What action can
trademark and copyright owners take if their IP rights are
being infringed on a website based in Mexico?
The kinds of actions that can be taken are copyright
infringement, trademark infringement, or both at the same time.
You can also initiate criminal actions. This sometimes is a
much quicker action against potential infringers because a
standard infringement action to the Mexican Institute of
Industrial Property [Instituto Mexicano De La Propiedad
Industrial] takes longer. The results might be enforceable but
may take a long time, so by pursuing criminal actions you may
have better results.
The time to obtain a
final decision in a trademark infringement action or a
copyright infringement action will generally be approximately
two and half to three years in our experience. But of course it
will depend on the resistance from the defendant.
How does Mexico
differ from other countries in the region and
Juan Carlos Hernandez:
One important difference is that here in Mexico the competent
authority for solving most trademark and copyright infringement
matters is an administrative authority. In order to obtain an
award you first have to pursue your trademark or copyright
infringement action in the Mexican Institute of Intellectual
Property but this authority will not award damages. It will
only determine whether or not an infringement has occurred. If
the infringement occurred it will impose a fine on the
infringer but it will not determine damages. Then once you have
your final and conclusive decision that infringement has
occurred you would have to pursue a separate civil action with
the Mexican judiciary to pursue and award. So it is difficult
for damages to be awarded because you have to pursue two
In order to pursue
damages regarding trademark infringement, the trademark owners
have to prove that they used certain legends that are regulated
in the Mexican industrial property law. These are the MR, which
stands for registered trademark, or the R within a circle. If
the term is not accompanied by these legends it will not be
possible to pursue damages. It is interesting to see some
clients are reluctant to use these legends because of image or
marketing issues when legally it is a highly recommendable
Are there any
recent cases of interest?
Eduardo Kleinberg: There
are infringement actions being initiated all the time, either
because there is infringement in standard commerce or on a
One of the cases that is
very interesting, and was handled by our law firm, was the
conflict for the domain name Netflix.com.mx. NETFLIX intended
to do business in Mexico but it was not possible to change the
domain name because another company had registered the domain
name before. We were able to create a way for the client to
avoid the UDRP and WIPO, which takes a bit too long, and were
able to obtain the completion of the domain name without this
type of proceeding and NETFLIX obtained the domain name for
Netflix.com.mx. It took one month when normally the UDRP
proceeding takes between three to five months.
There are a couple of
other cases to do with domain names that we found interesting
where the main issue was the use of a trademark that was
already registered. For example, there was a dispute regarding
a domain name trabajo.com.mx, which translated in Spanish is
"work". The trademark was registered by another entity that
tried to obtain the transfer of this domain name. Despite the
fact that TRABAJO was a registered trademark, the panelist
determined that the word was descriptive and refused to
register the domain name. So the panelist had this kind of
trademark office-like faculty to determine if a registered
domain name was descriptive and in the end he did.
Is this becoming
more of an issue?
Santiago Zubikarai: The
number of MX domain names continues to grow. Mexico has
struggles with the unauthorized use of trademarks in many
fields, both in the "real world" and also in the "virtual
world". So people who act illegitimately tend to use cyber
squatting and use the internet more and more to place
merchandise that can be sold under trademark of another party.
So, yes, the use of the internet has increased for the
unauthorized use of trademarks, both in domains names and in
concerning the sale of counterfeit products.
What is the law on
the liability of the internet service providers?
Juan Carlos Hernandez:
The quick answer would be there is none. We do have the
telecommunications law that applies to the ISPs. However in
reality they do not have any liabilities in case there is
infringing works or infringing websites running through the
But Mexico is a member of
the TTP that is now being discussed. Among the topics there is
one specifically for IP and within that specific chapter there
is discussion about ISPs and the liability that they may incur
in their daily work. So if this is signed Mexico would have to
internally modify its internal regulations to put more
responsibilities and liabilities to ISPs, and of course they
are not happy about this.
This is interesting
because they are the same companies that operate in other
countries with more liabilities but they happily operate here
in Mexico without any real responsibility. In some countries
there are very efficient systems such as takedown notices, but
Mexico has none. If you want to take down or shut down a work
that is being infringed you have to go through different
channels that are more complicated. It takes longer as opposed
to the very efficient system that works in other countries.
steps can rights owners take?
Eduardo Kleinberg: The
first step will be to actually confirm that a potential
plaintiff has the intellectual property rights that they are
seeking to protect. Intellectual property rights in Mexico are
territorial. We have had cases where clients have asked whether
they can enforce a trademark that is registered in their own
country when it is not Mexico, and the answer is no.
So the first thing
potential plaintiffs have to do is confirm that they actually
have a right that will serve as a basis for possible
infringement action. If they are willing and they have
confirmed they do have the right, it is important to gather the
evidence that will be used later on in the proceeding.
One thing that is
important to take into account is that the particularities of
the internet and this virtual world make us think differently
as lawyers when we are determining a strategy for our clients.
Sometimes trademark owners don’t like to see any
mention of their trademark on the internet. But such usages be
covered by some type of fair use or freedom of expression. So
another important step that you must take before seeking an
infringement action is to determine if there is actually an
infringement because a simple mention or even some type of
critique may not amount to an infringement.
question that you have to take into account before moving
forward with an infringement action is the actual impact of the
infringement. Even if there is infringement maybe it so small
that actually moving forward and going with litigation can be
counterproductive because either it is more expensive than the
damage the actual infringement created or it can even create a
bad image for the client if they decide to move forward. People
on the internet tend to be capricious, so you have to be
careful not only with the legal technical aspects but also with
the possible impact that moving forward with an infringement
action could have on the image of your client.
Once you decide to move
forward with infringement, there are some steps you should be
careful with. In order to demonstrate an infringement for a
trademark or a copyright you are going to have the burden of
proof that you have to demonstrate an infringement actually
occurred. Therefore before moving forward with an infringement
action and attempting to contact the potential infringers with
a cease and desist letter, it is important to gather evidence
to demonstrate that infringement has actually occurred.
Santiago Zubikarai: In
these cases what we would usually do is hire a notary and have
him give faith of the content of the website. Notaries in
Mexico have registrar faculties. They can attest to any fact
that they witness. These statements that such facts have
occurred would have full value as evidence in litigation.
Therefore if the notary states that he accessed a website and
upon accessing such website he saw certain content, then that
fact would be demonstrated in litigation. So it is essential to
hire a notary and have him visit the website before attempting
any contact whatsoever with a potential infringer or before
fling the infringement action.
Also it is recommendable
to conduct an investigation of the location of the infringer.
Usually we recommend conducting this kind of investigation to
know if this type of infringement is taking place in Mexico or
another place so that we are able to recommend which would be
the best legal strategy to stop the entirety of
What other advice
do you have for trademark owners?
I would add that trademark owners should try to be careful in
what type of trademark protection they obtain. For example,
they could have a trademark registered in one class of
classification but perhaps their operations in Mexico are
actually covered in another class, such as a service class.
This could have an impact when they try to bring an
Eduardo Kleinberg: In
addition, even when we are talking about the electronic means
and digital world in Mexico in order to enforce your rights and
have good protection you need to have your trademark registered
in Mexico. If you don’t have a trademark
registered in Mexico then the action you may take will not be
as enforceable or as strong as they can be maybe in other
jurisdictions. In Mexico that is a must.