MEXICO Law and Practice Contributed by: Victor Adames, Carlos Hernandez and Paola Becerril, Becerril, Coca & Becerril
in bad faith, no investigation will take place, and as such, the application will not be suspended during any investigation process. The consequences of a fraudulently filed application are purely administrative and include the cancellation of the fraudulent trade mark or copyright registration.
• addresses; • nationalities; • the subject matter of the licence; • the term of the licence (it could be perpetual); and • whether the licence will be exclusive. The terms of the agreement may not include royalties involved and/or any other confidential information, this is because filing a petition for the recordal of a licence before IMPI will make this act public to third parties and such information will be publicly available at any time. 6.3 Registration or Recording of an Assignment or Licence The recordal of licence and/or assignment agreements before IMPI/INDAUTOR is not mandatory, but doing so ensures that these agreements will have effect on any third parties. 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits There is no strict statutory deadline to file trade mark or copyright infringement claims. It is advisable to file them as soon as the infringing acts are detected. Infringement claims are subject to an undue delay defence as the authorities’ power to sanction infringe - ment expires after five years from the date the infringe - ment occurred. 7.2 Legal Claims for Infringement Lawsuits and Their Standards There are several grounds on which an affected party can sustain their claim of infringement. Trade Marks For trade marks, these include: • unfair competition; • carrying out, in the exercise of industrial or com - mercial activities, acts that cause or induce confu - sion, error, or deception in the public;
6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions
The recordal of assignments of both trade marks and of copyrights must be through the filing of an applica - tion before IMPI/INDAUTOR, including the following information of the assignor and assignee: • complete names; • addresses; • nationalities; and • the subject matter of the licence. The terms of the agreement may not include royal - ties involved and/or any other confidential informa - tion, this is because filing a petition for the recordal of a licence before IMPI/INDAUTOR will make this act public to third parties and such information will be publicly available at any time. In Mexico, it is only possible to assign trade marks and/or copyrights as whole units and not in partial sections. As long as a trade mark is in force, it can be transmis - sible to the heirs of the titleholder or any other person that the titleholder might name within their will. With respect to copyrights, upon the death of their authors, they will be valid for another 100 years and they are transmitted to their author’s heirs. 6.2 Licensing Requirements or Restrictions In order for the recordal of licences regarding trade mark matters it is mandatory to have a licence agree - ment in written form, including the following informa - tion of the licensor and licensee: • complete names;
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