mARCH 2012 www.lawyer-monthly.com

Patents Mexico

Looking to Mexico as part of Lawyer Monthly’s Legal Focus on Patents, we speak to Carlos Perez de la Sierra, senior partner and founder of Calderon y De La Sierra, a Mexican law firm which specializes in intellectual property matters, having done so since its foundation some thirty years ago.

Q

If you are able to do so, please detail any significant clients/ cases your firm undertaken by your firm in the past year.

We undertook a case for a large pharmaceutical company in which we challenged the granting of a sanitary registration by the Mexican Health Department on the basis that the pharmaceutical protected by said registration is manufactured on the basis of the claims of the client’s patent. Pharmaceutical patents are published in Mexico by the Patent Office and the Health Department may not grant a sanitary registration to a drug based on the published claims.

We recently undertook a case for a large

Mexican company currently being used by two individuals for violation of their personal image rights. The individuals appear in professional photographs which were printed on the client’s product. The case is significant as a distinction will have to be established between copyright and image rights, and if there is actual infringement, and if so who is responsible.

In the past years we have begun work with Fuddruckers, Tom Tailor and Valentino.

Q

what are the common challenges faced by your clients when involved in patents litigation – e.g. wrongful or groundless threats of infringement, limits and defences to claims of infringement,

international

registration or enforcement of trademark rights, counterfeiting etc.

A serious challenge to both patent and trademark owners is the fact that Mexican Patent Law does not establish a solid injunction

system to stop patent infringement while pursuing litigation. Although an injunction- type measure does enable the patent owner to request that the Mexican Patent Office order the infringer to stop sales of the infringing product, the measure is quite difficult to actually enforce and it is often violated with no consequence for the infringer.

Another difficulty is that the intellectual

property right holder needs to obtain a final decision of infringement by the Mexican Patent and Trademark Office (or the relevant appeals court) in order to initiate a claim for damages against the infringer. It thus takes many years for the IPR owner to actually have the possibility to recover damages.

Q Q

How do the challenges differ when you deal with cross- jurisdictional cases, particularly between the East and west?

Different jurisdictions still take significantly different views on infringement matters. In the east we have commonly faced trademark theft by distributors and manufacturers who register the client’s trademark in their home country. Recovering the registration is difficult as many jurisdictions do not provide for cancellation actions based on prior use of the trademark.

It is difficult sometimes to explain to western

clients that enforcing IPR rights, obtaining injunctions or conducting a successful claim for damages can be difficult and time-consuming in other jurisdictions (including our own).

what are the future aspirations and direction for your company? How do you see your practice area progressing for 2012?

Intellectual Property is a field in constant flux

and the Mexican authorities are engaging in continued efforts to protect intellectual property rights more effectively. We expect to continue experiencing growth in all areas of the firm. The introduction of the Madrid Protocol and the consequent addition of the trademark opposition procedure in Mexican Law (the opposition figure currently does not exist in Mexico) is an exciting future development but we probably will not see this change until after 2012. LM

Legal Focus 83

Contact Details:

Carlos Pérez De La Sierra Paseo de la Reforma No. 115, piso 8, Col. Lomas de Chapultepec, C.P. 11000, D.F. México

Tel: (5255) 5249 84 60 Fax: (5255) 2623 1131 / 2623 1132 Email: cps@calderoniplaw.com.mx