Mexico: Intellectual Property

There are several types of Intellectual Property Rights protected in Mexican legislation.

a. Inventions, in particular, supplementary protection certificates, patents, utility models, trade secrets, integrated circuits, and industrial designs.

b. Trademarks, in particular, traditional and non-traditional trademarks (tridimensional, sound, motion, scent, multimedia, holograms, position trademarks), slogans, trade dress, trade names, appellations of origin, geographical indications, certification marks, collective marks, famous marks and well-known marks.

c. Other creations:

• Copyright, related rights, reservas de derechos (reservations of exclusive rights over characters, titles of periodical publications, title of television program, radio program, internet broadcast, artistic names, advertisement campaigns)
• Plant varieties.

The duration of IP Rights are as follows:

Inventions:

Trademarks:

Other creations:  

1. Inventions:
   • The first owner of these intellectual property rights is the inventor, designer or creator, as applicable. According to the Mexican legislation, regarding rights created in the course of employment in Mexico, the Federal Labor Law will be applicable to them.
   • In this regard, according to Article 163 of the above referred Law, the ownership of these rights will be determined as follows:
   1. The inventor has the right to be recognized as such in the invention.
   2. When the inventor conducts research or improvements as part of his work for the company, the ownership of the invention and the right to exploit it will belong to the employer.
   3. If there is no agreement, the ownership of the invention and the right to exploit it will belong to the inventor. However, the employer shall have a preferential right as to the exclusive use or acquisition of the invention.
2. Trademarks:
   The first owner of these rights is the applicant who requests their protection. In case they are created in the course of employment or under a commission, the ownership of these rights will belong to the employer.
3. Copyright:
   According to Mexican legislation, copyrights, both patrimonial and moral rights belong to the author since the moment the work is created. In that sense, most moral rights will always belong to the author; however, patrimonial rights may be licensed or transferred for a limited time and a sum of money. Copyrights created during employment- To consider that there is employment; there must necessarily be an employment contract, from which a labor relationship is created. The recommendation is that there should be an IP clause stating that the works created during their functions belong to the employer. If there is no clause, yet there is a labor contract, a Letter of Paid Collaboration can be created before the creation of the work to state that the employer is the owner. If there is no contract establishing employment, none of these cases are applicable.Copyrights created under commission- Mexican legislation establishes that if there is a written agreement of commission, then the rights will belong to the commissioner, as long as the specifications of the work are provided. If there is no commission agreement before the creation of the work, the copyright automatically belongs to the author.

Inventions and Trademarks are registered rights, meaning that they are created because of their registration.

Copyrights and related rights are created without the need of registration, but rather with the creation of the work; however, said registration is useful as proof of authorship.

Registration Reserves are also registered rights.

Appellations of origin and Geographical Indications are also registrable.

1. Inventions.
   To protect an invention, the inventor or his successor in title, or a legal representative must file an application before the Mexican Institute of Intellectual Property (MIIP).Procedure for registration:
   • The procedure for registration begins with the filing of the application.
   • Subsequently, the MIIP will conduct the formal examination to verify that the application complies with the requirements established in the national law. In case the application complies with the formal requirements and after the expiration of the 18-month term, counted from the filing date or, if applicable, of the priority claimed, the application will be published.
   • Once the application is published, MIIP will conduct the substantive examination to determine whether the substantive requirements of the national law are satisfied. If all the substantive requirements are satisfied with, the MIIP will grant the protection.
   • Finally, the MIIP will proceed with the publication in the Gazette.
2. Trademarks
   Any individual or legal entity may file an application for the registration of a trademark, slogan, trade name and trade dress.However, regarding designations (appellations) of origin and geographical indications can only be filed by:
   • The Mexican Institute of Intellectual Property (MIIP).
   • Chambers or associations of manufacturers or producers related to the product intended to be covered.
   • Federal Government departments or entities.
   • The governments of the States in which the product to be protected is extracted, produced or manufactured.
   • The Chambers of the Congress of the Union, as long as the proposal has been approved by two thirds of the present members.

   Procedure of registration:

   Trademarks, slogans, trade names and trade dress:

   • The procedure for registration begins with the filing of the application before the MIIP; then the publication of the application in the Gazette, for any interested third party to oppose such application; in case any opposition is filed against the proposed mark, the MIIP will notify such opposition through an office action in which the authority may also cite prior rights as obstacles for its registration or any other formal requirement.
   • Subsequently, the MIIP conducts its formal and substantial examination to verify that the application complies with the requirements established in the national law and if there are prior rights which represent an obstacle for its registration. If the application complies with all the requirements established in the national law and there are no prior rights that constitute an obstacle, the MIIP will proceed to grant the registration.
     Designations of origin and geographical indications:
     • The procedure for registration begins with the filing of the application before the MIIP; then such authority will conduct a study of the information and documents provided, if such information and documents comply with the legal requirements then the application will be published in the Federal Official Gazette for any interested third party to oppose within 2-months after the date in which the publication take effect.
     • Once this term has expired and if no opposition is filed, the MIIP will issue the corresponding resolution.
     • Finally, in case the MIIP grants the protection, it will be published in the Federal Official Gazette.

    

3. Copyright:
   For copyrights, the author or a legal representative may apply for the registration. In case a legal representative is filing for registration, they will need a Power of Attorney signed by two witnesses. In case the author is a company, proof of the legal existence of said company must be filed.

1. Inventions: Only during the registration procedure of a patent it is allowed for a third party to provide information as to whether the patent complies with the requirements established in the national law.
2. Trademarks (including appellations of origin and geographical indications): Yes, during the process to obtain a trademark registration and slogan registration, there is a one-month period in which third parties may file an opposition to the registration of trademarks.Also, during the registration process to obtain the protection of a Designation of origin or a Geographical indication, any interested third party may file an opposition during the next month after the publication in the Official Gazette of the Federation takes effect.
3. Copyright: There is no opportunity to object the registration during the registration process.

1. Inventions: In case the MIIP rejects the registration the applicant may file either a writ of review before such authority, or an Appeal before the Federal Administrative Court.
2. Trademarks (including appellations of origin and geographical indications): In case the MIIP rejects the registration the applicant may file either a writ of review before such authority, or an Appeal before the Federal Administrative Court.
3. Copyrights: In case the Mexican Copyright Office rejects the registration the applicant may file either a writ of review before such authority, or an Appeal before the Federal Administrative Court.

Inventions: 

• Patents:  

• Utility Models:  

• Integrated Circuits: 

• Industrial Designs:  

Trademarks:  

2. Copyrights:  

1. Inventions:
   The consequences of not paying the annuities fees will result in the lost of the corresponding rights. However, the national law grants a 6-month grace period after the expiration of the term to pay the annuities. In this regard, it is possible to request the reinstatement of a Patent, utility model, industrial design or integrated circuits before the MIIP, as long as the missed payment of the fee is covered, plus its additional fees, updates and the reinstatement fee.
2. Trademarks:
   The consequences of not paying the renewal or the declaration of use fees, will be that the MIIP, will require the applicant to amend such omission on a one-time basis, if the missing payment is not filed, the trademark, slogan or trade dress will lapse. Likewise, the national legislation grants a 3-month grace period to file the Declaration of Use of a trademark, slogan or a trade dress. However, in case the use is not declared, then the right will lapse. Furthermore, the national legislation grants a 6-month grace period to renew a trademark, slogan or a trade dress. However, in case the renewal is not filed, then the right will lapse.
3. Copyrights:
   If Reservations of exclusive rights are not renewed and the renewal fees are not paid, the consequence is the abandonment of said rights, the protection is lost. The option is to file a new reservation of exclusive right application; however the period between the new right and the previous one leaves the right with no protection, and the chance of a third party filing for said registration.

1. Inventions: It will be necessary to file the original or certified copy of the document in which the assignment of rights is established, including the signature of both parties as well as the details of the invention which will be assigned. Regarding Trade secrets, it will be necessary to include in the assignment agreement the signature of both parties as well as the non-disclosure clauses to keep trade secrets confidential. No recordal before the MIIP is necessary.
2. Trademarks: They may be assigned through a written agreement with the clear identification of the trademark that is being assigned, details of each party, such as address and name, and it may be signed by both parties or their legal representatives.
3. Copyright: Copyright and related rights also need a written assignment agreement signed by both parties. Only economic rights may be assigned, not the moral rights. These assignments need the following: Clear identification of the work that is being assigned.Period of time that said assignment will last.
   1. It is important to note that if no period is specified, Copyright Law calls for 5 years.
   2. Mexico’s Federal Copyright Law also calls for a maximum of 15 years for assignments, except for the case when the work or the amount of resources invested calls for a longer time.
   3. These limitations do not apply to literary works, and software.

    

Details of each party, such as address and name.

Signed by both parties or their legal representatives.

For Reservations of exclusive Rights.

• • Clear identification of the Reservation that is being assigned
  • Details of each party, such as address and name.
  • Signed by both parties or their legal representatives

1. Inventions: Requirements: Original document or certified copy of the agreement, Spanish translation of such document, Official format issued by the MIIP which must include the names, address, and nationalities of both parties, identify each of the registrations for which assignment is being requested, new address if applicable and payment of government fees.In order to have legal effects against third parties, it must be filed before the MIIP.
2. Trademarks: Requirements: Original document or certified copy of the agreement, Spanish translation of such document, Official format issued by the MIIP which must include the names, address, and nationalities of both parties, identify each of the registrations for which assignment is being requested, new address if applicable and payment of government fees.In order to have legal effects against third parties, it must be filed before the MIIP.
3. Copyrights: Copyright assignments do not need to be registered at the Mexican Copyright Office, but registration is available if desired.Reservation of exclusive rights do require the assignment to be registered, the consequence of not being registered is that the assignment will not have legal effects, and the Reservation will still be owned by the assignor since the effects of this type of rights come from the registration.

1. Inventions:
   It will be necessary to file the original or certified copy of the license agreement document, which must indicate the name or corporate name of the licensor and the licensee, as well as their nationality and domicile. Also, such document should state whether the license is exclusive or non-exclusive, if the licensee shall have the right to bring legal actions for the protection of the patent or registration rights, and the term of the license.In case of Trade secrets, the agreement must include the name or corporate name of the licensor and the licensee, as well as their nationality and domicile. Also, such document should state the details of the trade secret, the measures to maintain its confidentiality and the term of the license.No recordal with the MIIP is necessary in none of the cases.
2. Trademarks:
   It will be necessary to file the original or certified copy of the license agreement document specifying the terms of the license, such as whether it is exclusive or not, the time frame, the trademark´s details, parties details, such as name and address. In case the document is in any other language than Spanish, a translation will be necessary.
3. Copyrights:
   It will be necessary to file before the Copyright institute the original or certified copy of the license agreement document specifying the details of the copyright, details of the parties, royalties, and the terms of the license, such as if it is exclusive or not.

1. 1. Inventions:
      Requirements: Original document or certified copy of the incense agreement; translation of such document, if applicable; Official format issued by the MIIP which must include the names, address, and nationalities of both parties, identifying each of the applications or registrations and payment of government fees.No recordal with the MIIP is necessary.
   2. Trademarks:
      Requirements: Original document or certified copy of the license agreement; translation of such document, if applicable; Official format issued by the MIIP which must include the names, address, and nationalities of both parties, identifying each of the applications or registrations and payment of government fees.No recordal with the MIIP is necessary in none of the cases.
   3. Copyrights:
      Requirements: Original document or certified copy of the lincence agreement; translation of such document, if applicable; Official format issued by the Mexican Copyright Office and payment of government fees.

In order to be enforceable against third parties, it must be filed before the Mexican Copyright Office.

1. Inventions:
   National legislation establishes exclusive and non-exclusive licensees and both of them confer the same rights to enforce the licensed rights. However, such rights may be limited in accordance with the terms of the agreement.
2. Trademarks:
   National legislation establishes exclusive and non-exclusive licensees and both of them confer the same rights to enforce the licensed rights. However, such rights may be limited in accordance with the terms of the agreement.
3. Copyrights:
   National legislation establishes exclusive and non-exclusive licensees and both of them confer the same rights to enforce the licensed rights. However, such rights may be limited in accordance with the terms of the agreement.

Yes, national legislation has several criminal sanctions for infringement, namely:

1. 1. Inventions:
      Mexican law establishes a series of crimes for the disclosure of Trade Secrets with the intend to obtain an economic benefit or in order to cause a prejudice to the right owner. Sanctions established by national law consist of imprisonment and fines.
   2. Trademarks:
      Mexican IP Law establishes a series of crimes including infringement when it is done purposely and with a commercial intent or economic benefit.
   3. Copyrights:
      Criminal legislation establishes a chapter of crimes related to copyright. In relation to infringement, the Federal Criminal Code states in article 424 section III, that it is a crime to “use protected works in a fraudulent manner, for profit and without the corresponding authorization”. Several other cases of infringement are typified as crimes, particularly when infringement was done knowingly and for a profit.

Note: IP Criminal actions may be filed before the Specialized Intellectual Property Prosecution area of the Federal Attorney General’s Office. These actions may also be filed ex officio.

In Mexico there are other available enforcement options:

1. Inventions:
   Intellectual Property proceedings: Invalidation, Infringement and Cancellation actions.Alternative dispute resolution: Conciliation and arbitration.
2. Trademarks:
   Intellectual Property proceedings: Invalidation, Infringement and Cancellation actions.Alternative dispute resolution: Conciliation and arbitration.
3. Copyrights:
   Through the Mexican Copyright Office- There is a special procedure for invalidation of registrations and infringement actions.Through a Civil Court- The affected party may file a claim for damagesThrough the Mexican Trademark Office- commerce-related infringement actions and preventive and preliminary measures.

The available courts in Mexico are: Federal Administrative Court, Civil Courts, Criminal Courts, Federal Circuit Court and Mexican Supreme Court.

In addition, the basics of the procedures in each case are as follows:

• Federal Administrative Court: Analyzes the legality of the challenged resolution.
• Civil Courts: Claims for damages.
• Criminal Courts: Criminal conduct is analyzed and, if applicable, sanctioned.
• Federal Circuit Court: Analyzes the legality of the challenged resolution.
• Mexican Supreme Court: Analyzes the constitutionality of the challenged resolution, as well as the constitutionality of the legal provisions.

The procedures before each of the aforementioned courts are started by means of an initial brief. Likewise, all proceedings are conducted in writing except for those filed before the Criminal Courts, since pursuant to the new accusatory criminal system, the proceedings before such Courts will be conducted orally.

As for the time to trial, they will all last between one and a half to two years, approximately. Also, regarding the time to judgment, in all of them the Court will issue a resolution in approximately 6 months, however in some cases it will take longer to resolve.

Finally, except for the resolutions of the Mexican Supreme Court, all other Courts resolutions may be appealed.

Injunction action- this action is filed before the MIIP, to stop the introduction of goods to the country. In order to achieve this measure, one must pay a warranty which will depend on the estimated value of the goods.

Criminal action- a criminal action may be filed ex oficio or by an individual to a prosecutor from the Specialized Intellectual Property Prosecution area of the Federal Attorney General’s Office, who will in turn cease the goods for investigation.

There is also the possibility of recording the trademarks with the Customs authority so that the same are monitored by the customs authority.

The parties may decide either to opt to arbitration or mediation. None of them are mandatory unless they agree so.

Apart from traditional judicial and administrative procedures, mediation and arbitration are also available for non-criminal cases.

1. 1. Inventions:
      Any use of products that are subject of a patent, utility model, industrial design or integrated circuits, or any appropriation of an industrial secret without the authorization of the right owner or of the registered licensee.Mexican legislation allows all types of evidence except confessions and testimonial evidence (unless they are in writing) and when it is contrary to public order.The investigation of infringements shall be carried out by the Institute ex officio or at the request of an interested party.
   2. Trademarks:
      Any non-authorized use of these rights when it is done purposely and with a commercial intent or economic benefit.Mexican legislation allows all types of evidence except confessions and testimonial evidence (unless they are in writing) and when it is contrary to public order.The investigation of infringements shall be carried out by the Institute ex officio or at the request of an interested party.
   3. Copyrights:
      Any non-authorized use and any violation of the author’s moral rights regardless of licenses or authorization.All sort of evidence is allowed as long as it is properly filed.Related rights-Any violation of the holder’s rights.

Reservations of exclusive right of use- Any non-authorized use of the intellectual property right.

Mexican legislation allows all types of evidence except for the cases when it is contrary to public order.

Each party shall provide a person with technical expertise in the subject matter. In case the opinions of such experts are contradictory, the judge shall appoint a third party expert to resolve the matter.

In any proceeding related to the disclosure of a trade secret, the judge or the corresponding authority shall adopt the necessary measures so that the trade secret maintains its confidentiality.

National legislation establishes how each form of proof must be examined, and courts follow both these rules, as well as the ones derived from procedural doctrine and principles. Cross- examination is not available in Mexico, as administrative, commercial, and civil courts carry out most of their procedures in a written format rather than oral.

Infringers may argue that either the use they made of the IP right was justified, through a license, or that the use they gave it was fair use. If no such case can be made, an alternative could be to file actions questioning the validity or existence of the IP right, such a non-use cancellation action or annulment for trademarks, or a prior right in copyright.

Anyone who can prove an interest may file an action challenging IP rights. This interest can be, for example, a prior right for copyrights and inventions, or even prior use for trademarks.

1. Inventions:
   At any time, from the date on which the publication of the registration in the Gazette takes effect.
2. Trademarks:
   There are three moments in which a third party may challenge these IP rights:
   • Opposition: The first moment to challenge trademarks is when they are first published in the official gazette as applications.
   • Through a nullity action within the first 5 years of registration.
   • Cancelation actions- after being registered for 3 years.
3. Copyrights:
   Since the rights exist from the moment the work is created, rights may be questioned from the moment anyone claims authorship or tries to profit from the works.

1. Inventions:

Forum for challenging these rights: Before the MIIP.

Procedure for challenging these rights: Initial writing attaching the necessary evidence, if any; response by the other party; submission of evidence, if any; filing of pleadings; resolution that concludes the procedure.

Grounds for invalidity of these rights:

1. When the invention is not patentable or is not considered an invention;
2. When it does not disclose the invention in such a way that it can be carried out by an expert in the field;
3. When the claims exceed the disclosure contained in the application;
4. When it has been granted without complying with the requirements established in the national legislation;
5. When the subject matter protected by the patent has been broadened; When a priority has been erroneously recognized;
6. When the same invention has been previously granted;
7. When the patent was granted to the wrong person.

2. Trademarks: Forum for challenging these rights: Before the MIIP.

Procedure for challenging these rights: Initial writing attaching the necessary evidence, if any; response by the other party; submission of evidence, if any; filing of pleadings; resolution that concludes the procedure.

Grounds for invalidity of these rights:

1. When it has been granted in contravention of the national law.
2. Prior use of the sign in Mexico or abroad.
3. When the veracity of the date of first use declared in the application is not demonstrated.
4. When it has been granted due to error, inadvertence, or difference of appreciation, when there is a previous identical or similar application or registration, which covers the same or similar goods or services.
5. When the applicant has had a direct or indirect relationship with the owner of a trademark registered abroad and registers the same or any other similar trademark under his name without the express consent of the owner of the foreign trademark.
6. Bad faith.

In case of appellations of origin and geographical indications the grounds for invalidity of such rights are as follows:

When it has been granted in contravention of the law.

When it has been granted on the basis of false information or documents.

3. Copyrights: Forum for challenging these rights:

• Mexican Copyright Office.
• Civil Court.
• Mechanisms are available online

There are two types of infringements:

A pure copyright infringement, which is pursued by the Copyright Office.

• the execution by the publisher, corporation, producer, employer, broadcasting organization or licensee of a contract which purpose is the transfer of copyright in a manner that is contrary to the provisions of the law;
• violation by the licensee of terms of a compulsory licence regulated by the law;
• purporting to be a collective management society without having obtained the necessary registration with copyright office;
• failure, without just cause, to supply to copyright office, when serving as a director of a collective management society, the information and documents required by the law;
• failure to insert the notice “Reserved Rights”, or its abbreviation “D.R.”, followed by the © symbol, the full name and address of the copyright holder and the first year of publication in a published work;
• omission from a publication of the information required from editors for published works by the law, or inclusion of false information;
• omission from a publication of the information required from printers for published works by the law, or inclusion of false information;
• failure to fix on a phonogram the information required by the law;
• publication of a work, being authorized to do so, without a mention on the copies of the said work of the name of the author, translator, compiler, adapter or arranger;
• publication of a work, being authorized to do so, in a manner that damages the author’s reputation, and, if applicable, of the translator, compiler, arranger or adapter;
• publication in anticipation of the federal government, the states or the municipalities, and without authorization, of works created in the course of official duties;
• fraudulent use in a work of a title that causes confusion with a work published previously;
• fixation, performance, publication, communication in any way or use in any form of a literary or artistic work of popular culture regulated by the law without any mention of the community or ethnic group or, where applicable, the region of the Republic of Mexico to which it is specific; and

A commercial infringement, which is pursued by the MIIP.

• communication or making available 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, their lawful heirs or the owner of the author’s economic rights;
• use of the likeness of a person without permission or that of their successors in title;
• fixing, production, manufacture, stocking, distribution, transportation or marketing of copies of works, cinematographic and other audio-visual works, phonograms, videograms or books protected by copyright or by related rights, without the authorization of the respective holders under the terms of the law;
• offering for sale, stocking, transporting or distributing works protected by the law that have been distorted, altered or mutilated without the permission of the owner of the copyright;
• importation, sale, rental or any act that affords possession of a device or system whose purpose is to deactivate electronic devices for protection of a computer program;
• retransmission, fixation, reproduction and dissemination to the public, without due authorization, of the broadcasts of broadcasting organizations;
• use, reproduction or exploitation of a reserved rights notice or computer program without the consent of the owner; and
• use or exploitation of a name, title or denomination or physical or psychological characteristics or operational characteristics in such a way as to mislead or cause confusion with a reservation of rights that is protected.

It is also possible to pursue criminal actions against certain types of copyright infringements. The copyright owner can request an injunction and claim damages.

The new amendments include a “notice and take down” system which will bind online service providers to remove and deny access to any infringing material or content upon receipt of a notice of the right holder.

Also the amendments include a regime of technological protection measures used to protect copyrighted content.

1. Inventions:
   These rights could be limited by fair use practices established in the national legislation:
   • When a third party uses, manufactures or imports the patented invention for scientific, experimental or educational purposes and not for commercial purposes.
   • When it is for experiments necessary to obtain sanitary registrations of medicines for human health.
   • When the invention has been lawfully introduced into commerce in Mexico.
   • When a third party has initiated the use or manufacture of the invention prior to the filing date of the patent application, or the priority claimed.
   • When the invention is used in vehicles of other countries and they are in transit through national territory.
   • When using invention with living beings as a resource for obtaining new products, or if it has been lawfully introduced into commerce in Mexico.
   • When a third party has used the patented invention during the patent reinstatement period.
2. Trademarks:
   These rights could be limited by fair use practices established in the national legislation:
   • When a third party exploited the right prior to the filing date of the application for registration or the first use declared therein.
   • When the goods to which the trademark is applied have been legally introduced into commerce.
   • When an individual or entity applies his own name or its company name to goods or services, as long as it is applied in the form in which it is normally used.
3. Copyright:
   Copyright could be limited by fair use practices established in Mexican Copyright Law:
   • if the author is mentioned in the quoting and does not represent a substantial reproduction;
   • for scientific, literary or artistic investigation and security purposes;
   • reproduction for private use;
   • for using as evidence in an administrative or judicial procedure;
   • for the use of disabled people with non-commercial purposes;
   • for utility public service

Interin remedies: Stop the use and marketing of infringing goods; withdraw the goods that infringe the rights from circulation; confiscation of the infringing goods; and closure of the establishment in which the rights are being infringed.

Final remedies: fines, imprisonment, permanent closure of the establishment, declaration of infringement and also, damages payment from the infringer.

In administrative proceedings (cancellation, invalidations, ) each party is responsible for bearing their own costs and expenses.

Claim of damages derived from an infringement were only available via civil or commercial actions, however, the new Federal Law for the protection of Industrial Property came in force on 2020, now establishes the possibility of claiming damages before the MIIP.

In civil proceedings, courts may decide on the payment of costs of litigation that are commonly awarded to the winner of a trial when the loser files appeals to delay the court proceedings and the enforcement of the judgment.

For the obtention of certificates from the Mexican Copyright Office there is severe delay due to COVID 19, and although applications are being accepted via email, these take 1-2 months to be answered, and afterwards, one must make an appointment to pick up the original documents. Said appointment has been known to take several months.

In the case of Inventions and Trademarks, the MIIP has started to receive almost all kind of filings in electronic format. Therefore, electronic documents are allowed, however, the authority is entitled to require the originals at any time. We also have experienced delays in the proceedings before the MIIP.