Mexico
Answer ... There are four potential remedies:
-
The Mexican Institute of Industrial Property (IMPI) can:
-
- hear infringement cases;
- impose preliminary or permanent injunctions;
- seize infringing goods;
- impose severe fines; and
- even award damages at the conclusion of the proceeding.
- The procedure is not quick, but it is nonetheless typically less complex and expensive than the other remedies.
- A civil action for damages can be attempted before a civil court, either federal or local. The courts can also impose injunctions. However, civil proceedings can be temporarily suspended if the defendant challenges the validity of the allegedly infringed registrations before IMPI, which can be a significant cause of delay.
- The forgery of trademarks, as well as the production, storage, transport, import, distribution or sale of products bearing forged trademarks, is a federal crime punishable by up to 10 years’ imprisonment and a fine. Thus, the owner of a trademark registration can also file a criminal complaint with a federal prosecutor.
-
Arbitration can be attempted if the parties so agree.
Mexico
Answer ... The same as those outlined in question 7.1. Moreover, it is also a form of trademark infringement under Mexican law to take action that could mislead consumers into believing that there is a relationship with the goods, services or establishments of a third party and this prohibition could be invoked against dilution.
Mexico
Answer ... Yes, the Federal Law for the Protection of Industrial Property also forbids:
- undertaking acts of unfair competition;
- disparaging a competitor;
- falsely claiming that a trademark is registered;
- using a registered trademark as part of a company name, domain name or trade name;
- altering trademarked products; and
- copying a trade dress.
Depending on the particularities of the case, these additional prohibitions can be invoked in addition to trademark infringement.
Mexico
Answer ... A complaint can be filed with IMPI. The infringer will be served with process and given 10 days to reply. The plaintiff will then have three days to submit additional arguments. Both parties will be given 10 days to file their closing arguments and a decision will then be issued. The proceeding takes around two years at first instance. If a preliminary injunction is sought, it will be notified to the infringer along with the complaint, and the infringer can submit arguments against it and try to lift it by posting a bond. If the injunction subsists, it can become permanent in the final decision. Products seized under a preliminary injunction can be destroyed upon the conclusion of the case.
For a civil case, the exact procedure varies on whether the case is filed with a federal court or a state court. Typically, after filing the complaint, the defendant will be served with process and allowed to answer the complaint. This is followed by an evidentiary stage in which the parties can present their evidence; closing arguments will then be filed and a decision of the case will be issued. Certain defences and procedural matters may interrupt the case. Most notably, if the infringer challenges the validity of the infringed registrations before IMPI, a civil case will be stayed pending the outcome.
For criminal cases, a criminal complaint must be filed with a public prosecutor. This will initiate an investigation stage before the public prosecutor, which may then move on to an initial hearing and supplemental investigation supervised by a judge, a pre-trial stage and finally a trial.
Mexico
Answer ... Mexico recognises prior use as a valid defence against trademark infringement. If use of an identical or confusingly similar mark is shown to have been made in Mexico in an uninterrupted manner and for identical or similar products or services, the registration will have no effect against the infringer. Because prior use is also a valid basis for challenging a trademark registration, this defence will often be supplemented by a counterclaim attacking the validity of the registration.
Moreover, in Mexico, trademark rights are normally exhausted upon the first sale. Therefore, once a trademarked product has lawfully entered into commerce, it may be advertised, distributed, purchased or used and such actions do not constitute trademark infringement. This can extend to authentic trademarked products that are imported into Mexico.
Mexico
Answer ... For the proceeding before IMPI, the remedies outlined in question 4 are available. For civil and criminal matters, appeals before a higher court are also usually available.