MEXICO Law and Practice Contributed by: Victor Adames, Carlos Hernandez, Paola Becerril and Eduardo Saldaña, BC&B Law & Business
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 application before IMPI/INDAUTOR, includ - ing 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 royalties involved and/or any other confidential information, 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 transmissible 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 agreement in written form, including the following information of the licensor and licen - see:
• complete names; • 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 informa - tion will be publicly available at any time. 6.3 Registration or Recording of an Assignment or Licence The recordal of licence and/or assignment agree - ments before IMPI/INDAUTOR is not mandatory, but doing so ensures that these agreements will have being 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 sanc - tion infringement expires after five years from the date the infringement 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.
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