Back to the good old days

July 13, 2010

BY ABRAHAM DÍAZ ARCEO

MANAGING INTELLECTUAL PROPERTY, INTERNATIONAL BRIEFINGS, JULY/AUGUST 2007

Before the amendments to the Federal Law of Administrative Proceeding (FLAP), rulings issued by the Mexican Patent and Trade Mark Office (IMPI) were challenged through Amparo suits before the Federal District Court (FDC). Decisions rendered by the FDC were further contested at the Federal Circuit Court (FCC), which would decide finally the controversy.

The amendments to the FLAP changed everything. Now IMPI’s rulings are contested either through review recourses before IMPI itself or through nullity trials before the Federal Court for Tax and Administrative Affairs (FCTAA). Decisions rendered by the FCTAA are challengeable through Amparo suits before the FCC.

This system has means that contesting IMPI’s rulings may now take around seven years, which is frustrating for IP owners seeking effective means to defend their assets in Mexico.

 

In January 2006 the Federal Law for the Administrative Contentious Proceeding (FLACP) was enacted. It details the rules for prosecuting nullity trials with the FCTAA. Article 28 establishes the requirements to obtain the suspension of the challenged ruling.

This article became crucial, because in March 2007 the Mexican Supreme Court of Justice issued jurisprudence declaring that Article 28 of the FLACP establishes more requirements for the grant of the suspension of the challenged decision than are required by the Amparo Law. Therefore, the Supreme Court declared that it is not mandatory to prosecute nullity trails prior to filing Amparo suits against IMPI’s rulings.
This opens the door for challenging IMPI’s rulings in the old manner, which is good, since it was faster. Recently we invoked this new jurisprudence in an Amparo suit filed against one ruling of IMPI and the FDC admitted it.

In short we may be back in the old times when appealing IMPI’s rulings was quicker.