Mexico - Protecting IPMexico-Protecting-IP
Intellectual Property Rights (IPR) in Mexico are covered by the Industrial Property Law (Ley de la Propiedad Industrial) and the Federal Copyright Law (Ley Federal del Derecho de Autor). Responsibility for IPR protection is spread across several government agencies. The Office of the Attorney General (previously known as the PGR, now called the Fiscalía General de la República or FGR) oversees a specialized unit, UEIDDAPI (Unidad Especializada en Investigación de Delitos contra los Derechos de Autor y la Propiedad Industrial), that prosecutes IPR crimes. The Mexican Institute of Industrial Property (Instituto Mexicano de la Propiedad Industrial or IMPI) administers patent and trademark registrations and handles administrative enforcement cases involving allegations of IPR infringement. The National Institute of Copyright (Instituto Nacional del Derecho de Autor or INDAUTOR) administers copyright registrations and mediates certain types of copyright disputes, while the Federal Commission for the Protection Against Sanitary Risks (Comisión Federal para la Protección contra Riesgos Sanitarios or COFEPRIS) regulates pharmaceuticals, medical devices and processed foods. The Mexican Customs Service (Aduanas, part of the Servicio de Administración Tributaria or SAT) ensures that illegal goods do not cross Mexico's borders.
Mexico faces widespread commercial-scale infringement that results in significant losses to Mexican, U.S., and other IPR owners. Obstacles to improving IPR enforcement in Mexico include legislative loopholes, lack of coordination between federal, state, and municipal authorities, cumbersome judicial processes, and pervasive presence and use of pirated and counterfeit goods in the informal marketplace. In addition, Trans-National Criminal Organizations (TCOs), which control the piracy and counterfeiting markets in parts of Mexico, continue to impede federal government efforts to improve IPR enforcement. TCO involvement has further illustrated the link between IPR crimes and illicit trafficking of other contraband, including arms and drugs. Mexico continues to rely on arrests and prosecutions of counterfeiters in flagranti as opposed to mounting proactive investigations that seek to dismantle pirating and counterfeiting networks.
There are still needed reforms—such as granting ex officio authority to Mexican customs officials to seize suspected infringements in-transit—that remain key industry priorities. The Lopez Obrador Administration, in its 2019 budget, reduced funds dedicated to combatting piracy and contraband. The unit prosecuting IPR crimes, UEIDDAPI, received USD 1.4 million—a cut of roughly USD 285,400 or 16.9 percent from the previous year’s budget. Mexican IP specialists recommend the government could reinforce its fight against piracy and contraband with greater investments in technology and training.
Mexico remains on the Watch List in 2019 because there has not been a significant change in the level of intellectual property (IP) protection and enforcement since last year. However, Mexico agreed to important IP provisions in the United States–Mexico–Canada Agreement (USMCA). When the USMCA is fully implemented by Mexico, these commitments will substantially improve the IP environment in Mexico, including with respect to enforcement against counterfeiting and piracy, protection of pharmaceutical-related IP, recording of movies, satellite and cable signal theft, damages, transparency with respect to new geographical indications (GIs), copyright protection, and enforcement of IP rights in the digital environment. Piracy and counterfeit goods are widespread in Mexico, including online and at notorious physical marketplaces, such as Tepito in Mexico City and San Juan de Dios in Guadalajara. U.S. brand owners also continue to be confronted with bad-faith trademark registrations, although the 2018 amendments to the Industrial Property Law that provide grounds for refusal, opposition, and cancellation of bad-faith applications and registrations should be a useful tool for all brand owners.
Unauthorized camcording in Mexico remains a serious concern. Mexico is still reportedly the second-largest foreign source of unauthorized camcording in the world, fueling unlawful availability of first-run movies online, which damages the market for new releases. Similarly, Mexico is reportedly among the top countries for online sharing of infringing video game files and for online music piracy, including via unauthorized stream-ripping. Although Mexico ratified the World Intellectual Property Organization (WIPO) Internet Treaties in 2002, it has not enacted legislation to protect against the circumvention of technological protection measures and rights management information. Investigation and prosecution of IP crimes, particularly with regard to online IP crimes, continue to be inadequate, due in part to continued government-wide budget cuts. Rights holders express concern about the length of administrative and judicial patent infringement proceedings and the persistence of continuing infringement while cases remain pending. In administrative procedures on infringement, preliminary measures can be lifted without any burden of proof on the alleged infringer if the alleged infringer posts a counter-bond, which renders injunctions against continued infringement ineffective.
Mexico made some progress in 2018, including amendments to its Copyright Law to provide for preliminary injunctions in civil cases and ex parte preliminary injunctions. In addition, Mexico instituted amendments to its Industrial Property Law to strengthen the oppositions system and protect non-traditional marks. The United States urges Mexico to fully modernize its copyright, trademark, patent, and IP enforcement systems. With respect to GIs, Mexico must ensure that any protection of GIs, including those negotiated through free trade agreements, may only be granted after a fair and transparent examination. The United States remains highly concerned about countries negotiating product-specific IP outcomes as a condition of market access and reiterates the importance of each individual IP right being independently evaluated on its individual merit. Finally, to combat growing levels of IP infringement in Mexico, the United States also encourages Mexico to improve coordination among federal and sub-federal officials, devote additional resources to enforcement including the specialized IP unit within the Attorney General’s office, bring more IP-related prosecutions, and impose deterrent penalties against infringers. The United States looks forward to working with Mexico to address these and other IP concerns. For information on the USMCA’s IPR provisions, please visit the Office of United States Trade Representative website at www.ustr.gov.
Guiding Principles for Effective Protection and Enforcement of Your IPRIn any foreign market, companies should consider several general principles for effective protection of their intellectual property. For general background and more information, please review our article on Protecting Intellectual Property and our IPR protection website Stopfakes.gov.
Several general principles are important for effective management of IPR in Mexico. First, it is important to have an overall strategy to protect your rights. Second, IPR is protected differently in Mexico than in the United States, so you need to understand the specific procedures for Mexico. Third, rights must be registered and enforced in Mexico under national legislation. Your U.S. trademark and patent registrations will not protect you in Mexico. On the other hand, signatories of the Berne Convention for the Protection of Literary and Artistic Works provide protection to each other’s nationals’ copyrighted works and provide that nationals of all signatory countries be provided with the same rights as Mexicans.
Registration of patents and trademarks is on a first-in-time, first-in-right basis, so you should consider applying for trademark and patent protection even before selling your products or services in the Mexican market. It is vital that companies understand that intellectual property is primarily a private right and that the U.S. Government generally cannot enforce rights for private individuals in Mexico. It is the responsibility of the rights holders to register, protect, and enforce their rights, and where relevant, retain their own counsel and advisors. Companies may wish to seek advice from local attorneys or IP consultants who are experts in Mexican law. The U.S. Commercial Service in Mexico maintains a list of local attorneys but assumes no responsibility for the professional ability or integrity of the providers listed.
While the U.S. Government stands ready to assist, there is little we can do if rights holders have not taken these fundamental steps necessary to securing and enforcing their IP in a timely fashion. Moreover, in many countries, rights holders who delay enforcing their rights on a mistaken belief that the U.S. Government can provide a political resolution to a legal problem may find that their rights have been eroded or abrogated due to legal doctrines such as statutes of limitations, laches, estoppel, or unreasonable delay in prosecuting a lawsuit. In no instance should U.S. Government advice be a substitute for the obligation of a rights holder to promptly pursue its case.
It is always advisable to conduct due diligence on potential partners. Negotiate with a full understanding of the position of your partner and give your partner clear incentives to honor the contract. A good partner is an important ally in protecting IP rights. Consider carefully, however, whether to permit your partner to register your IP rights on your behalf. Doing so may create a risk that your partner will list itself as the IP owner and fail to transfer the rights should the partnership end. Keep an eye on your cost structure and reduce the margins (and the incentive) of would-be bad actors. Projects and sales in Mexico require constant attention. Work with legal counsel familiar with Mexican laws to create a solid contract that includes non-compete clauses, and confidentiality/non-disclosure provisions.
It is also recommended that small and medium-sized companies understand the importance of working together with trade associations and organizations to support efforts to protect IP and stop counterfeiting. There are a number of these organizations, both Mexico- and U.S.-based. These include:
- U.S. Chamber of Commerce
- American Chamber of Commerce in Mexico (AmCham)
- National Association of Manufacturers (NAM)
- International Intellectual Property Alliance (IIPA)
- International Trademark Association (INTA)
- Coalition Against Counterfeiting and Piracy
- International Anti-Counterfeiting Coalition (IACC)
- Pharmaceutical Research and Manufacturers of America (PhRMA)
- Biotechnology Industry Organization (BIO)
- Institute for the Protection of Intellectual Property and Legal Commerce (IPPIC)
- Mexican Association for the Protection of Intellectual Property (AMPPI)
- National Association of Corporate Lawyers (ANADE)
- Mexican Association of Research Pharmaceutical Industries (AMIIF)
- Mexican Association of Phonogram Producers (AMPROFON)
- Motion Picture Association of America (MPAA)
- Business Software Alliance (BSA)
IP ResourcesA wealth of information on protecting IP is freely available to U.S. rights holders. Some excellent resources for companies regarding intellectual property include the following:
- For information about patent, trademark, or copyright issues—including enforcement issues in the United States and other countries—call the Department of Commerce’s STOP! Hotline at +1-866-999-HALT or visit www.STOPfakes.gov.
- For more information about registering trademarks and patents (both in the United States as well as in foreign countries), contact the U.S. Patent and Trademark Office (USPTO) at +1-800-786-9199 or visit http://www.uspto.gov/.
- For more information about registering your copyright in the United States, contact the U.S. Copyright Office at +1-202-707-5959 or visit http://www.copyright.gov/.
- For more information about how to evaluate, protect, and enforce intellectual property rights and how these rights may be important for businesses, please visit the Resources section of the STOPfakes website at http://www.stopfakes.gov/resources.
- For information on obtaining and enforcing intellectual property rights and market-specific IP Toolkits visit http://www.stopfakes.gov/business-tools/country-ipr-toolkits. The toolkits contain detailed information on protecting and enforcing IP in specific markets and contain contact information for local IPR offices abroad and U.S. Government officials available to assist small and medium-sized enterprises (SMEs). Also see the Mexico IP Snapshot.
- An English-language overview of Mexico's IPR regime can be found on the WIPO website.
- Although a firm or individual may apply for example, for a patent or trademark directly, most foreign firms hire local law firms specializing in intellectual property. The U.S. Commercial Service’s Business Service Provider program has a partial list of local lawyers.
Additional resources for rights holders:
Intellectual Property Rights Attaché for Mexico, Central America and the Caribbean
Cynthia C. Henderson
Regional PTO Attaché
U.S. Trade Center
Liverpool No. 31 Col. Juarez
C.P. 06600 Mexico City
Tel: +52 (55) 5080-2189
Senior Legal Specialist for Intellectual Property
U.S. Trade Center
Liverpool No. 31 Col. Juarez
C.P. 06600 Mexico City
Tel: +52 (55) 5080-2000, ext. 5222
American Chamber of Commerce Mexico
Paseo de la Reforma 295 Col. Cuauhtémoc
C.P. 06500 Mexico City
Tel.: +52 (55) 5141-3820
National Institute of Copyright (INDAUTOR)
Puebla No. 143 Col. Roma, Del. Cuauhtémoc
C.P. 06700 Mexico City
Tel: +52 (55) 3601-8270
Mexican Institute of Industrial Property (IMPI)
Periférico Sur No. 3106 Piso 9, Col. Jardines del Pedregal
C.P. 01900 Mexico City
Tel: +52 (55) 5624-0401 / 04
+52 (55) 5334-0700
For more information, contact ITA’s Office of Intellectual Property Rights Director, Stevan Mitchell at Stevan.Mitchell@trade.gov.