Mexico Mexique Mexiko. Report Q208. in the name of the Mexican Group. Border Measures and other Measures of Customs Intervention against Infringers

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1 Mexico Mexique Mexiko Report Q208 in the name of the Mexican Group Border Measures and other Measures of Customs Intervention against Infringers Questions I) Analysis of current law and case law The Groups are invited to answer the following questions under their national laws: 1) Do the laws of your country provide for border measures? If so, what is the legal basis? Yes, Industrial Property legislation provides for measures in connection with the violation of IP rights Legal basis: Industrial Property Law, Section 6 (subsection 5), 199 bis, and 199 bis1. Customs Law, Section 144 (subsection XXVIII), 148 (1st paragraph), and 149, and 156. Hyperlinks: 2) Do the laws of your country provide for other measures of customs intervention against infringers? If so, which ones and what is the legal basis? Yes, a criminal process whereby the IP holder requests the federal prosecutor (district attorney) to initiate a criminal investigation. Legal basis: Federal Criminal Code, Title 26th. Industrial Property Law, Section 223 and 211. Hyperlink: 3) Are border measures and other measures of customs intervention against (collectively referred to as border measures ) only available for pirated copyright and counterfeit trademark goods or also for goods infringing other IP rights? If so, for which types of IP rights are border measures available? No, the border measures in México are not only available for pirated copyright and counterfeit registered trademark goods. The measures apply for all IP rights covered by the Intellectual Property Laws, such as patents, utility models, industrial designs, geographic indications and copyrights. Exceptions are industrial secrets, commercial names and service marks. 1

2 Are border measures in particular available for goods infringing patents, plant variety rights, common law marks, unregistered design rights, or geographic indications? Border measures are available for goods infringing patents and geographic indications; but not for unregistered marks or designs. With regard to plan variety, the border measures are not foresees in such special legislation. Is actual registration of the IP rights required or is an application to register sufficient? Yes, a valid Registration is required to recognize ownership, and to take effect against third parties. Does unfair competition, passing off or the like give rise to border measures? No, as a valid IP Registration is required to access border measures. 4) Are border measures available for parallel imported goods? No, the parallel imported goods are exempt in accordance to TRIPS, since these are goods that have been manufactured with the right holder s consent. Legal basis: TRIPS, Section 4, Article 51. Hyperlink: Are border measures available for goods contained in a travellers private luggage? No, the border measures are not available for traveler s private luggage in accordance to the TRIPS, Section 4, Article 60. These goods are exempt. Are there any other goods excluded by your border measures legislation? Yes, our Customs Law, Section 8, exclude the military navies and all of those owned by foreign governments of the previsions contained in such law. 5) Who is entitled to file an application for customs action? The IP holders or its recorded licensee. Is there a centralised system for managing multiple applications for customs action through a single contact point? No, there is not a centralized system for managing multiple applications for customs actions. What are the conditions for border measures? The conditions for border measures, in accordance to Industrial Property Law, Section 199 bis1, are as follows: A) The holder has to prove the legal recognition to the intellectual property rights, and any of the following situations: 1) The existence of a violation to their right. 2) The imminent violation to its right. 3) The existence of a possibility to suffer an irreparable damage. 4) The existence of the fear that proves may be destroyed, hidden, lost or modified. 2

3 B) To grant a bail in order to response for the damages and perjuries that could be caused. C) To provide the necessary information for the identification of goods. In particular, what level of evidence for alleged infringement and other information is required by customs authorities regarding the application for customs action? Customs authorities require only a request issued by the administrative authority in intellectual property which bans the free circulation of the goods. Presumption of infringement is sufficient to obtain an order from the IP authority. To which extent are customs authorities willing to receive training by the right holder? They would be generally willing, provided that the time involved is justified on the basis of the infringing products expected to enter the country. Do customs authorities generally require the provision of a security to protect the owner, holder or importer of the allegedly infringing goods? If so, will such security depend on the type of IP rights? No, customs authorities do not require the provision of a security to protect the owner of the allegedly infringing goods, however, such security is indeed required by the IP authority. The amount of security to be posted depends on the estimated value of the infringing goods. May the customs authorities take ex officio measures? If so, what is the practical relevance of ex officio action in your country? No, the customs authorities can not take ex officio measures. Are customs authorities liable in case of wrongful ex officio detention? No. 6) Are customs authorities properly equipped to identify goods which infringe patents, plant variety rights, common law marks, unregistered design rights, geographic indications or the like? No. 7) Is only the right-holder or also the owner, holder or importer of the allegedly infringing goods notified once the customs authorities detain goods? No, first of all, the holder is notified of the infringement procedure initiated against him, and then the authority executes the inspection of the goods and executes the border measure. How can the alleged infringer obtain information about the status of border measures and what information is provided by customs authorities to the alleged infringer? The alleged infringer will be given of all the information on the status of the border measures. He is duly notified of the administrative procedure followed against him. 8) What happens after notification? Briefly describe the procedure following notification. Is the inspection of the allegedly infringing goods following notification usually carried out by the right holder or by an expert? After notification, the intellectual property and customs authorities proceed to the inspection of the goods and execute the border measures. Notification, inspection, and the border measures are acts that have to take place in this order, and at the same moment. The intellectual property authority is responsible to execute the administrative procedure, jointly with the customs authority. The execution of the border measures takes place in the presence of the intellectual property right holder, and the alleged infringer or their attorneys. 3

4 Does your border measures legislation provide for a simplified procedure allowing the destruction of the goods without there being any need to determine whether IP rights have been infringed? If so, in which cases? No, there are no such border measures legislation in our country that provide for a simplified procedure. The destruction of the goods is permitted only by the resolution of the intellectual property authority that determines the infringement of the IP rights caused by the ensured goods. Are samples of the goods preserved for evidence purposes? Yes, the IP authority has the authority to preserve some goods for evidence. If proceedings must be issued to determine whether the goods infringe IP rights, are both civil and criminal proceedings available to determine infringement? What are the advantages and disadvantages of the respective proceedings? No, there is but an administrative and criminal process available to determine infringement. The advantage for the administrative matter is that the right holder is who initiate the procedure and is considered as the plaintiff. The disadvantage is that has the obligation of grant a security. The advantage of a criminal process is that the right holder does not grant security, since who initiate and execute this procedure is the federal prosecutor. The disadvantage is that the right holder is not considered a party in the procedure. What is the impact of a nullity action seeking to invalidate IP rights on the application for customs action? An claim for cancellation of an IP right used to support a border measures process is that the infringement process will stay until a decision is rendered on the cancellation action. May customs authorities release goods suspected of infringing IP rights on provision of a security by the owner, holder or importer of such goods? If so, will such release depend on the type of IP rights? Yes, customs authorities can release the goods suspected, if the owner or holder of such goods grants a security (a bail) to warrant the possible damages that may be caused to the IP right holder. Such release does not depend on the type of IP right. 9) If goods are found to infringe IP rights, may a right holder oppose exportation of infringing goods from your country; infringing goods in transit; placement of infringing goods in a free trade zone or free trade warehouse? The right holder may oppose infringing goods in transit, or placement of infringing goods in a free trade zone, since he can request to the IP authority the withdrawal from circulation, its prevention, or the prohibition of the commercialization or use of the infringing goods. 10) If goods are found to infringe IP rights, do the judicial or customs authorities of your country generally order the destruction of the goods or do they have the authority to dispose of the goods outside commercial channels (e.g. to charity)? Industrial Property Law, Section 212 bis2, establishes that if the right holder and the infringer do not express (by writ) their agreement of the destination of the infringing products, within 4

5 90 days from the issuance of the final resolution, the Governing Board of the intellectual property authority may decide: the donation or the destructions of infringing goods. May the competent authorities also order the infringer to give the names of his accomplices, upstream or downstream in the channels of production and distribution? No. 11) May judicial or customs authorities order the applicant to pay the owner, holder or importer of goods appropriate compensation for any injury caused by wrongful detention? What is considered appropriate compensation and does it include attorney fees or other expenses? Yes, that is the reason why our legislation request to the holder to grant a security (a bail), in order to warrant the compensation on any damage caused by a wrongful detention of goods. The authority to determine the amount of the security is granted to the intellectual property authority, and do not include attorney fees or other expenses. (Industrial Property Law, Section 199 bis1.) II) Proposals for adoption of uniform rules The Groups are invited to put forward proposals for adoption of uniform rules regarding border measures and other measures of customs intervention against infringers. More specifically, the Groups are invited to answer the following questions: 1) Do you think that the adoption of uniform rules and best practice of customs authorities in the area of border measures and better coordination between countries and at an international level are desirable to improve enforcement? Yes, if our country had the possibility to adopt uniform rules, and best practice of our customs authorities, we would improve enforcement, and we could strengthen the respect and growth of intellectual property rights inside our country, and between nations. 2) What should the scope of border measures be? The scope of protection of the border measures should be the restriction of the free circulation of the infringing goods in commerce, securing the infringing goods to avoid the transgression of the IP rights until a final resolution of the intellectual property authority resolves the controversy. Do you think that border measures should be available also for goods infringing IP rights for which your national law currently does not provide border measures? If so, which IP rights? Yes, we believe that border measures shall also be available for plant variety. Should unfair competition give rise to border measures? Yes, unfair competition should give rise to border measures. Which goods should be excluded by border measures legislation? No goods should be excluded from border measures legislation. 3) What rules should apply in relation to the lodging and processing of applications for customs action? The rules determined by the infringement procedure provided in the Industrial Property Law, jointly with provisions in Customs Law. 5

6 Should there be a centralised system for managing multiple applications for customs action through a single contact point? Yes, because a centralized system through a single contact point will provide uniform criteria and will avoid confrontation in the acts executed by the different customs throughout the country. Should there be uniform rules on the provision of information by the applicant? Yes, to provide legal certainty to the applicant s pretension, and to the alleged infringer rights. What should the required level of evidence for alleged infringement be? The level of evidence should be met with a presumption of infringement, as long as the petitioner of the border measures demonstrates to be the holder of a valid IP right. Should there be uniform rules on the provision of information by the customs authorities? Yes, there should be uniform rules for the provision of information by customs authorities. 4) What rules should apply in relation to the procedure following notification? The parties are to be given an opportunity to defend and prove their cases, to meet Constitutional rights. Access to all types of evidence shall be available to the parties. Should there be a simplified procedure allowing the destruction of the goods without there being any need to determine whether IP rights have been infringed? No, since before destruction takes place, the owner of the seized goods is to be given the opportunity of defense. Should there be uniform rules on the examination of the goods by the right holder, security and compensation in the case of wrongful detention of goods and disposal of infringing goods? Yes, there should be uniform rules for the examination of goods, securities, and also compensation, whereby the authority has the parameters to realize its resolutions. 6