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46

Legal Expert Board

JUNE 2012

Intellectual Property

Taking a look at Intellectual Property in Mexico and the legal implications that arise there, Lawyer Monthly speaks to Enrique A. Diaz, Senior Partner and Head of the Industrial and Intellectual Property Department at Goodrich, Riquelme y Asociados.

What are the main issues you deal with regarding IP in your jurisdiction?

We are a full service law firm highly specialized in IP practice, with several Fortune 500 compa- nies as our clients. Due to the above we are in- volved in trademark, patent and copyright prosecution and litigation, as well as regarding other related IP matters.

What are the main types of litigation to arise from IP-related issues in your experience?

It is not a secret that Mexico is among the top countries regarding counterfeited/fake goods, so protecting our client’s IP exclusive rights through

infringement, civil and even criminal actions is mandatory and customary for us.

I would say infringement actions are a daily issue in Mexico; however, since we do not have an opposition system and applications are not published, until they have become granted registrations, then cancellation actions on grounds of earlier use in Mexico or abroad are also a main part of the litigation issues we deal with.

during 2011, WIPo’s Madrid System for the International Registration of Marks received the highest number of trademark applications ever, rising 6.5 per cent compared to 2010, reaching 42,270 filings. to what do you attribute this?

I believe that WIPO has been very active recently promoting the Madrid Protocol and introducing it to the public, reaching even those that did not know of its existence. Additionally, there has been an increase in the amount of countries that have adopted the System, Colombia being one of the parties that recently adopted the Madrid Protocol. Despite the fact that the Mexican Congress already approved the adhesion of Mexico to the Madrid Protocol, we believe that there are many deficiencies within the Mexican System and the Madrid Protocol that will hinder the proper transition into the adopted Protocol.

do you often deal in cases of infringement?

It is not a secret that Mexico is among the top countries regarding counterfeited/fake goods, so protecting our client’s IP exclusive rights through infringement, civil and even criminal actions is mandatory and customary for us.

What have been the key areas of arbitration in the IP sector within your jurisdiction?

Arbitration is not a common figure in Mexico in connection to IP matters. Most IP related matters are solved by and before the Mexican Patent and Trademark Office (MPTO), the FCTAA, and the Federal Circuit Court.

What issues should foreigners be aware of in terms of IP when looking to invest/start a business in your country?

It is very important for foreign companies to bear in mind that Mexico does not have common law protection. Mexico is a first to file and registration oriented country, so the only way to secure the right over the exclusive use of a trademark is through its registration before the MPTO. This is why it is mandatory for any foreigners interested in investing/starting a business in Mexico to look for a Mexican IP specialist in order to duly protect their IP assets and rights and avoid possible future problems and costs associated with contentious procedures that may arise if a third party registers the IP rights first.

contact:

Email: ediaz@goodrichriquelme.com tel: +5255 5525 1422

Website: www.goodrichriquelme.com

www.lawyer-monthly.com

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