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Protecting online content and domain names in Mexico (sponsored discussion)



Managing Intellectual Property


Attorneys from Basham Ringe y Correa explain the issues facing IP rights holders when taking action against potential infringement online.

What action can trademark and copyright owners take if their IP rights are being infringed on a website based in Mexico?

Eduardo Casañeda: 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 worldwide?

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 separate actions.

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 action.

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 website.

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 systems.

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.

What practical 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.

Another practical 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 ­infringement.

What other advice do you have for trademark owners?

Eduardo Castañeda: 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 infringement action.

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.


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