MEXICO Law and Practice Contributed by: Victor Adames, Carlos Hernandez, Paola Becerril and Eduardo Saldaña, BC&B Law & Business
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 follow - ing 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 examiner appointed by either IMPI or INDAU - TOR, 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 decid - ed 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 dis - closed; 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 circum - stances of the case. These defences may include any of the three grounds set forth in the FLPIP under which a trade mark registration shall not be enforceable: • prior use of an identical or confusingly similar trade mark in good faith; • exhaustion of trade mark rights; and • lawful use of an individual’s or corporation’s name. Additionally, as part of their defence strategy, defendants may file counterclaims. There is no formal catalogue of defences for trade mark infringement actions. However, defendants may rely on any defence that fits the case strategy. These must be substantiated
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