One of the measures to try to slow down the spread of the disease is stopping non-essential activities, both in the government and private sectors.

Naturally, these measures have affected the industrial property system.

The Mexican Patent and Trademark Office

On March 23, 2020, the Instituto Mexicano de la Propiedad Industrial (IMPI) or Mexican Patent and Trademark Office (MPTO) issued an order, suspending all deadlines due after March 24 and April 19, 2020; all such deadlines were extended for an undetermined period that will be reviewed in weekly basis. to April 20, 2020 (Update April 19, 2020: The suspension of deadlines has been extended to May 4, 2020 Update April 30: The suspension has been extended. Now all deadlines due between March 24 and May 31 are due on June 1, 2020).  Although the order does not provides that all days after between March 24 and April 19, 2020, are non-business days, no documents or applications may be filed, or notifications served, within such period (Update April 19, 2020: The MPTO started accepting online applications and documents related to trademarks and patents on April 16, 2020. Deadlines are still suspeded, but it is unclear if the filing date of such electronic documents would be the actual filing date or the date when the MPTO opens again. Update June 5, 2020: On May 13, 2020, the MPTO enabled an online platform that allows electronic filing of renewals, declarations of use, licenses and assignments. The MPTO plan this platform to be permanent). Terms calculated in days (such as the 10 business-day term to answer an infringement action) have been suspended. A copy of the order (in Spanish) and the updates thereof (in Spanish) are available here, here,  here and here.

The suspension does not affect the terms calculated in months or years. For example, if the MPTO served an officeaction regarding the examination of a patent or trademark application on February 22, 2020, the initial two-month term to answer would be calculated as normal and the answer would be due on April 23, 2020. The only change would be the deadline; if  the answer was originally due between on or after March 24 and April 19 May 3, May 31, 2020, the deadline would be extended to the first business day of the MPTO after the suspension April 20 May 4 June 1, 2020; and the automatic two-month term extension would start the day after on April 21 May 6, June 2 2020 (May 5 is holiday).

For a few days, between March 24 and March 26, 2020, the MPTO was on partial lockdown. Documents and applications on paper were received at the window of the MPTO, but the filing date of all such documents would be April 20, 2020 June 1, 2020 the first business day after the lockdown. Electronic documents and applications were not accepted (Update April 19, 2020: Starting April 16, 2020, the MPTO is acepting online application and documents again).

On March 26, 2020, the MPTO widened the suspension of activities. Starting March 27, the MPTO has suspended virtually all acivities and the offices are closed. The only exceptions are actions essential for the mitigation of the Covid-19 outbreak and enforcement of orders to lift preliminary measures issued in infringement procedures. The new order (in Spanish) is available here.

The MPTO refrained from providing a schedule to restart activites. That would be decided in weekly basis and in coordination with the federal sanitary auhtorities. is scheduled to restart normal operations again on April 20 June 1, 2020.

The Federal Court of Administrative Affairs and the federal courts of appeals

The courts also shut down. (Update April 30, 2020: The Federal Courts are under partial lockdown, and provisions to allow online meetings between the judges have been enacted. Urgent matters will have preference, but online meetings should help to reduce the growing backlog of decisions. All terms and deadlines have been suspended; deadlines due between March 18 and May 31 have been extended to June 1, 15, 2020).

The Tribunal Federal de Justicia Administrativa or Federal Court of Administrative Affairs (FCAA) and all its panels, including the the Sala Especializada en Propiedad Intelectual or Specialized Panel in Intellectual Property, and the tribunales colegiados de circuito or federal courts of appeals, closed on March 18, 2020. A few district courts and courts of appeals are open for emergency cases only. (Update April 30, 2020: The panels of the FCAA are working online to decide urgent matters).

In both the FCAA and the courts of appeals, all days between March 18 to April 19, May 31, June 14, 2020, would be considered as non-business days, and would not be counted for terms calculated in days (such as the term to file an appeal against a decision of the MPTO).

The courts are scheduled to start working again on April 20, 2020 (Update April 19, 2020: The courts are now scheduled to restart activities on May 6, 2020 Update April 30, 2020: The courts are scheduled to restart full activities on June 1, 2020. Update June 5, 2020: The courts are scheduled to restart full activities on June 15, 2020). All deadlines due between March 18 and May 431 June 14, would be extended to April 20, May 6 June 1 15, 2020.

The setting of a possible date to restart normal activities (April 20, 2020) was not based on scientific data, but to match the date students go back to school after the Easter holidays.

The non-business period may be extended, depending on how the Covid-19 outbreak develops.

Dear reader, please stay safe and help others staying safe.

La entrada The temporary shut down of the Mexican Patent and Trademark Office and courts (updated to June 5, 2020) se publicó primero en Reyes Fenig.

Civil actions for indemnification of damages due trademark and patent infringement are unusual if compared with the number of administrative infringement actions. The main statutory provisions regarding payment of damages are articles 221 and 221 Bis of the Industrial Property Law, enacted in 1994.

Section 221 Bis of the Industrial Property Law states that the amount of the indemnification due violation of the rights stipulated in the statute shall be no less than the equivalent of 40% of the retail price of the goods or services sold or rendered in violation of such rights. The claim for damages has to be filed with a court of common jurisdiction.

A landmark decision was the 2004 jurisprudencia or binding precedent 1a./J. 13/2004[1] from the Mexican Supreme Court (MSC). The binding precedent was a consequence of contradictory decisions issued by lower court, namely, if it was necessary to have a final infringement decision issued by the Mexican Patent and Trademark Office (MPTO) as a prerequisite to file a civil action for damages (read our article  Damages claims due patent and trademark infringement).

After the binding precedent 1a./J. 13/2004, the MSC has issued a handful of decisions in about the civil action of indemnification of damages associated to patent and trademark infringement (copyright too), none of them binding. From the decisions of the MSC, I have extracted a few basic guidelines:

a) It is necessary to have a final infringement decision from the MPTO before filing a civil action for indemnification of damages.

b) The court where the civil lawsuit has been filed cannot review the MPTO’s decision about the infringement.

c) The plaintiff has to prove, in the trial, that the infringement caused actual damages.

d) The plaintiff must also prove the cause-effect relation between the infringement and the actual damages.

e) Civil actions for damages that involve trademark or patent rights originated from a contractual dispute (such as a breach of a license agreement), or that are not related to a cause of administrative infringement (i.e. a criminal case), do not require a previous infringement decision from the MPTO.

Issues identified as a), b), c) and d) were stated in the 2004 binding precedent from the MSC. As a consequence, and until very recently, I thought there would be little controversy about them in indemnification cases associated to trademark and patent infringement.

On December 2017, the Judicial Journal of the Federation published a non-binding decision from the MSC, regarding the constitutional validity of article 221 Bis of the Industrial Property Law[2]. Basically, the MSC ruled that the lack of identification of the specific industrial property rights that, if infringed, would allow the claim of payment of damages provided by article 221 Bis of the Industrial Property Law, does not make the statutory provision unconstitutional.

Of course, the precedent of the MSC was very important, and confirmed the standing of the Court on different technical issues (namely the ones identified as a), b), c) and d) above) around the action for indemnification of damages because of patent and trademark infringement. However, making a little research, I found that the underlying civil case (from 2013) was even more interesting because the lower tribunal colegiado or court of appeals disagreed with some critical positions that the MSC has adopted since 2004 in different decisions.

Because of a number of technical reasons, the MSC did not review the merits of the underlying civil case in the decision published in 2017, only the constitutionality of article 221 Bis of the Industrial Property Law.

The underlying civil case was decided by the Octavo Tribunal Colegiado en Materia Civil del Primer Circuito or Eight Panel of the Federal Court of Appeals in Mexico City (Eight Panel)[3] on May 8, 2013. (Update February 27, 2019: The case number was D.C. 153/2013. The public version of the full decision (in Spanish) may be downloaded here).

The Eight Panel ruled that the precedent 1a./J. 13/2004 of the MSC was binding only about having a final infringement decision from the MPTO as a prerequisite for a civil action for indemnification of damages. Other questions stated in the precedent are just “orientations” (unfortunately the Eight Panel did not state a statutory provision, precedent or legal theory supporting the ruling).

Therefore, the Eight Panel decided that, on a damages case based on section 221 Bis of the Industrial Property Law, the plaintiff does not have to prove actual damages or the cause-effect relation between the infringement (previously declared by the MPTO) and the actual damages. The plaintiff only has to prove the amount of the sales at retail price of the infringing product/service, and calculate the equivalent to 40% in order to obtain the amount that, as a minimum, the plaintiff has the right to collect as indemnification from the infringer/defendant.

If other federal panels and state courts follow the Eight Panel’s example, we may see in the next years a revival of successful lawsuits for indemnification of damages due to patent and trademark infringement in Mexico. It will also be interesting to see if the MSC will have something to say about the non-binding “orientations” that the Eight Panel and potentially other courts will start finding in the binding precedents of the MSC.

[1] “PROPIEDAD INDUSTRIAL. ES NECESARIA UNA PREVIA DECLARACIÓN POR PARTE DEL INSTITUTO MEXICANO DE LA PROPIEDAD INDUSTRIAL, SOBRE LA EXISTENCIA DE INFRACCIONES EN LA MATERIA PARA LA PROCEDENCIA DE LA ACCIÓN DE INDEMNIZACIÓN POR DAÑOS Y PERJUICIOS”, at Semanario Judicial de la Federación y su Gaceta, Ninth Period, Vol XIX, May 2004, page 365 (Electronic version: https://sjf.scjn.gob.mx/sjfsist/Paginas/DetalleGeneralV2.aspx?Epoca=1e3e10000000000&Apendice=1000000000000&Expresion=1a.%2FJ.%252013%2F2004&Dominio=Rubro,Texto&TA_TJ=2&Orden=1&Clase=DetalleTesisBL&NumTE=1&Epp=20&Desde=-100&Hasta=-100&Index=0&InstanciasSeleccionadas=6,1,2,50,7&ID=181491&Hit=1&IDs=181491&tipoTesis=&Semanario=0&tabla=&Referencia=&Tema=. Date of review: January 14, 2019).

[2] “PROPIEDAD INDUSTRIAL. EL ARTÍCULO 221 BIS DE LA LEY RESPECTIVA NO CONTRAVIENE EL PRINCIPIO DE SEGURIDAD JURÍDICA” at Semanario Judicial de la Federación, Décima Época, Book 49, Vol I, December 2017, page 437 (Electronic version: https://sjf.scjn.gob.mx/sjfsist/Paginas/DetalleGeneralV2.aspx?Epoca=1e3e10000000000&Apendice=1000000000000&Expresion=%25202015750&Dominio=Localizacion&TA_TJ=2&Orden=1&Clase=DetalleTesisBL&NumTE=1&Epp=20&Desde=-100&Hasta=-100&Index=0&InstanciasSeleccionadas=6,1,2,50,7&ID=2015750&Hit=1&IDs=2015750&tipoTesis=&Semanario=0&tabla=&Referencia=&Tema=. Date of review: January 19, 2019).

[3] While all decisions from the different federal courts and panels are of public record and everybody may request a copy (with personal information redacted), not all decisions are published as precedents. It is up to each court and panel deciding if the case is relevant enough to be published in the Judicial Journal of the Federation. The decision of the underlying civil case rendered by the Eight Panel on May, 2013, was not published. (Update February 27, 2019: You may download the public version of the full decision (In Spanish) here)

La entrada Damages claims due infringement of trademarks and patents in Mexico. Who has the final saying? se publicó primero en Reyes Fenig.

Under some extraordinary circumstances, it is possible to file an appeal against a decision of the MPTO with a Federal District Judge, but this not the rule and the appeal I will refer to in this article is the appeal with the FCTAA.

One of the rules of the appeals with the FCTAA has been that the appellant and the appellee may file new arguments and evidence that were not previously filed with the MPTO; we call this rule litis abierta.

The filing of new arguments and/or evidence in the appeal has caused the FCTAA to revoke some decisions issued by the MPTO, fully legal and consistent to what the parties argued and proved. Nevertheless, not all courts of appeals agree on how the litis abierta rule should be applied. The Fourth Court of Appeals in Mexico City was against the filing of new evidence of use in appeals associated to cancellation actions against registered trademarks due non-use.

A new binding precedent from the Supreme Court (73/2013)[1], published in July 2013, has set some limits to the possibility of filing new evidence in appeals, although the language the court used in drafting this precedent is ambiguous. Although the precedent does not affect the right to file new arguments in the appeal with the FCTAA, the court stated that it would not be valid to declare the invalidation of a decision based on the analysis of evidence that the appellant did not file in the original procedure in spite of having the obligation and being capable to legally do so.

The precedent was issued to solve contradictory rulings between courts of appeals. Although origin of the contradictory decisions and the precedent itself were associated to tax cases, it construes a statutory provision that applies to all appeals filed with the FCTAA, thus it will impact IP cases.

In my opinion, the language the court uses in the precedent is a little ambiguous and it raises some questions. I am concerned about the obligation of filing evidence. Under Mexican law, filing evidence is a burden, but not an obligation. Actually, some lawyers believe that proving is a right. So what did the court mean about having the obligation of filing evidence?

I think that filing evidence becomes an obligation when the government agency, i.e. the MPTO, issues a specific order requesting one of the parties to exhibit certain document in the procedure. If the MPTO issue an order requesting a specific document, then there was an obligation to file it. If the party that received the order to file the document did not do it, according to this binding precedent, it can’t file it later as evidence in the appeal. Further, any document that was not subject matter of an order from the MPTO to be filed in the invalidation/cancellation/infringement proceeding, may be filed as new evidence in the appeal, because there was no obligation to file it in the previous procedure.

However, I think the courts of appeals will construe the precedent 73/2013 in a broader way. While continuing accepting the filing of new arguments, I think the courts of appeals will decide against the filing of all new evidence in the appeal. As an example, the Tenth Court of Appeals in Mexico City construed the precedent 73/2013 in such a broad way when deciding the final appeal (amparo directo) DA 552/2013.

The litis abierta rule applicable to appeals with the FCTAA will probably continue evolving, and I hope the courts of appeals and the Supreme Court itself will publish new precedents clarifying and narrowing the broad construction of this relatively new precedent.

La entrada The Mexican Supreme Court sets limits to the filing of new evidence in appeals. se publicó primero en Reyes Fenig.