MEXICO Law and Practice Contributed by: Carlos Hernandez, Roxana Aispuro and Luis Emilio Moncada, BC&B Law & Business
through the exercise of their profession or business relationship) without the consent of the person exercising legal control thereof or of its authorised user – or using trade secret information that has been disclosed to him by a third party, who did not have the consent of the person exercising legal control thereof or of its authorised user – with the purpose of obtaining an economic benefit or with the purpose of causing prejudice to the person exercising legal control of the trade secret or to its authorised user; and • a person appropriating, acquiring, using or unduly disclosing a trade secret by any means – without the consent of the per - son exercising legal control thereof or of its authorised user – with the purpose of causing prejudice or obtaining an economic benefit for himself or for a third party. These conducts are sanctioned with imprison - ment of two to six years and a fine that amounts to between UMA1,000 to UMA300,000, which is equivalent to MXN113,000 to MXN33,900,000 (approximately USD5,512 to USD1.653 million). Finally, the violation of a trade secret can be pur - sued in a civil claim in order to obtain compensa - tion for damage. 1.15 Extraterritoriality In Mexico, it is possible to bring a claim based on misappropriation of trade secrets that hap - pens in another country, as long as the trade secrets comply with the legal requirements to be considered as such. This is possible because trade secrets are not limited by the territory, giv - en that they are not registered before any author - ity. Nevertheless, it is necessary to demonstrate the misappropriation of the trade secret.
In general, Mexico follows principles of pri - vate international law, which address situations where the facts or legal relationships have a cross-border dimension. By way of example, a claim based on misappropriation that happens in another country can be pursued in Mexico if the defendant is located in Mexico, the damage was caused in Mexico, or if the trade secret is related to assets in Mexico.
2. Misappropriation of Trade Secrets
2.1 The Definition of Misappropriation It is important to bear in mind that Section II of Article 163 of the FLPIP defines misappropria - tion as the acquisition, use or disclosure of a trade secret in a manner contrary to good cus - toms in industry, commerce and services and that involves unfair competition. This includes the acquisition, use, or disclosure of a trade secret by a third party who knew, or had reason - able grounds to know, that the trade secret was acquired contrary to such customs and usages. Therefore, the owner must prove that the defend - ant gained access through unlawful means (in a manner contrary to good customs in industry, commerce and services). Moreover, as misap - propriation includes the acquisition, use or dis - closure of a trade secret, there is no need to prove that the trade secret was actually used. Finally, it is important to recall that the infringe - ment actions foreseen in the FLPIP require that the misappropriation relates to obtaining a com - petitive market advantage or implies unfair com - petition.
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