COUNTERFEIT GOODS
obliged to declare in the corresponding import manifest the information pertaining to the trademark of the imported goods. Tese last amendments caused a lot of
confusion because they included the obligation to declare in the corresponding import manifest a new trademark indicator code that corresponded to one of five possible situations: 1) If the importer is the trademark owner (obligation to indicate the trademark registration number);
2) If the importer has the authorisation to use and distribute trademarked goods;
3) If there is no trademark or brand affixed to the imported goods;
4) If the trademark affixed to the products is registered before the IMPI but the imported goods do not have an authorisation or licence (and genuine goods are being imported, so no infringement is being committed); and
5) If the trademark is pending before the IMPI or is involved in a litigation procedure that may question its validity (obligation to indicate pending application number). As a result, it is important to stress that these
amendments definitively do not establish the obligation to register importers of genuine goods as licensees before the IMPI, as the newly amended regulations cannot impose an obligation that would be completely unconstitutional because the decision to register an entity as a formal licensee before the IMPI has different consequences, including fiscal ones that would have to be addressed before proceedings, let alone impose commercial conditions to importers and trademark owners.
The issue with trans-shipments Notwithstanding the aforementioned modifications, a very important issue that has changed in the modus operandi of counterfeiters is the manner in which they continue to use regular means of transport, mainly maritime, to continue introducing illegal goods to Mexico by taking advantage of the criterion issued by the General Comptroller of the Attorney General’s Office in June 2011. Tat stated that public prosecutors should not
participate in an inquiry regarding the trans- shipments of counterfeit products. So the PGR currently allows the ‘safe passage’ of shipments involving counterfeit and/or IP infringing items whose apparent
(recorded) destination is a
different country, even if such shipments are physically unloaded at a Mexican port and loaded back to another vessel that transports such items to their final destination. Tis situation would be like discovering a
shipment of cocaine that is being trans-shipped to the US, but because the final destination of the illegal merchandise is not Mexico, federal
agents and police would just close the container and let the shipment continue its journey to its final destination. Tis is despite there being a great number of
such shipments destined for ‘ghost’ importers (paper entities that only serve the purpose of disguising the true nature of the people behind them) in Honduras, El Salvador and Guatemala that forward the items to the southern Mexican border with Guatemala and Belize, where counterfeits are then smuggled back to Mexico. It is important to consider that the southern
Mexican border is quite difficult to control due to its particular characteristics: more than 1,100km of border on very difficult terrain with two countries—Guatemala and Belize—in which there are only two customs offices (Subteniente López, between Mexico and Belize, and Ciudad Hidalgo, between Mexico and Guatemala, plus five other small garrisons scattered along the border of almost 900km between Mexico and Guatemala).
“HISTORY SHOWS THAT MEXICO OBTAINED GREAT RESULTS WHEN ENFORCING IP THROUGH CUSTOMS BEFORE THIS POLITICAL CRITERION WAS ADOPTED.”
Here, other criminal phenomena (drugs, guns and people trafficking) are highly present and represent a huge danger for law enforcement officers and, obviously, to anyone trying to enforce rights in the area. Te above illustrates the need for an urgent
revision to the Mexican government position concerning trans-shipments, as the present situation is one of the reasons the number of seizures has dramatically dropped since 2010, when they were at an all-time high.
The current situation In conclusion, and even if the abovementioned amendments were added to the legal arsenal that is available to combat pirates and counterfeiters, the truth is that from both a strictly legal and a more practical point of view, the reforms are insufficient. We need more legal reforms that may provide authorities with enough legal powers to effectively prosecute and, perhaps more important, have a deterrent effect on the people that control the manufacture, distribution and sale of counterfeits. Terefore, it is imperative to modify the
domestic law to grant powers to customs authorities to enforce IP by their own means against possible infringers/counterfeiters, as today they are legally allowed to take action only aſter receiving an order from a competent authority, ie, the IMPI, PGR or a judge. Finally, the elimination of the criterion adopted by the General Comptroller of
the Attorney
General’s Office in June 2011 concerning trans- shipments is desperately needed, as history shows that Mexico obtained great results when enforcing IP through customs before this political criterion was adopted.
Saúl Santoyo Orozco is the partner in charge of the litigation department at Uhthoff, Gomez Vega & Uhthoff. His main practice focuses on IP litigation and enforcement, anti-piracy and anti-counterfeiting issues, domain name disputes and counseling. He also designs and implements anti-counterfeiting programmes. He contacted at:
saulso@uhthoff.com.mx
can be 54 World Intellectual Property Review Annual 2015
José Luis Ramos-Zurita is a senior associate at Uhthoff, Gomez Vega & Uhthoff. He has more than 19 years’ experience in administrative litigation issues and customs and international trade issues. He is also directly involved in IP enforcement and anti- counterfeiting strategies. He can be contacted at:
jlramos@uhthoff.com.mx
World Intellectual Property Review November/December 2014
www.worldipreview.com
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76 |
Page 77 |
Page 78 |
Page 79 |
Page 80 |
Page 81 |
Page 82 |
Page 83 |
Page 84 |
Page 85 |
Page 86 |
Page 87 |
Page 88 |
Page 89 |
Page 90 |
Page 91 |
Page 92 |
Page 93 |
Page 94 |
Page 95 |
Page 96 |
Page 97 |
Page 98 |
Page 99 |
Page 100 |
Page 101 |
Page 102 |
Page 103 |
Page 104 |
Page 105 |
Page 106 |
Page 107 |
Page 108 |
Page 109 |
Page 110 |
Page 111 |
Page 112 |
Page 113 |
Page 114 |
Page 115 |
Page 116 |
Page 117 |
Page 118 |
Page 119 |
Page 120 |
Page 121 |
Page 122 |
Page 123 |
Page 124 |
Page 125 |
Page 126 |
Page 127 |
Page 128 |
Page 129 |
Page 130 |
Page 131 |
Page 132 |
Page 133 |
Page 134 |
Page 135 |
Page 136 |
Page 137 |
Page 138 |
Page 139 |
Page 140