Includes websites relevant to selling US products and services in this country, highlighting resources for small- and medium-sized enterprises.
Responsibility for IPR protection is spread across several government agencies. The Office of the Attorney General (previously known as the PGR, now called the Fiscalía General de la República or FGR) oversees a specialized unit, UEIDDAPI (Unidad Especializada en Investigación de Delitos contra los Derechos de Autor y la Propiedad Industrial), that prosecutes IPR crimes. The Mexican Institute of Industrial Property (Instituto Mexicano de la Propiedad Industrial or IMPI) administers patent and trademark registrations and handles administrative enforcement cases involving allegations of IPR infringement. The National Institute of Copyright (Instituto Nacional del Derecho de Autor or INDAUTOR) administers copyright registrations and mediates certain types of copyright disputes, while the Federal Commission for the Protection Against Sanitary Risks (Comisión Federal para la Protección contra Riesgos Sanitarios or COFEPRIS) regulates pharmaceuticals, medical devices and processed foods. The Mexican Customs Service (Aduanas, part of the Servicio de Administración Tributaria or SAT) ensures that illegal goods do not cross Mexico’s borders.
Mexico faces widespread commercial-scale infringement that results in significant losses to Mexican, U.S., and other IPR owners. Obstacles to improving IPR enforcement in Mexico include legislative loopholes, lack of coordination between federal, state, and municipal authorities, reduced budget and resources for IP agencies, cumbersome judicial processes, and pervasive presence and use of pirated and counterfeit goods in the informal marketplace. In addition, Trans-National Criminal Organizations (TCOs), which control the piracy and counterfeiting markets in parts of Mexico, continue to impede federal government efforts to improve IPR enforcement. TCO involvement has further illustrated the link between IPR crimes and illicit trafficking of other contraband, including arms and drugs. Mexico continues to rely on arrests and prosecutions of counterfeiters in flagranti as opposed to mounting proactive investigations that seek to dismantle pirating and counterfeiting networks. Online and broadcast piracy is a serious problem, and U.S. brand owners also face bad-faith trademark registrations, making it important for companies to register their trademarks early. Moreover, right holders have expressed concern about the length of administrative and judicial patent and trademark infringement proceedings and the persistence of continuing infringement while cases remain pending.
Despite these shortcomings, Mexico agreed to important IP provisions in the United States–Mexico–Canada Agreement (USMCA) and is working with the United States on their implementation. On June 30, 2020, Mexico passed a new industrial property law (Ley Federal de Protección a la Propiedad Industrial) and amended its copyright law (Ley Federal del Derecho de Autor) and Criminal Code (Código Penal Federal). The amendments to the copyright law and criminal code went into effect July 2, 2020, and the industrial property law will go into effect November 5, 2020. Among other changes, these new laws address enforcement against counterfeiting and piracy, protection of pharmaceutical-related IP, protection against circumvention of technological protection measures and rights management information, unauthorized camcording of movies, satellite and cable signal theft, transparency with respect to new GIs, copyright protection, pre-established damages, and enforcement of IP rights in the digital environment.
For information on the USMCA’s IPR provisions, please visit the Office of United States Trade Representative website at www.ustr.gov.
Guiding Principles for Effective Protection and Enforcement of Your IPR
In any foreign market companies should consider several general principles for effective management of their intellectual property. For background on these principles please link to the following article on Protecting Intellectual Property and Stopfakes.gov,or contact ITA’s Office of Intellectual Property Rights Director, Stevan Mitchell at Stevan.Mitchell@trade.gov.
Several general principles are important for effective management of IPR in Mexico. First, it is important to have an overall strategy to protect your rights. Second, IPR is protected differently in Mexico than in the United States, so you need to understand the specific procedures for Mexico. Third, rights must be registered and enforced in Mexico under national legislation. Your U.S. trademark and patent registrations will not protect you in Mexico. On the other hand, signatories of the Berne Convention for the Protection of Literary and Artistic Works provide protection to each other’s nationals’ copyrighted works and provide that nationals of all signatory countries be provided with the same rights as Mexicans.
Registration of patents and trademarks is on a first-in-time, first-in-right basis, so you should consider applying for trademark and patent protection even before selling your products or services in the Mexican market. It is vital that companies understand that intellectual property is primarily a private right and that the U.S. Government generally cannot enforce rights for private individuals in Mexico. It is the responsibility of the rights holders to register, protect, and enforce their rights, and where relevant, retain their own counsel and advisors. Companies may wish to seek advice from local attorneys or IP consultants who are experts in Mexican law. The U.S. Commercial Service in Mexico maintains a list of local attorneys but assumes no responsibility for the professional ability or integrity of the providers listed.
While the U.S. Government stands ready to assist, there is little we can do if rights holders have not taken these fundamental steps necessary to securing and enforcing their IP in a timely fashion. Moreover, in many countries, rights holders who delay enforcing their rights on a mistaken belief that the U.S. Government can provide a political resolution to a legal problem may find that their rights have been eroded or abrogated due to legal doctrines such as statutes of limitations, laches, estoppel, or unreasonable delay in prosecuting a lawsuit. In no instance should U.S. Government advice be a substitute for the obligation of a rights holder to promptly pursue its case.
It is always advisable to conduct due diligence on potential partners. Negotiate with a full understanding of the position of your partner and give your partner clear incentives to honor the contract. A good partner is an important ally in protecting IP rights. Consider carefully, however, whether to permit your partner to register your IP rights on your behalf. Doing so may create a risk that your partner will list itself as the IP owner and fail to transfer the rights should the partnership end. Keep an eye on your cost structure and reduce the margins (and the incentive) of would-be bad actors. Projects and sales in Mexico require constant attention. Work with legal counsel familiar with Mexican laws to create a solid contract that includes non-compete clauses, and confidentiality/non-disclosure provisions.
It is also recommended that small and medium-sized companies understand the importance of working together with trade associations and organizations to support efforts to protect IP and stop counterfeiting. There are a number of these organizations, both Mexico- and U.S.-based. These include:
- U.S. Chamber of Commerce
- American Chamber of Commerce in Mexico (AmCham)
- National Association of Manufacturers (NAM)
- International Intellectual Property Alliance (IIPA)
- International Trademark Association (INTA)
- Coalition Against Counterfeiting and Piracy
- International Anti-Counterfeiting Coalition (IACC)
- Pharmaceutical Research and Manufacturers of America (PhRMA)
- Biotechnology Industry Organization (BIO)
- Institute for the Protection of Intellectual Property and Legal Commerce (IPPIC)
- Mexican Association for the Protection of Intellectual Property (AMPPI)
- National Association of Corporate Lawyers (ANADE)
- Mexican Association of Research Pharmaceutical Industries (AMIIF)
- Mexican Association of Phonogram Producers (AMPROFON)
- Motion Picture Association of America (MPAA)
- Business Software Alliance (BSA)
A wealth of information on protecting IP is freely available to U.S. rights holders. Some excellent resources for companies regarding intellectual property include the following:
- For information about patent, trademark, or copyright issues—including enforcement issues in the United States and other countries—call the Department of Commerce’s STOP! Hotline at +1-866-999-HALT or visit STOPfakes.gov.
- For more information about registering trademarks and patents (both in the United States as well as in foreign countries), contact the U.S. Patent and Trademark Office (USPTO) at +1-800-786-9199 or visit USPTO.gov.
- For more information about registering your copyright in the United States, contact the U.S. Copyright Office at +1-202-707-5959 or visit Copyright.gov.
- For more information about how to evaluate, protect, and enforce intellectual property rights and how these rights may be important for businesses, please visit the Resources section of the STOPfakes website at Country IPR Resources and Industry IPR Resources.
- For information on obtaining and enforcing intellectual property rights and market-specific IP Toolkits visit IPR Toolkits. The toolkits contain detailed information on protecting and enforcing IP in specific markets and contain contact information for local IPR offices abroad and U.S. Government officials available to assist small and medium-sized enterprises (SMEs). Also see the Mexico IP Snapshot.
- An English-language overview of Mexico’s IPR regime can be found on the WIPO website.
- Although a firm or individual may apply for example, for a patent or trademark directly, most foreign firms hire local law firms specializing in intellectual property. The U.S. Commercial Service’s Business Service Provider program has a partial list of local lawyers.
Additional Resources for Rights Holders:
Intellectual Property Rights Attaché
Cynthia C. Henderson
Regional Intellectual Property Attaché for Mexico,
Central America and the Caribbean
U.S. Trade Center
Liverpool No. 31 Col. Juárez
C.P. 06600 Mexico City
Tel: +52 (55) 5080-2189
Senior Legal Specialist for Intellectual Property
U.S. Trade Center
Liverpool No. 31 Col. Juárez
C.P. 06600 Mexico City
Tel: +52 (55) 5080-2000, ext. 5222
American Chamber of Commerce Mexico
Paseo de la Reforma 295 Col. Cuauhtémoc
C.P. 06500 Mexico City
Tel.: +52 (55) 5141-3820
National Institute of Copyright (INDAUTOR)
Puebla No. 143 Col. Roma, Del. Cuauhtémoc
C.P. 06700 Mexico City
Tel: +52 (55) 3601-8270
Mexican Institute of Industrial Property (IMPI)
Periférico Sur No. 3106 Piso 9, Col. Jardines del Pedregal
C.P. 01900 Mexico City
Tel: +52 (55) 5624-0401 / 04
+52 (55) firstname.lastname@example.org
For more information, contact ITA’s Office of Intellectual Property Rights Director, Stevan Mitchell at Stevan.Mitchell@trade.gov