MEXICO Law and Practice Contributed by: Victor Adames, Carlos Hernandez and Paola Becerril, Becerril, Coca & Becerril
7.3 Factors in Determining Infringement For trade marks, the use of identical or confusingly similar signs to a previously registered trade mark is the conduct sanctioned as infringement. For copyrights, the distribution, communication, or fixation of a work without authorisation constitutes the infringement. 7.4 Prerequisites and Restrictions to Filing a Lawsuit There are no prerequisites for filing a trade mark or a copyright infringement action. The issuance of warn - ing letters or engaging in mediation are optional to the plaintiff. There are no restrictions on trade mark or copyright owners enforcing their rights; however, if the defend - ant feels that said claims are groundless, or there was misuse/abuse they can argue that as part of their defence. 7.5 Lawsuit Procedure The initial instance of the infringement actions must be filed before IMPI (for trade mark and commercial related infringements) and before INDAUTOR (for copyright related infringements). The costs will depend mostly on the complexity of the case, as well as the amount of evidence to be dis - closed; however, clients can expect procedural costs of around USD20,000–30,000 per case. For copyrights, it is not necessary to be registered before the INDAUTOR to bring infringement actions; however, trade marks must be protected before the IMPI to bring an infringement action. 7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants There are no declaratory judgment proceedings regarding infringement actions; however, the defend - ant may file counterclaims to challenge the validity of the IP right that is deemed violated to destroy the legal standing of the plaintiff.
transporting or marketing copies of works, cin - ematographic works and other audiovisual works, phonograms, videograms or books, protected by copyright or related rights, without the authorisa - tion of the respective holders as provided by the FCL; • offering for sale, storing, transporting, or circulating works protected by the FCL that have been altered, modified or mutilated without the authorisation of the copyright holder; • importing, selling, leasing or performing any act that leads to the possession of a device or system whose purpose is to deactivate the electronic pro - tection devices of a computer program; • retransmitting, fixing, reproducing and broadcast - ing to the public emissions of broadcasting organi - sations without the proper authorisation; • using, reproducing, or exploiting a reserved right or a computer program without the consent of the holder; • using or exploiting a name, title, designation, phys - ical or psychological characteristics, or any opera - tional features in such a way that induces error or confusion with a reserved protected right; and • using any artistic or literary work against the provi - sions of the FCL. It is important to mention that to enforce an infringe - ment action, the copyrights do not need to be regis - tered, as the FCL clearly establishes that said works are protected since the moment of their fixation. The conduct described above constitutes infringe - ment in Mexico; and therefore, all elements therein presented must be proven to make a successful claim, along with other procedural requirements such as the legal standing and the ownership of the affected IP right. The only law applicable to trade mark infringement actions or any other action related to trade marks is the FLPIP. The only law applicable to copyright infringement actions is the FCL. However, infringing conduct related to the management of copyright infor - mation can be classified as a commercial infringing action, such as the ones mentioned in Article 12 of the WIPO Copyright Treaty.
356 CHAMBERS.COM
Powered by FlippingBook