MEXICO Law and Practice Contributed by: Victor Adames, Carlos Hernandez and Paola Becerril, Becerril, Coca & Becerril
7.7 Small Claims All claims, even small ones, must be filed and pros - ecuted under the standard filing procedures. 7.8 Effect of Trade Mark and Copyright Office Decisions Decisions issued in infringement action proceedings can set a fine on the infringer, which will be collected by the authority to cover their internal expenses, as well as the obligation to immediately stop the sanc - tioned conduct. Once the infringement decision becomes final, the plaintiff could opt to collect damages directly before IMPI (only for trade mark and commercial infringe - ments) or by a civil court for copyright infringement or as an alternative to the trade mark and commercial courts. 7.9 Counterfeiting and Bootlegging “Counterfeiting”/”bootlegging” shall be understood as the use of a mark that is identical or so similar that it cannot be distinguished in its essential aspects from a previously registered trade mark or one protected by the FLPIP, without the authorisation of its owner or licensee, to falsely represent a product or service as original. As counterfeiting is considered a felony in Mexico, the only option available to stop it is to file criminal actions before the General’s Attorney Office; therefore, there will be criminal liability in these procedures. 8. Litigating Trade Mark and Copyright Claims 8.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings There are no special procedural provisions for trade marks and copyright proceedings. The standard administrative regulations apply, which means that all litigations must follow the following procedural overview: • initial filing; • response; • manifestations against the response;
• disclosure of evidence (if the evidence filed is all in the form of documents, the disclosure takes place at the time of the filing of the initial brief and its response); • final pleadings; and • decision Nullity appeals filed against the decisions issued by IMPI or INDAUTOR are decided by the FCAA. The last instance of appeal is decided by the FCC. The only judicial body specialised in IP is the relevant chamber of the FCAA. At first instance, the cases are resolved by the exam - iner appointed by either IMPI or INDAUTOR, which are the administrative authorities specialised in trade marks and copyrights. The nullity appeal is decided by the Magistrates of the FCAA and the amparo appeals are decided by the Magistrates of the FCC. The authorities that resolve these matters are selected randomly by IMPI, INDAUTOR and the courts. 8.2 Effect of Registration It is mandatory for a trade mark to be registered to be enforceable, unlike copyrights. If the trade mark has not been declared as famous by IMPI, it will be necessary for the infringer to use a trade mark that is registered for identical or similar products or services to achieve the sanction. 8.3 Costs of Litigating Infringement Actions Costs will depend on the complexity of the case, as well as the amount of evidence to be disclosed; however, clients are likely to pay in the range of USD25,000–35,000 per case. 9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement In Mexico, defendants may raise a wide range of defences depending on the specific circumstances of the case. These defences may include any of the
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