Mexico
Answer ... During infringement proceedings initiated before IMPI, the applicant may request IMPI to carry out an inspection at places where products are manufactured, stored, transported, sold or marketed, or where services are provided, in order to examine the products, the conditions for the provision of services and the documents relating to the activity in question, whether in physical establishments or on digital platforms (Article 358 of the Federal Law for the Protection of Industrial Property).
Additionally, the Federal Law for the Protection of Industrial Property provides for several injunctions in case of infringement, which may be adopted by IMPI.
Mexico
Answer ... Where an inspection is carried out at an establishment as part of the infringement proceedings, if the inspector verifies the commission of an act of infraction foreseen in the Federal Law for the Protection of Industrial Property, he or she will secure, as a precautionary measure, the allegedly infringing products making an inventory of the secured goods which will be recorded in the inspection report (Article 362 of the Federal Law for the Protection of Industrial Property).
The insured merchandise must be always at the disposal of IMPI. If IMPI requires the merchandise and this is not provided accordingly, the depositary will be subject to the sanctions set out in Article 388, Section I of the Federal Law for the Protection of Industrial Property, without prejudice to the corresponding civil or criminal actions, unless there is a justified cause.
In securing the goods, the owner of the establishment in which the infringing products are located may be designated as depositary if it is a fixed establishment. If this is not the case, the person or institution indicated by the applicant will be designated as depositary; or the products may be stored at IMPI (Article 365 of the Federal Law for the Protection of Industrial Property).
Mexico
Answer ... According to Article 5 of the Federal Law for the Protection of Industrial Property, IMPI has the authority to order the payment of damages and losses caused to the patent holder in proceedings for an administrative declaration of infringement, and to quantify the amount of compensation to be paid.
In this respect, Article 56 of the Federal Law for the Protection of Industrial Property provides that once a patent has been granted, the patent holder may claim the payment of damages from third parties which, prior to grant but following publication of the application in the IMPI Gazette, exploited the patented invention without its consent.
Additionally, if the patent holder seeks to claim damages through civil, commercial or punitive actions, it must:
- have applied the indications and legends set out in Articles 44, 89, 236 and 302 of the Federal Law for the Protection of Industrial Property to the products, containers or packaging of its product; or
- otherwise have stated or made public knowledge that the products or services are protected by an industrial property right (Article 409 of the Federal Law for the Protection of Industrial Property).
Mexico
Answer ... Once IMPI has issued an enforceable declaration of administrative infringement, the patent holder may present its claim for damages and losses caused, as well as the corresponding quantification thereof. To this end, it can present all evidence which it deems pertinent.
In determining the amount of compensation to be paid, account will be taken of:
- the date on which the infringement was established; and
- at the option of the patent holder, any indicator of legitimate value presented by it.
These administrative penalties are imposed in addition to appropriate indemnification for material damages, which in no case will be less than 40% of the public sale price of each infringing product.
Mexico
Answer ... According to Article 344 of the Federal Law for the Protection of Industrial Property, in proceedings concerning acts of infringement and alleged violations of any rights protected by the Federal Law for the Protection of Industrial Property, IMPI may order any of the following measures:
- the withdrawal from circulation of the infringing goods;
- an immediate prohibition on the commercialisation or use of infringing goods;
- the securing of assets;
- the suspension of the free circulation of any merchandise destined for import, export, transit or any customs regime which violates the provisions of the Federal Law for the Protection of Industrial Property, in accordance with the applicable legal ordinances on customs matters;
- the suspension, blockage or removal of infringing content, or the cessation of infringing acts, carried out through any virtual, digital or electronic means, known or unknown; and
- the suspension of the provision of the service or the closure of an establishment where the measures listed above are not sufficient to prevent or avoid the violation of the protected rights.
If the infringing product or service is already on the market, merchants or service providers must abstain from its sale or provision as of the date on which they are notified of the resolution. This also applies to producers, manufacturers, importers and their distributors, who will be responsible for immediately recovering the products from the market.
Mexico
Answer ... If the patent holder seeks to increase or multiply damages, it must file evidence demonstrating that the damages suffered are greater than 40%. The action to claim damages must be filed within two years of the date on which IMPI issued its declaration of patent infringement.
Mexico
Answer ... Sanctions are available and are applied by IMPI according to the seriousness of the conduct or omission incurred by the infringer. There is no specific priority in terms of their imposition, and they are additional to the corresponding compensation for damages or reparation of the material damage to those affected.
In determining the applicable sanctions, IMPI will consider:
- whether the infringement was intentional;
- the economic conditions of the infringer;
- the seriousness of the infringement in the relevant trade; and
- the damage caused to those directly affected (Article 392 of the Federal Law for the Protection of Industrial Property).
Where the infringer has carried out the infringing act or omission while knowing of the existence of the patent holder’s rights, the amount imposed should be twice the fine imposed for the infringing conduct.
Mexico
Answer ... According to Article 388 of the Federal Law for the Protection of Industrial Property, administrative infractions may be sanctioned with:
- a fine of up to 250,000 units of measure and update (UMAs) in effect at the time the infraction is committed for each type of conduct that occurs;
- an additional fine of up to 1,000 UMAs for each day during which the infraction persists;
- temporary closure for up to 90 days; and
- definitive closure.
Mexico
Answer ... A party may obtain attorneys’ fees if this is stipulated in the claim for damages filed before a civil court. However, infringement proceedings must be brought separately and before IMPI.
Mexico
Answer ... According to the Federal Court of Civil Procedure, the party that loses, in whole or in part, with respect to the claims of the opposing party must reimburse its opponent for the costs of the proceedings.