4.b. Lack of working.

If the claimed invention has not been worked by the patent owner or the licensee after the issuance of a compulsory license, the patent is vulnerable to a cancellation action.

No. The patent applicant has no action to oppose the use of the claimed product, apparatus or process by third parties if the patent is not issued.

The only “remedy” or deterrent that the statute provides is that the patentee would be allowed to claim damages from infringers, retroactively to the date of publication of the patent application, but it is necessary to wait for the issuance of the patent.

The patent owner of licensee may choose to file the action for damages at a court, or with the MPTO after it issues a final infringement decision.

No. The Federal Copyright Law explicitly states that the copyright is fully protected without registration of the work.

Notwithstanding the above, in practice, it can be hard to enforce copyright if the work is not registered in Mexico or other country.