COUNTERFEIT GOODS
More reforms are needed that provide Mexican authorities with enough legal powers to prosecute and, perhaps more important, have a deterrent effect on the people responsible for the trade in counterfeits, as Saúl Santoyo Orozco and José Luis Ramos-Zurita of Uhthoff, Gomez Vega & Uhthoff explain.
Mexico come from abroad and that most of these items come from Asian countries. China is probably the largest manufacturer of such fake
I items, particularly clothing, footwear,
luxury items, electronics, toys, and automotive and industrial parts. Notwithstanding the above, it is important
to bear in mind that to this day and unlike in other jurisdictions, Mexican customs offi cials cannot intercept, detain or
property-infringing items on their own, as they lack the proper legal powers to do so and require an order issued by a competent authority on IP matters. Administrative infringement actions are handled by the Mexican Institute of Industrial Property (IMPI), while criminal counterfeiting cases are handled by the General Prosecutor’s Offi ce (PGR); in some rare cases an order can be requested and issued directly by a judge. It is worth pointing out that despite the above
limitations, Mexican customs have achieved great results in the past, receiving in 2010 the Yolanda Benitez Trophy (a prize awarded by the World Customs Organization to a member for its special eff orts in tackling counterfeiting and piracy). Unfortunately, it seems counterfeiters
and traffi ckers have learned from past experiences—criminals seem to learn and adapt to new laws and policies a lot faster than authorities can come up with new mechanisms and legislation designed to stop such illegal activities. Five years aſt er receiving the prize more eff ective measures are required due to the magnitude of the task of enforcing trademarks and other IP rights at the point of entrance of counterfeit merchandise into the country. T is situation brings us to the core of the
issue at hand: what has been done, and could be done by taking advantage of the available mechanisms and tools off ered by the Mexican legal system to combat the counterfeit and IP-infringing phenomenon, especially in light of the most recent eff orts made by the Mexican government in this area?
www.worldipreview.com seize intellectual
t is widely known that a very high percentage (more than 80%) of the generally available counterfeit goods in
Customs database of trademark registrations T e fi rst relevant amendments to the General Foreign Trade Regulations (GFTR) were published in the Mexican Offi cial Gazette in July 2011. T ese amendments allowed the creation of a database of trademark registrations, administered by the General Customs Administration, which formally started operations in January 2012. T e mechanism was created with the aim of speeding up inspection and clearance procedures of registered importers, licensees, etc, and, at the same time, enhancing inspection procedures. T ese can result in the detection of counterfeit and IP-infringing merchandise and later help to produce the relevant enforcement legal actions. T e creation of a database was and still is a
very important fi rst step towards establishing a full trademark registry for customs purposes. Customs authorities at the time did not have an offi cial system to consult or review information concerning trademark owners, licensees, authenticity of goods, etc, and they used to work with an informal database containing information collected from past actions and details that some trademark owners informally provided about their portfolios. As a consequence, the creation of has allowed Mexican
this database customs
offi cials to start gathering the information provided by the trademark owners, which is very helpful for identifying the importation of operations involving potential counterfeit and/ or IP-infringing goods. Further, in December 2013, the Gazette
published a series of further amendments to the GFTR (which were already included, although in a vague wording, in article 36 of the Mexican Customs Law) for the importer to declare the trademark and/or any other means of individual identifi cation of the goods subjected to clearance procedures.
Obligations for the importer of branded or trademarked goods Additionally, further amendments published in the Gazette in July and December 2014 included the specifi c cases in which the importer is
World Intellectual Property Review Annual 2015 53
ANDREY_POPOV /
SHUTTERSTOCK.COM
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