MEXICAN IP LAW
Intellectual property regulations in Mexico have recently been modified due to the amendments to the (IPL) that were published on January 27, 2012 in the Mexican Official Gazette, and became effective on January 30, 2012.
Te amendments to the IPL include changes relating to the service of notice of official communications issued by the Mexican Institute of Industrial Property (MIIP), the legal implications of disallowing the practice of a visit of inspection to the MIIP’s commissioned inspectors, the inclusion of new causes for infringement of IP rights, and a new penalty for infringement actions carried out in the knowledge that an infringement was being committed.
Service of notice of official communications
Te aim of this amendment was to improve and hasten the way in which notices are served to the parties, specifically when notifications, according to what is established in article 194 of the IPL, can not be conducted in the domicile indicated in the official file, or in a litigation proceeding.
In accordance with this article, notifications will be conducted by means of publications in the Mexican Official Gazette and also in one of the larger circulation newspapers in Mexico.
Te amendment foresees in article 183 of the IPL that not only in these cases, but also in those in which the defendant in a litigation proceeding has not submitted a response to the corresponding legal action, the notification will be conducted through the boards located at the premises of the MIIP and also through the Official Gazette of the Mexican Industrial Property.
Accordingly, article 194 of the IPL remains in force and coexists with the amended article 183 of the IPL, which means that the above-stated notifications shall be conducted not only by means of publication in the Mexican Official Gazette and in a newspaper of large circulation in Mexico but in addition, through the board located at the premises of the MIIP and also, through the Official Gazette of the Mexican Industrial Property.
Te coexistence of articles 183 and 194 is an important issue of this amendment, since it implies that notifications that can not be
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conducted in the domicile indicated in the official file, or in litigation proceedings, shall be conducted by means of four different publications instead of two, which will neither improve nor hasten the prosecution of IP matters before the MIIP.
For this amendment to achieve its objectives, it is essential that the MIIP authorities determine the criterion that will be applied; in other words they need to clarify which of the above-stated articles of the IPL will prevail, so as serve notice to parties in these kind of cases.
Likewise, it will be essential for the administrative authorities of the MIIP promptly to implement a new operative method that allows them to comply with the provisions stated in article 183 of the IPL, considering that in addition to publication in the Official Gazette of the Mexican Industrial Property, this article also involves the notification to parties through the board located at the premises of the MIIP which, in fact, is not a system currently used by this institute.
For the implementation of this new operative method, the active participation of parties and the MIIP authorities is essential, since these new notifications imminently involve a duty for both of them. In case of the MIIP authorities, this is due to the use of the board located at the institute’s premises. As to parties, they will be obliged to attend the MIIP’s premises frequently to view the board located there, and also to review the Official Gazette of the Mexican Industrial Property and read the section containing this kind of notification.
Legal implications of opposing a visit of inspection
In essence, a second paragraph was incorporated to article 206 of the IPL, in order to include that (i) when access of the MIIP’s commissioned personnel into an establishment subject to inspection is denied, or (ii) when by any means there is an obstruction to the performance of the inspection, this will be put on record, and the facts claimed within the corresponding administrative proceedings shall be held to be true.
Even before this was formally included within the IPL, or any other IP regulation in force in Mexico, it was common and accepted practice for the MIIP to treat any obstruction to the
diligence of a so-called ‘visit of inspection’ with a tacit acknowledgment that those facts presented through the proceeding were true.
Tis means that if an IP right holder files an infringement action requesting the imposition of any of the preliminary injunctions foreseen in the IPL aſter a visit of inspection, and the proprietors or personnel in charge of the establishment where the allegedly infringing products or services are being manufactured, stored, distributed or sold, deny access to their premises to the MIIP’s commissioned inspectors, then what was claimed as a fact within the complaint of the infringement action shall be deemed to be true.
Although it is clear that the facts presented within an administrative proceeding shall be deemed as true when the imposition of preliminary injunctions was requested along with the filing of the complaint, and during the corresponding visit of inspection the access to the premises was denied, it remains unexplored whether this penalty (i) would be applied in an a priori fashion for those cases in which, in terms of article 199 Bis 3, subsection II, of the IPL, preliminary injunctions are requested prior to the filing of the complaint, or else (ii) would be applicable only in connection with visits of inspection conducted in furtherance to the filing of an administrative proceeding’s complaint.
Tis amendment is, without a doubt, designed to favour the holders of IP rights. Particularly, it grants them legal certainty in respect with the prompt and expeditious enforcement of their protected rights against infringing third parties who, despite not being previously allowed to, are now prevented from opposing or obstructing the performance of a visit of inspection, under penalty of having the accusations of the corresponding action being held as true.
On the other hand, the amendment obliges businesses to educate their personnel on the consequences of denying a visit of inspection (in order to avoid the damaging consequences).
New causes for infringement of IP rights
As of January 30, 2012, the following were incorporated as causes for infringement within article 213 of the IPL:
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