MEXICO Law and Practice Contributed by: Victor Adames, Carlos Hernandez, Paola Becerril and Eduardo Saldaña, BC&B Law & Business
7.3 Factors in Determining Infringement For trade marks, the use of identical or confus - ingly 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 con - stitutes 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 warning letters or engaging in mediation are optional to the plaintiff. There are no restrictions on trade mark or copy - right owners enforcing their rights; however, if the defendant feels that said claims are ground - less, or there was misuse/abuse they can argue The initial instance of the infringement actions must be filed before MIIP (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 disclosed; however, clients can expect procedural cost of around USD20,000–30,000 per case. For copyrights, it is not necessary to be regis - tered before the INDAUTOR to bring infringe - ment actions; however, trade marks must be protected before the IMPI to bring an infringe - ment action. that as part of their defence. 7.5 Lawsuit Procedure
7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants There are no declaratory judgment proceedings regarding infringement actions; however, the defendant may file counterclaims to challenge the validity of the IP right that is deemed violated to destroy the legal standing of the plaintiff. 7.7 Small Claims All claims, even small ones, must be filed and prosecuted under the standard filing procedures. 7.8 Effect of Trade Mark and Copyright Office Decisions Decisions issued in infringement action pro - ceedings 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 conducts sanctioned. Once the infringement decision becomes final, the plaintiff could opt to collect damages directly before IMPI (only for trade mark and commercial infringements) 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 under - stood 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, with - out the authorisation of its owner or licensee, to falsely represent a product or service as original. As counterfeiting is considered a felony in Mex - ico, 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.
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