Federal Law for the Protection of Industrial Property – Relevant changes on litigation

July 23, 2020

On July 1, 2020, and as a result of the entry into force of the United States–Mexico–Canada Agreement (USMCA), the new Federal Law for Protection of the Industrial Property, was enacted.

The new IP Law, represents an important legislative change in modern times, as it is aimed at matching the domestic law with the standards set by the new trade and cooperation agreements signed by Mexico in recent years, and it will come into force on November 5, 2020.

This new IP Law represents a major change in most of the chapters of the former law, thus impacting the protection of the various legal frameworks contained in the law.

Focusing specifically on the protection of Industrial Property Rights, the new law is introducing new relevant actions and changes which can be outlined as follows:

• Introduction of conciliatory proceedings only for infringement proceedings.
• Partial Non-use Cancellation Actions, the Mexican Institute of Industrial Property (IMPI) is empowered to declare the cancellation of the registration in connection with the products/services that are not in use.
• Partial Invalidity Actions only in connection with some of the goods or services covered by the trademark registration.
• Changes in the burden of proof of the invalidity cause of action based on false data.
• Opposition proceedings: the invalidity actions based on the same arguments and evidence submitted in the opposition proceeding will not be allowed.
• Preliminary injunctions:
• IMPI is empowered to order to the alleged infringer or to third parties, the suspension, lock or removal of contents, or to cease any acts violating the Law, through any virtual, digital or electronic media, known or to be known.
• Moreover, IMPI is empowered to order the suspension of the free movement of goods intended for import, export, transit, or any customs regime, which constitute a violation to the Law.

• The possibility of lifting the preliminary injunctions will now be assessed by IMPI, and it will not proceed automatically with the exhibition of a counter-bond.
• Infringement actions:
• New causes of action for infringement actions have been implemented.
• For infringement actions related to the commercialization of products or services, the requirement of “knowingly” has been deleted.
• Collection of damages: either before IMPI itself, via incidentally, once the infringement is declared and this determination becomes enforceable under the terms of the Federal Procedural Law, in which case the authority will determine the damages and losses, but the execution of IMPI’s decision will be handled by the Civil Courts; or before the Civil Courts directly, without the need of having a previous declaration of infringement from IMPI. However, if the registration(s) basis of the action is contested by a defendant before IMPI (as the competent authority to solve cancellation and invalidity actions), the Civil proceeding will be suspended until a decision in connection with the registrations basis of the claim, is issued.

Finally, all the ongoing litigious proceedings will continue their processes and will be decided pursuant to the superseded Industrial Property Law. Moreover, pursuant to the transitional articles of the New IP Law, the new invalidity and cancellation causes of action can only be brought against the registrations that were applied for and granted under the New IP Law.

Under separate and successive communications, OLIVARES will be focusing on each one of the items above, thus providing the analysis and details of these new actions and changes implemented in the Federal Law for Protection of the Industrial Property.