IMPI

What are the provisions of the Industrial Property Law, LPI (Ley de Propiedad Industrial) and the Copyright Law regarding applications of administrative actions?

 

The application of administrative action for invalidity is an action brought up by the holder to request the invalidation of a registration granted by the IMPI based on the provisions for invalidity provided on the LPI.

The application of administrative action for expiration is an action brought up by the holder to request the expiration of a registration granted by the IMPI because he has not used the registration (distinctive signs) or did not pay the corresponding fee.

The application of administrative action for cancellation is an action brought up by the holder to request the cancellation of a trademark when he has not taken proper actions against infringements and the registered trademark has become a generic denomination and consequently has lost distinctive features.

The application of administrative action for industrial property infringement is an action brought up by the holder to request that a penalty be levied against anyone engaged in unfair competition or for using or exploiting his rights without his consent.

The application of administrative action for copyrights infringement related to trade is an action brought up by the holder to request that a penalty be levied against anyone using copyrighted works, selling illegal copies of copyrighted works or profiting from registered copies without the author’s or copyright owner’s consent.

What are the requirements to file an administrative infringement claim?

 

Based on the provisions of Article 189 of the Industrial Property Law, the requirements to file an administrative infringement claim are as follows: petitioner’s name or the name of his legal representative; the address to receive notifications; name and address of the involved party or his legal representative; a detailed reason for the request in unambiguous, precise terms; a factual description and the legal grounds; and in addition to complying with the provisions of Article 189, the applicant must comply with the provisions of Article 5 of the Industrial Property Law regulations applicable to applications of administrative action.

 

How can I file documents in a language different from Spanish?

 

Such documents should be filed with a corresponding Spanish translation.

Can the applicant provide proof and request an extension to file such documents?

 

Based on the provisions of Article 190 of the Industrial Property Law, proving documents should be filed along with the application, except in those cases considered in Article 198, specifically, when the offender or affected holder is unable to file proof because proving documents are kept elsewhere. In these cases, the applicant can request a 15-day deadline extension to file proof.

 

What are “administrative infringements”? What are the penalties and crimes related to industrial property infringements?

 

Article 213 of the Industrial Property Law.

I. Engaging in acts contrary to best practices in the industry, commerce activities, and services that amount to unfair competition and fall within the subject matter regulated by this Law.

 

II. Causing to appear as patented goods that are not. If the patent has expired or has lapsed or declared invalid, there shall be an infringement after one year after the date of lapse or when applicable from the date on which the declaration of invalidity became effective.

 

III. Placing products on sale, distributing products, or offer services indicating that they are protected by a registered trademark when they are not. If the registration has expired, has been declared invalid or has been cancelled, there shall be an infringement one year after the date of expiry or when applicable after the date on which the relevant declaration became effective.

 

IV. Using a trademark confusingly similar to a registered trademark to protect products or services identical or similar to those protected by the registered trademark.

 

V. Using a registered trademark or one confusingly similar to a registered trademark without the consent of its rightful owner as an element of a commecial name or business name, or vice versa, provided that said commercial names or business names are related to establishments working with products or services protected by said trademark.

 

VI. Regarding the provisions of Article 105 of this Law, using a commercial name that is identical or confusingly similar to another already being used by a third party to protect an industrial, commercial, or service establishment in the same or a similar field within the geographical area of the actual customers or any area within the Republic.

 

VII. Using as trademarks the names, signs, symbols, abbreviations, or emblems referred to in Articles 4 and 90, subparagraphs VII, VIII, IX, XII, XIII, XIV and XV, of this Law.

 

VIII. Using a trademark previously registered or confusingly similar thereto as a commercial name or business name or part of such name by an individual or company whose activity is the production, importation, or marketing of goods or services identical or similar to those to which the registered trademark applies without the written consent of the owner of the trademark registration or the person empowered to give such consent.

 

IX. Performing, in the course of industrial or commercial activities, acts that confuse, mislead, or deceive the public by causing to wrongly believe or assume:

 

That a given establishment and that of a third party are related or associated.
That products are manufactured according to specifications, licenses, or authorizations from a third party.

That the product involved comes from a territory, region or locality different from the actual place of origin, in such a way as to mislead the public as to the geographical origin of the product.

X. Pursuing or achieving the aim of denigrating the products or services, the industrial or commercial activity, or the establishment of another party. This provision shall not apply to the comparison of products or services protected by the trademark for the purpose of informing the public, provided that the comparison is not biased, false or exaggerated within the terms of the Federal Consumer Protection Law.

 

XI. Manufacturing or developing goods covered by a patent or by an utility model or industrial design registration without the consent of its rightful owner or without the appropriate license.

 

XII. Offering for sale or distributing goods protected by a patent or by an utility model or industrial design registration knowing that they have been manufactured or developed without the consent of the owner of the patent or registration or without the appropriate license.

 

XIII. Using patented processes without the consent of the owner of the patent or without the appropriate license.

 

XIV. Offering for sale or distributing goods that are the result of the usage of patented processes knowing that they have been used without the consent of the owner of the patent or the holder of an appropriate exploitation license.

 

XV. Reproducing or imitating industrial designs protected by a registration without the consent of its rightful owner or without the appropriate license.

 

XVI. Using a registered advertising announcement or one confusingly similar thereto without the consent of its rightful owner or without the appropriate license for the purpose of advertising goods, services or establishments identical or similar to those to which the announcement applies.

 

XVII. Using a commercial name or a name confusingly similar thereto without the consent of its rightful owner or without the appropriate license to protect an industrial, commercial or service establishment in the same or a similar field.

 

XVIII. Using a registered trademark without the consent of its rightful owner or without the appropriate license on goods or services identical or similar to those to which the trademark applies.

 

XIX. Offering for sale or distributing goods identical or similar to those to which a registered trademark applies knowing that the said trademark has been used on those goods without the consent of its rightful owner.

 

XX. Offering for sale or distributing goods to which a trademark applies and which have been altered.

 

XXI. Offering for sale or distributing goods to which a registered trademark applies after having partially or totally altered, replaced, or deleted such trademark.

 

XXII. Using an appellation of origin without the appropriate authorization or license.

 

XXIII. Reproducing a protected layout design in its entirety or any part that is considered original in and of itself by incorporation in an integrated circuit or in a different way without the authorization of the registration owner.

 

XXIV. Importing, selling, or distributing in any form for commercial purposes in violation of the provisions of this Law, any of the following without the authorization of the registration owner:

 

A protected layout design

An integrated circuit incorporating a protected layout design; or

A product incorporating an integrated circuit that itself incorporates an unlawfully reproduced protected layout design; and

XXV. All other violations to the provisions of this Law that do not constitute crimes.

Article 214.- Administrative infringements to this Law or other provisions thereof shall be penalized as follows:

 

I. A fine of up to 20,000 times the current minimum daily wage in Mexico City.

 

II. An additional fine of up to 500 times the current minimum daily wage in Mexico City for each day the infringement persists.

 

III. A temporary closure for up to 90 days.

 

IV. A permanent closure.

 

V. Administrative detention for up to 36 hours.

 

Article 223. The following shall constitute crimes:

 

I. Repeating the conduct described in Article 213, subparagraphs II to XXII, of this Law once the first administrative penalty imposed on that account has been enforced.

 

II. Counterfeiting on a commercial scale with ill intent trademarks protected by this Law.

 

III. Producing, storing, transporting, introducing into the country, distributing or selling on a commercial scale with ill intent items that show counterfeiting of trademarks protected by this Law, and knowingly contributing or providing in any form raw materials or supplies intended for the production of items that display counterfeiting of trademarks protected by this Law.

 

IV. Revealing to a third party a trade secret acquired by virtue of employment, position, responsibility, the practice of a profession, or business relationships, or as a result of the grant of a license for its use, without the consent of the person safekeeping the trade secret, having been advised of its confidentiality, for the purpose of procuring an economic benefit for oneself or for the said third party, or for the purpose of doing harm to the person safekeeping the secret.

 

V. Appropriating a trade secret without the right to do so and without the consent of the person who keeps it or its authorized user, to use it or disclose it to a third party for the purpose of procuring an economic benefit for oneself or for said third party, or for the purpose of doing harm to the person safekeeping the secret or to the authorized user thereof, and

 

VI. Using information constituting a trade secret acquired by virtue of employment, position, responsibility, the practice of a profession, or business relationships, without the consent of the person safekeeping it or the authorized user thereof, or that has been disclosed to the responsible party by a third party, knowing that said third party was so acting without the consent of the person safekeeping the secret or the authorized user thereof, for the purpose of procuring an economic benefit or doing harm to the person safekeeping the secret or the authorized user thereof.

 

What is considered a copyright infringement and what are the penalties?

 

Article 231 of the Federal Copyright Law:

 

The following practices constitute trade-related infringements when they are engaged in for direct or indirect profit-making purposes:

 

I. Communicate to the public or public use of a protected work by any means and in any form without the express prior authorization of the author, his lawful heirs, or the holder of the author's equity rights.

 

II. Use of the likeness of a person without his permission or that of his successors in title.

 

III. Produce, manufacture, stock, distribute, transport, or market unlawful copies of works, phonograms, videograms, or literary works protected by copyrights or related rights without the appropriate authorization of the copyright holder as provided by this Law.

 

IV. Offer for sale, stock, transport, or distribute works protected by this Law that have been distorted, altered or mutilated without the permission of the copyright holder.

 

V. Import, sale, rent or any act that affords possession of a device or system whose purpose is to deactivate electronic devices for the protection of a computer program.

 

VI. Retransmit, fix, reproduce, and cast to the public the broadcasts of broadcasting organizations without the appropriate authorization.

 

VII. Use, reproduce or exploit a reserved rights notice or computer program without the consent of the holder.

 

VIII. Use or exploit a name, title or denomination, or the physical, psychological or operational features in such a way as to mislead or confuse a protected reserved rights notice.

 

IX. Use of literary or artistic works protected by Chapter III, Title VII of this Law contrary to the provisions of Article 158 thereof, and

 

X. Other infringements to the provisions of the Law involving actions on a commercial or industrial scale regarding works protected by this Law.

Article 232. Trade-related infringements provided by this Law shall be penalized by the Mexican Institute of Industrial Property according to the following fine schedule:

 

I. 5,000 to 10,000 times the minimum daily wage in the cases provided in subparagraphs I, III, IV, V, VII, VIII and IX of the foregoing Article.

 

II. 1,000 to 5,000 times the minimum daily wage in the cases provided in subparagraphs II and VI of the foregoing Article, and

 

III. 500 to 1,000 times the minimum daily wage in all other cases provided in subparagraph X of the foregoing Article.

 

An additional fine of up to 500 times the current minimum daily for each day that the infringement persists.