MEXICO Law and Practice Contributed by: Heidi Lindner and Humberto Vega, Arochi & Lindner
damage and the preliminary injunction that was incor ‑ rectly granted. Finally, it is important to note that, in Mexico, a third party that is not directly involved in infringement litiga ‑ tion cannot claim compensation for damages. 5.5 Legal Costs When the infringement request and claim for dam ‑ ages are collectively filed before the IMPI, legal costs, including the IMPI’s fees, are not recoverable. Howev ‑ er, when the infringement action or claim for damages is filed before a civil court, legal costs are recoverable. 5.6 Relevance of Claimant/Plaintiff Conduct to Relief In Mexico, the conduct of the plaintiff is not relevant when quantifying legal costs or damages. Trade mark litigation in the pharmaceutical and life sci ‑ ences sectors is common in Mexico. Among pharma ‑ ceutical companies, there is usually conflict between the trade marks used by competitors, or the determi ‑ nations made by the IMPI, in relation to the refusal to grant trade mark registrations. The primary sources of law regarding trade marks within the pharmaceutical and life sciences sectors are: 6. Other IP Rights 6.1 Trade Marks • the LFPPI and the Regulations for the Industrial Property Law, which establish the general frame ‑ work applicable to trade marks; • the General Health Law; • the Regulation of Health Supplies; and • the Official Mexican Standard NOM-072- SSA1-2012, which establish the specific restrictions trade marks are subject to in pharmaceutical matters. The following special considerations apply to trade mark matters within the pharmaceutical sector in Mexico:
• the distinctive name cannot clearly or obscurely include the composition of the medication or its therapeutic action; • the distinctive name cannot include words or phrases that may deceive or mislead the public; • the distinctive name for generic and biosimilar medicines is optional; • when an MA is revoked, no one can use the same distinctive name again, not even the same owner; and • if the distinctive name is made up of two or more words, these must appear on the same line or in a row, in the same font size and in a contrasting colour with respect to the background. 6.2 Copyright In Mexico, copyright litigation in the pharmaceutical and life sciences sectors is not very common; there are no special provisions in copyright law that are specifically applicable to this sector. Consequently, disputes related to copyright tend to be less frequent than disputes related to patents or trade marks. Copyright issues in the pharmaceutical and life sci ‑ ences sectors in Mexico usually relate to general copyright provisions, for example: • product labels and packaging – there may be cop ‑ yright issues related to the design, text and images used on product labels and packaging; • instructions for use – manuals and instructions for pharmaceutical products and medical devices often contain proprietary information, the copying of which can lead to disputes; • marketing materials – copyright disputes may arise from the unauthorised use of copyrighted materials in advertising and promotional content; • research and development (R&D) materials – although the information generated in the R&D process is usually protected by data protection, as trade secrets, the documents and materials cre ‑ ated during said process could also be protected by copyrights, which could lead to litigation if used or copied without authorisation; and • software and digital tools – many modern phar ‑ maceutical tools involve software, which can be a source of copyright issues.
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