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Proposal to Modify IP Law to Empower IMPI is Arguably Unconstitutional

May 16, 2019

Mexico´s Senate recently published in its official Gazette a proposal to modify several provisions of the Mexican Industrial Property Law (IP Law). In summary, the proposal includes the following additions to the IP Law:

The Mexican Patent and Trademark Office (IMPI) as the administrative authority in IP matters would be  empowered to carry out the following actions:
IMPI may seize goods to be imported, exported, or that are in transit, in accordance with the Customs Law.
The Office may issue decisions, including compensation for damages, caused by the violation of IP rights.
Currently, a claim of damages derived from a finding of infringement of a patent or trademark can be initiated only in a civil court, and only once the decision issued in the administrative infringement action is final beyond the shadow of appeal.

There is no doubt that it is necessary to improve the enforcement system in Mexico by avoiding multiple independent and consecutive proceedings to obtain an award of damages.

However, the proposal disregards that, under the Mexican Constitution, administrative authorities such as IMPI arguably cannot determine awards nor enforce damages, as IMPI is not considered a court of law.

If the purpose of this proposal is to provide IMPI with the ability to award damages, other bodies of law should be modified as well. Even then, however, the proposal may still be considered as unconstitutional.

It is our view that Mexico’s IP enforcement system should be reviewed in its entirety, and the power to decide IP conflicts trusted to certain established courts of law. Under this system, a single proceeding could result in a ruling on infringement and any applicable damages award.

OLIVARES will closely follow developments on the bill as presented. We will stay apprised of any modifications to the proposal or suggestions that can be submitted during the legislative approval process.

 

This newsletter is intended only as a general discussion of the addressed issues and should not be regarded as legal advice.

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