9.1 Specify the courts which have jurisdiction over IPR infringement cases.
The administrative authorities are:
- Mexican Industrial Property Institute;
- National Copyright Institute;
- Ministry of Finance and Public Credit through the Central Customs Administration; and
- Ministry of Agriculture, Livestock and Rural Development through the National Registry of Plant Varieties.
Articles 1 of the Industrial Property Law, 2 of the Federal Law on Copyright, 144 and 148 of the Customs Law, and 1 of the Federal Law on Plant Varieties apply.
9.2 Which persons have standing to assert IPRs? How may they be represented? Are there requirements for mandatory personal appearances before the court by the right holder?
Applications and submissions must be signed by the interested party or his representative and be accompanied by proof of payment of the corresponding fees, if applicable. When applications and submissions are filed through an agent, the latter must establish his status:
- By a simple power of attorney signed before two witnesses if the principal is a natural person.
- By a simple power of attorney signed before two witnesses if, in the case of a legal person, it is a question of patent applications or registrations or of licence registrations or transfers.
In the latter case, the power of attorney must make it clear that the person granting it is empowered to do so.
- In cases not covered by the preceding subparagraph, by a public instrument or power of attorney with authentification of the signatures before a notary or other law officer where a Mexican legal person is involved, in which case the legal existence of the latter, together with the powers of the grantor, must also be verified.
- In cases not covered by the second subparagraph, by a power of attorney granted under the applicable legislation of the place in which it is granted, or in accordance with international treaties where the principal is a foreign legal person. When this power gives proof of the legal existence of the legal person in whose name the power is granted, and of the grantor’s right to confer the said power, it is presumed to be valid, in the absence of proof to the contrary.
In each proceeding, proof is required of the legal status of the applicant or the party filing the submission. However, a simple copy of the register entry will suffice, if the power is registered in the General Register of Powers kept by the Institute.
Articles 180 and 181 of the Industrial Property Law and, in the case of the central administration, Articles 19 and 20 of the Federal Law of Administrative Procedure apply.
9.3 What authority do the judicial authorities have to order, at the request of an opposing party, a party to a proceeding to produce evidence which lies within its control?
Where the right holder concerned or the alleged infringer refuses access to evidence or fails to produce relevant evidence within his control in a reasonable period of time, or significantly obstructs the proceedings, the Institute may issue preliminary and final rulings, either favourable or adverse, on the basis of the evidence submitted, including the arguments put forward by the party adversely affected by the denial of access to evidence, provided that the interested parties are given the opportunity to be heard on the subject of the arguments and the evidence submitted.
Article 192 bis of the Industrial Property Law applies.
9.4 What means exist to identify and protect confidential information brought forward as evidence?
In any judicial or administrative proceeding in which one of the interested parties is required to reveal a trade secret, the authority hearing the case must take the necessary action to prevent it from being disclosed to third parties unconnected with the dispute.
In no circumstances may any interested party reveal or make use of the trade secret mentioned in the preceding paragraph (Article 86 bis 1 of the LPI).
In the case of patent, utility model and industrial design proceedings, the staff of the Institute involved in the various procedures carried out under the LPI and its Regulations must observe absolute secrecy with respect to the contents of the case files, failing which they will be liable to punishment under the Otherwise they will be sanctioned under the Federal Law on the Accountability of Public Servants, irrespective of any penalties which may apply in such cases. Members of the staff of public or private bodies who may become privy to the said contents in dealing with the Institute in the course of their duties are under a similar obligation.
Articles 86 bis 1 and 186 of the Industrial Property Law apply.
9.5 Describe the remedies that may be ordered by the judicial authorities and criteria, legislative or jurisprudential, for their use:
- damages, including recovery of profits, and expenses, including attorney’s fees;
- destruction or other disposal of infringing goods and materials/implements for their production;
- any other remedies.
In administrative declaration proceedings relating to the infringement of any of the rights protected by the Industrial Property Law (LPI), the Mexican Industrial Property Institute may take the following measures:
- Order the withdrawal from circulation or ban the distribution of goods that infringe rights protected by the LPI.
- Order the withdrawal from circulation of:
- objects manufactured or used illegally;
- objects, wrappers, containers, packaging, paperwork, advertising material and the like that infringe any of the rights protected by the LPI;
- signs, labels, tags, paperwork and the like that infringe any of the rights protected by the LPI; and
- tools or implements intended or used for the manufacture or production of any of the items specified in the preceding subparagraphs.
- Prohibit, with immediate effect, the marketing or use of products that infringe a right protected by the LPI.
- Order the seizure of goods.
- Order the alleged infringer or third parties to suspend or discontinue activities that constitute an infringement of the provisions of the LPI.
- Order that the provision of services be suspended or that the establishment be closed, if the measures provided for in the preceding subparagraphs are insufficient to prevent or avoid the infringement of rights protected by the LPI.
If the product or service is on the market, traders and service providers must refrain from disposing of the product or providing the service from the date on which they are notified of the ruling.
Producers, manufacturers and importers are under the same obligation, as are their distributors, who are responsible for recovering forthwith any goods that are already on the market.
Article 199 bis of the Industrial Property Law applies.
In administrative proceedings for the imposition of sanctions for infringements under the Federal Law on Plant Varieties (LFVV), the Ministry of Agriculture, Livestock and Rural Development may take the following measures:
- Order the withdrawal from circulation or ban the distribution of plant varieties or propagation material that infringes rights protected by the LFVV.
- Order objects, wrappers, containers, packaging, paperwork, advertising material and the like to be withdrawn from circulation.
- Seize goods that infringe rights protected by the LFVV.
- Order the alleged infringer to suspend or discontinue activities that constitute an infringement of the provisions of the LFVV.
Article 42 of the Federal Law on Plant Varieties applies.
Damages, including recovery of profits, and expenses, including attorney’s fees
Irrespective of any judicial or administrative action that may lie, a person whose intellectual property rights have been infringed may claim from the infringer or infringers compensation for material injury and the payment of damages, which in no case may be less than 40 per cent of the public selling price of each product or service.
Articles 221 bis and 226 of the Industrial Property Law and, where appropriate, Article 44 of the Federal Law on Plant Varieties apply.
Destruction or other disposal of infringing goods and materials/implements for their production
If in the final ruling on the merits of the case the authority finds that there has been an administrative infringement, it shall decide, after hearing the parties, on the disposal of the property confiscated.
Articles 45 of the Federal Law on Plant Varieties and 212 bis 2 of the Industrial Property Law apply.
Any other remedies
- imprisonment, if a crime has been committed.
Articles 48 of the Federal Law on Plant Varieties and 214 and 218 of the Industrial Property Law apply.
9.6 In what circumstances, if any, do judicial authorities have the authority to order the infringer to inform the right holder of the identity of third persons involved in the production and distribution of the goods or services found to be infringing and of their channels of distribution?
The administrative authorities may order that the provision of services be suspended or that the establishment be closed if the measures specified in the preceding reply are insufficient to prevent or avoid the infringement of rights protected by the Law.
If the product or service is on the market, traders or service providers must refrain from disposing of the product or providing the service from the date on which they are notified of the ruling.
Producers, nurserymen, manufacturers and importers are under the same obligation, as are their distributors, who are responsible for recovering forthwith any goods that are already on the market.
Articles 199 bis of the Industrial Property Law and 42 of the Federal Law on Plant Varieties apply.
9.7 Describe provisions relating to the indemnification of defendants wrongfully enjoined. To what extent are public authorities and/or officials liable in such a situation and what “remedial measures” are applicable to them?
When the administrative declaration of infringement proceeding is decided, the administrative authority will place at the disposal of the person concerned any security or counter-security that may have been deposited (Article 199 bis 4 of the LPI).
Administrative authorities are not liable for the measures ordered.
Articles 199 bis 3 and 199 bis 4 of the Industrial Property Law and 43 of the Federal Law on Plant Varieties apply.
9.8 Describe provisions governing the length and cost of proceedings. Provide any available data on the actual duration of proceedings and their cost.
The length and cost of proceedings vary according to the complexity of the case.