MEXICO Law and Practice Contributed by: Carlos Hernandez, Roxana Aispuro and Luis Emilio Moncada, BC&B Law & Business
including trade secrets, as each right protects different aspects of the invention. 1.12 Overlapping IP Rights It is possible for a plaintiff to assert trade secret rights in combination with other types of IP rights in Mexico. This is because each IP right related to a technology or an invention provides different scope of protection, depending on the aspects of the technology or the invention. However, it is important to mention that, should a plaintiff assert trade secret rights in combina - tion with a different type of IP right, they must demonstrate and file suitable evidence in order to prove the violation of each right. 1.13 Other Legal Theories According to the FLPIP, claims related to trade secrets must turn on misappropriation, which is defined in Article 164 thereof (see 1.7 Independ- ent Discovery ). 1.14 Criminal Liability Article 368 of the FLPIP foresees the following infringement conducts: • misappropriating information that is consid - ered a trade secret – ie, using it without the consent of the person who exercises legal control or its authorised user – in order to obtain a competitive market advantage or performing acts contrary to good practices and customs in industry, commerce and services, thereby potentially leading to unfair competition; and • producing, offering for sale, selling, importing, exporting or storing products or services that use a trade secret, when the person who car - ries out such activities knew or has reason - able grounds to know that the trade secret was used without the consent of the person
who exercises legal control or its authorised user and in a manner contrary to good prac - tices and customs in industry, commerce and services, thereby potentially leading to unfair competition. These conducts are sanctioned with a fine imposed by the Mexican Institute of Industrial Property (MIIP) after an infringement action pro - ceeding. The can amount to UMA250,000, which is equivalent to MSN28.25 million (approximately USD1,375 million). The fines are collected by and paid to the MIIP. Moreover, Article 402 of the FLPIP also foresees the following criminal actions: • a person disclosing to a third party an indus - trial secret (that is known by reason of said person’s work, post or position, or through the performance of their profession or busi - ness relationship, or by virtue of the granting of a licence for its use) without the consent of the person exercising legal control thereof or of its authorised user – having been warned of its confidentiality – with the purpose of obtaining an economic benefit for the third party or for the third party or with the purpose of causing harm to the person keeping the secret; • a person taking possession of an industrial secret without the right and without the con - sent of the person exercising its legal control or of its authorised user, in order to use it or disclose it to a third party, with the purpose of obtaining an economic benefit for themselves or for the third party or with the purpose of causing prejudice to the person exercising its legal control or to its authorised user; • a person using the information contained in a trade secret (which said person knows by virtue of their work, office or position, or
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