Trade marks and copyrights are governed in Mexico by the Federal Law for the Protection of Industrial Property (FLPIP) and the Federal Copyright Law (FCL), respectively. Both are statutory laws that provide comprehensive frameworks for the registration, protection, and enforcement of these rights.

Common law trade marks are not recognised in Mexico; protection is granted exclusively through registration under the FLPIP. Copyrights do not require registration for protection under the FCL, as rights arise automatically upon fixation on a material support. Registration can provide advantages in enforcement and litigation, however, and is therefore highly advisable.

Mexico is part of numerous international treaties governing trade marks and copyrights.

Relevant trade mark treaties/conventions to which Mexico has acceded include:

• the Paris Convention for the Protection of Industrial Property;
• the Madrid Protocol for international trade mark registration;
• the United States–Mexico–Canada Agreement (USMCA), which is known as T-MEC in Mexico; and
• the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), which includes trade mark provisions.

Relevant copyright conventions include:

• the Berne Convention for the Protection of Literary and Artistic Works;
• the Universal Copyright Convention; and
• the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT).

There are a number of different types of trade marks protected under the Mexican IP system:

• word marks protect words;
• design marks protect logos or stylised elements;
• trade dress is the overall appearance or packaging of a product, or the commercial image of the product or service;
• collective marks are reserved for associations or groups of producers to identify goods or services sharing common characteristics; and
• certification marks are used to certify specific characteristics such as geographic origin, quality, or method of production.

Mexico allows registration of traditional and non-traditional marks, provided they are distinctive and not descriptive. This includes:

• images, logos, and designs;
• sounds, provided they can be represented graphically (eg, musical jingles);
• shapes and three-dimensional signs, including product designs or packaging; and
• scents and holograms.

Certain marks receive special protection – ie, the terms “OLYMPIC” and “RED CROSS” are safeguarded under international treaties and specific Mexican laws that prohibit their unauthorised use. Geographical indications like “Tequila” and “Mezcal” also have heightened protection under national and international frameworks.

In Mexico there is a procedure to obtain a formal declaration of fame or well-known mark issued and recognised by the Mexican authorities.

The following are required to qualify for trade mark protection:

• Distinctiveness – The mark must distinguish the goods or services from others in the market. Generic, descriptive, or common-use terms are not eligible unless they have acquired distinctiveness.
• Lawful composition – Marks must not violate public order, morality, or legal restrictions (eg, using prohibited terms or symbols such as national emblems).
• Non-deceptiveness – The mark must not mislead consumers about the nature, quality, or geographic origin of the goods or services.
• Use in commerce – While prior use is not required for registration, trade marks must be used in commerce within three years of registration to avoid cancellation for non-use.

Acquired distinctiveness, also known as secondary meaning, applies when a descriptive or non-distinctive mark has become uniquely associated with the applicant’s goods or services through extensive use. To prove acquired distinctiveness, the applicant must present substantial evidence, including of:

• consumer recognition in the form of market surveys or consumer studies that showing the public associates the mark with the applicant’s goods or services;
• duration and extent of use of the mark through evidence of long-term and continuous use of the mark in commerce;
• advertising and marketing through documentation of significant promotional efforts, including advertisements, marketing campaigns, and expenditure data;
• a substantial market presence or dominance attributed to the mark; and
• awards or media coverage in the form of industry awards or mentions in the press or public forums.

The rights granted to trade mark owners include:

• exclusive use – owners have the exclusive right to use the registered trade mark for the goods or services specified in the registration;
• prevention of unauthorised use – owners can prohibit third parties from using identical or confusingly similar marks in commerce if such use could mislead consumers or dilute the mark’s distinctiveness;
• licensing – trade mark owners may license their rights to third parties through licence agreements;
• assignment – owners can transfer trade mark rights to others through an assignment agreement;
• enforcement – owners have the right to initiate legal proceedings against infringement, dilution, or counterfeiting, including administrative, civil, and criminal actions; and
• customs protection – owners can register trade marks before customs to block the importation of counterfeit goods.

Trade mark rights have a validity of ten years from the granting of the registration date and are renewable indefinitely, as long as the owner fulfils specific obligations, including declaration of their use and paying the renewal fees.

To establish use of a trade mark is it necessary to show the following:

• Actual use in commerce – ie, the trade mark must be actively used in connection with the goods or services for which it is registered (mere intention to use is insufficient).
• Geographic scope – its use must occur within Mexico, as foreign use does not satisfy local requirements.
• Continuity of use – sporadic or symbolic use does not meet the threshold; the use must be genuine and consistent.
• Evidence – proof may include sales records, invoices, (proper document to prove use) advertising or product packaging showing the trade mark in active use and such documents must contain (i) the mark as it was registered, (ii) the goods or services, (iii) the date and place, and (iv) the owner or licensee.

Trade mark owners may use specific symbols to denote the status of their marks. The registered mark symbol (®) indicates that the trade mark is registered before the Mexican Institute of Industrial Property (IMPI).

Only marks that have been officially registered before IMPI can use the ® symbol. Unauthorised use of this symbol can lead to legal consequences. While there are no immediate legal penalties for failing to use the ® symbol, it is advisable to do so once the mark is registered.

Trade marks may be subject to double protection, both as copyrighted material and under the FLPIP, simultaneously. However, different legal statutes are relied on to obtain this protection.

Copyrights are declarative in that that they are protected once the are fixed in a support material and the Mexican Copyright Office (INDAUTOR) confirms and declares in favour of the authors the existence of copyrighted material. This is in contrast with trade marks, which are constitutive and require a registration procedure to ensure protection.

A logo, for example, could therefore receive cumulative protection as copyrighted material in the form of a drawing work and as a trade mark as a design.

The FLPIP establishes prohibitions on the registration of trade marks when:

• they constitute names, surnames, appellatives or pseudonyms which could be well known or prestigious and could cause confuse or deceive consumers;
• they are a personal image, identifiable voice, portrait/picture or signature of a person;
• they are identical or confusingly similar names to the titles of artistic or literary works;
• they constitute reproductions or imitations of elements of literary and/or artistic works; and/or
• they are partial or complete reproductions of literary and/or artistic works.

It may be possible to overcome these prohibitions by obtaining the express consent of the author/titleholder having the legal right to authorise the registration of such elements.

Article 13 of the FCL establishes copyright protection of the following categories of work:

• literary;
• musical, with or without lyrics;
• dramatic;
• dance;
• pictorial or drawing;
• sculptural and plastic art;
• cartoons and comic strips;
• architectural;
• cinematographic and other audiovisual works;
• radio and television programmes;
• computer programs;
• photography;
• applied art works that include graphic or textile design, and
• compilations, made up of collections of works, such as encyclopaedias, anthologies, and works or other elements such as databases, provided that said collections, due to their selection of information, or disposition of their contents and topics represent an intellectual creation.

As previously mentioned, Mexico allows for cumulative protection of intellectual property. In this sense, in terms of its originality, the FCL grants protection of applied art works including graphic or textile designs. In terms of novelty and industrial application, it is possible to ensure an industrial design protection over its registration.

The elements required in order to qualify for copyright protection are originality and being fixed in a tangible medium.

Elements of Authorship

The FCL defines the term author as the person (individual) that has created a literary or artistic work. Considering that the Mexican copyright system does not rely on formal requirements for its acknowledgement, for a certain work and its author to be protected it is sufficient for the same to be fixed in a tangible medium and to express originality.

Work for Hire

The FCL does not expressly defines the term work for hire; however there are case law precedents establishing this legal concept. The most important element of a work made for hire, is its creation without the author’s initiative but on behalf on another entity or person providing the financial scheme for its creation.

In Mexico, an author is only a legal term reserved for individuals. However, in Mexico, copyrights provide two kinds of prerogatives to their holders: (i) those reserved exclusively for the authors (individuals), which are the so-called moral rights and (ii) the others, which may be hold by individuals and/or entities, namely, economic rights.

Particularly in terms of a work made for hire, the moral rights of a certain work will only correspond to its author. However, the economic rights of such work would be reserved for the person (individual or company) which requested the creation of the work.

Joint Authorship

For a work to be registered as one of joint authorship, each contributing author must have actively participated in the creation of the work as a unified whole. This participation must be clearly documented as part of the final work. The extent of each author's contribution may influence their respective share of rights; however, the authors may also agree on specific percentages by mutual consent. In the absence of such an agreement, the FCL will distribute the moral and economic rights equally among the authors or based on evidence demonstrating each author's actual contribution.

In cases of co-authorship of works, the exploitation of the economic rights of the work itself would have to be agreed by most of the authors involved.

The Mexican copyright system acknowledges the existence of a two kinds of prerogatives in favour of copyright owners: their moral and economic rights. Their existence and legal treatment are included in the FCL.

Mexico acknowledges the moral rights for authors of copyrighted works. The FCL provides that moral rights are considered united to the person of the author and this latter is the unique, original and perpetual holder of them. The moral rights are inalienable, imprescriptible, non-waivable and non-seizable.

Moral and economic rights have different durations. Moral rights are perpetual, while economic rights for authors will be active during their lifetimes and for 100 years after their deaths.

Only economic rights are suitable to be terminated.

Collective rights management systems exist in Mexico for music, publishing, visual arts, audiovisual works, photography, design, interpreting, the plastic arts, and writers.

In Mexico, collective rights management systems constitute partnerships, whose authorisations to be incorporated are granted by the INDAUTOR.

No registration over a copyright is needed for its protection. However, having a certificate of acknowledgement of copyrights (i) grants the author a public document ensuring their capacity as author, (ii) guarantees that the work in question will be permanently safeguarded by INDAUTOR and (iii) allows for the publicity of the same.

Any person having an interest in the recognition of a work, such as the author or holder of the economic rights of a work can register. It is not necessary to be represented by an attorney to prosecute and obtain this registration.

To apply for the registration of certain work, the applicant (author/economic rights holder) must file the format currently in force before INDAUTOR and if this applicant is the economic rights holder of a work, the applicant has to evidence its legal interest for doing so.

Materials

Depending on the work that is to be registered, the requirements for materials may vary. However, in general, the following requirements are meant to be met and expressed within the filing of the application for registration of a copyright:

• the author’s name;
• their nationality;
• their date of birth;
• their place of birth;
• their gender;
• their domicile;
• their tax ID;
• the co-authors and their percentage of participation, if any;
• the name of the economic rights title holder;
• the percentage of their participation;
• the name of the work;
• a synthesis of the work;
• the type of work;
• confirmation of whether the work has been communicated;
• the date of any such communication;
• whether the work is derivative;
• two specimens of the work; and
• if the economic rights title holder is an entity, evidence its existence.

Filing Fees

The official fees for the recordal of works is about USD20.

The official fee for reservation of rights ranges from USD100 to USD300, depending on the type of reservation.

The INDAUTOR may refuse copyright registration on absolute grounds if it is an attempt to register the following:

• isolated ideas, formulas, solutions, concepts, methods, systems, principles, discoveries, processes and inventions;
• industrial or commercial use of the ideas contained in the work;
• schemes, plans or rules for performing mental acts, games or business;
• letters, digits or isolated colours;
• isolated names, titles or phrases;
• simple formats in blank for their filing
• legislative, judicial and/or administrative texts, as well as their official translations;
• informative contents of news; and/or
• common use information such as sayings, legends, proverbs, facts, calendars and metric scales.

The aforementioned categories are expressly mentioned by the FCL as not copyrightable.

Appeal

A copyright registration refusal can be appealed through one of the following instances:

• Review recourse: An optional remedy that must be filed before INDAUTOR. It will be resolved by the hierarchical superior of the government official who issued the refusal. This recourse must be submitted within 15 working days from the date the refusal was served.
• Nullity appeal: This must be filed before the Specialised Chamber for Intellectual Property Matters of the Federal Court of Administrative Affairs (FCAA). It must be submitted within 30 working days from the date the refusal was served. Additionally, the nullity appeal can be filed against the decision issued in the review recourse, if the latter was chosen.
• Amparo appeal: The decision issued by the FCAA can be challenged through an Amparo appeal filed before the Federal Circuit Courts (FCC). This remedy must be submitted within 15 working days from the date the FCAA’s decision was served. The ruling issued in this instance is final and not subject to further appeal.

Correction

As stated in the regulations of the FCL, the interested parties may request the correction of transcription or other errors directly attributable to INDAUTOR, within a period of no more than three months after the issuance of the certificate.

Please refer to 2.6 Related Rights.

The Mexican trade mark system is based upon the registration of a distinctive sign to grant title holders an exclusive right to its use. While the FLPIP acknowledges usage of a distinctive sign as a way of having a better right to apply for registration, it does this only in cases where the user has bona fide intentions. The FLPIP states that a third party who in good faith uses the same trade mark or another confusingly similar, in Mexico, for the same or similar products or services, provided that the third party had begun to use the trade mark, uninterruptedly, before the filing date of the application for registration or the first use declared therein, shall have the right to request registration of the trade mark, within five years following the day on which the registration was published, in which case this user must first file and obtain the invalidation of the prior trade mark.

Doing so will confer the following legal benefits:

• exclusive rights to the use of a certain trade mark for its title holder in Mexico;
• it will constitute an intangible asset;
• it will ensure the granting of licences on behalf of its titleholder; and
• it will give the right to prohibit third parties from using identical or confusingly similar marks in commerce if such use could mislead consumers or dilute the mark’s distinctiveness and to file legal actions against infringement, dilution, or counterfeiting, including through administrative, civil, and criminal actions.

The guidelines and information to be included in the corresponding application for registration changes will depend on the type of trade mark to be registered. For regular trade marks – such as wordmarks, designs, 3-D devices and mixed marks – it would be mandatory to include specimens of the same or their full visual representation. For non-traditional trade marks, and or, secondary meaning/trade dress, it will be mandatory to attach visual evidence on the configuration of the trade marks and a detailed description of the distinctive elements to register.

The national authority in charge of the registration of industrial property in Mexico in IMPI. No other authority has faculties for the administration and granting of IP rights in Mexico. IMPI maintains a publicly available website of the Trade Mark Register: ACERVO DE MARCAS. While trade mark searches are not mandatory to initiate a trade mark registration procedure, it is of upmost importance to conduct them to determine the chances of success in registration of certain trade mark.

Trade mark rights have a validity of ten years following the date of the granting of their registration and are renewable indefinitely, as long as the owner fulfils specific obligations, including declaration of use and paying renewal fees.

Trade marks must be renewed at least six months before or after such a date is due. To proceed with the renewal of the trade mark registration, its owner must also file a declaration of use (of the trade mark on the goods/services for which the same had been used) alongside the renewal.

If a trade mark registration expires, the applicant has a grace period of six months after this expiration to file for its renewal. If this additional six-month grace period passes without the trade mark being renewed, it will not be possible to revive it.

Any person (individual or entity) is entitled to apply for the registration of a distinctive sign and it is important to mention that the filing of a trade mark application may be effectuated by any person and not only by an attorney.

To initiate a trade mark registration procedure, the applicant must file a trade mark application before IMPI. The application in question must comprise:

• the contact information of the applicant (name, nationality, address, representative of the applicant, if any);
• information of the trade mark to be registered;
• name of the mark, if applicable, or representation of the distinctive sign sought to be registered;
• date of first use, if any;
• class;
• identification of goods/services;
• priority to be claimed; and
• payment of fees.

As per the date of first use of the mark, it is not mandatory to file evidence on the same. Depending on the type of trade mark to be registered (eg, mixed marks, three-dimensional trade marks, non-traditional marks, design trade marks) it will be necessary to show the visual representation of the distinctive sign intended to be registered.

The Mexican trade mark system does not allow multi-class applications.

The official filing fees for trade mark applications are MXN3,127

The Mexican trade mark system requires the registration of distinctive signs in order to grant exclusive use rights but there is no need for the mark to be used in commerce before registration.

IMPI may conduct an examination of a distinctive sign filed for registration and may consider the existence of prior trade marks that – due to phonetic, graphic and/or conceptual similarities and scope of protection – could constitute confusingly similar marks to the ones intended for registration.

Once an  application for a trade mark has been filed, no changes and/or modifications to that application are allowed. The scope of its protection, its distinctive sign, the  date of first use and name of the applicant are all fixed.

IMPI conducts a formal and in-depth examination of the application and may require the further fulfilment of some requirements, such as specifications on the scope of protection, or any other formal issue. However, if IMPI finds discrepancies in the trade mark to be registered, this will require the filing of a new application.

As stated in 4.4 Application Requirements, Mexico’s trade mark system does not allow multi-class applications; therefore, any division intended to be made from a certain application runs the risk of constituting a brand new application.

Considering that trade mark registrations in Mexico constitute exclusive rights for the owner, and that the FLPIP states that a trade mark must be used as it was registered, having an incorrectly granted registration may lead to problems around that registration’s use, if it is not the trade mark to be used, if it does not cover the exact goods/services that it distinguishes in commerce, or if the correct titleholder may not have a certain exclusive right for the use of such trade mark if its name were erroneously provided.

The incorrect information may be contested by third parties that may detect that the mark used is not the one that obtained its registration, or that its owner is not the person/entity entitled to use it. Those problems normally arise through litigation.

It is possible to correct some information such as the name of the applicant if a clerical error or typo was made, the number of the class of interest covered by the trade mark, the registrant’s domicile, and/or priority.

Article 173 of the FLPIP states a full catalogue of 21 provisions for the refusal of registration of trade marks on absolute grounds. These include:

• technical or common names;
• public domain three dimensional forms;
• public domain holograms or those that are not distinctive;
• descriptive signs;
• isolated letters, digits and names;
• translation, transliteration or artificial construction of unregistrable words;
• signs consisting of imitations of government emblems or flags;
• signs identical or similar to denominations of origin and/or geographical indications;
• confusingly similar signs;
• identical and/or confusingly similar signs to well-known or famous trade marks; and
• bad faith signs.

It is important to mention that the official action issued by the authority may be responded to by the applicant, which can seek to overcome the objection. Therefore, the official action of the refusal of the registration is not conclusive.

As previously mentioned, the official action whereby IMPI provisionally refuses the registration of a trade mark based on any of the provisions set out in Article 173 of the FLPIP may be responded to through arguments to try to overcome the obstacle. However, if the same is not successful, the denial of registration of a trade mark may be appealed before IMPI or the FCAA.

Mexico approved its adhesion to the Madrid Protocol on 25 April 2012 and the same came into force on 19 February 2013.

The filing of a trade mark application in Mexico or a granted registration are the minimum requirements for using the International Trade mark Registration Procedure.

On the other hand, there are mandatory requirements for the filing of a declaration of use of international registrations in full force in Mexico on the third year of its registration or after the communication made by WIPO to the IMPI of a renewal petition.

Once the trade mark application is published for opposition purposes in the Official Trade Mark Gazette, the opponent will have a one-month term to file an opposition against its registration.

No requests for extensions of opposition are allowed.

If the interested party wishes to file a cancellation action based on non-use, they must wait until the trade mark registration in question reaches its third anniversary of validity.

A five-year term applies for cancellation actions based on other grounds, such as:

• prior use (either national or abroad);
• false data (eg, the declared first use is untrue or cannot be proven by the holder); or
• mistake, oversight, or difference in judgment (eg, there is a pending application filed earlier or an existing valid registration, and the marks are identical or confusingly similar and cover identical or overlapping goods and services).

This period is counted from the date of publication of the trade mark in the Official Trade Mark Gazette.

Additionally, there is no deadline to file a cancellation action if:

• the trade mark was granted in violation of the IP law provisions in force at the time of its application;
• a third party, such as a legal agent, user, distributor, or any other individual with a prior relationship with the legitimate holder of the trade mark abroad, applied for and obtained registration of the mark (or a confusingly similar one) without the express consent of the foreign holder; or
• the trade mark was obtained in bad faith.

There is no compulsory timeframe after the registration of a copyright to file, as all can be submitted at any time considering the timeframe for filing the nullity appeal.

The legal grounds for filing a trade mark opposition:

• likelihood of confusion or association;
• dilution of a well-known or famous trade mark;
• lack of distinctiveness;
• bad faith filing;
• violation of prior rights;
• contravention of public order or morality;
• misleading nature; and
• improper use of protected elements.

A decision cancelling a trade mark registration can be appealed through one of the following instances:

• Review recourse: An optional remedy that must be filed before IMPI (for trade marks). It will be resolved by the hierarchical superior of the government official who issued the decision. This recourse must be submitted within 15 working days from the date the refusal was served.
• Nullity appeal: This appeal must be filed before the FCAA. It must be submitted within 30 working days from the date the refusal was served.
• Amparo appeal: The decision issued by the FCAA can be challenged through an amparo appeal filed before the FCC. This remedy must be submitted within 15 working days from the date the FCAA’s decision was served. The ruling issued in this instance is final and not subject to further appeal.

In Mexico there is no expungement or re-examination procedure available. If a trade mark or a copyright have been cancelled, an appeal against said decision must be filed or a new application must be filed in order for re-examination.

Any person who may be affected by the registration of certain trade mark may file an opposition against a published application. The government fees associated with an opposition are MXN4,300.

According to the FLPIP, any cancellation action for trade mark registrations can be initiated either:

• ex officio by IMPI; or
• by any third party with sufficient legal standing, such as in cases where in an application IMPI cites an earlier registration as anticipation, and its cancellation is necessary to proceed with the registration process or in cases where a new registration was granted disregarding the provisions of the FLPIP or a prior existing application or registration.

Similarly, the FCL establishes that cancellation actions for copyright registrations can be initiated:

• ex officio by the INDAUTOR; or
• by any third party with sufficient legal standing to do so.

The opposition procedure in Mexico begins with the filing of the corresponding writ, which must be filed within one month following the publication of the application. IMPI will study the arguments raised in the opposition and, following the termination of the formal examination, will issue an office action expressing any possible refusals of registration that could be in terms of the opposition filed and will inform the applicant of the same in order for the latter to respond to such official action and the opposition. The opposition will be resolved through motion practice and after the opposition is responded to by the applicant, IMPI will open an allegations stage so that applicant and opponent may raise their final arguments.

The revocation/cancellation actions regarding trade mark registrations can only be brought before IMPI; however, later appeals will be resolved by IMIPI or both the FCAA and the FCC.

On the other hand, the revocation/cancellation actions regarding copyright registrations can only be brought before the FCAA; however, the later appeal will be resolved by the FCC.

Partial cancellations are available for trade mark registrations. IMPI can eliminate products or services for which the trade mark holder failed to prove use or where those products and services overlap with those covered by a prior registered trade mark or by a trade mark that claims a prior use and was filed earlier. However, according to recent criteria issued by IMPI, partial cancellations are only applicable to trade marks filed on or after 5 November 2020. This is the date when the FLPIP entered into force, establishing regulations for such actions.

Additionally, the interested party must explicitly request a partial cancellation. If this is not indicated, the procedure will continue as if the cancellation action had been requested for the entire registration.

For copyright registrations, there are no partial cancellations.

Please refer to 3.9 Refusal of Registration and 5.2 Legal Grounds for Filing an Opposition or Cancellation for discussion of the appeal process against any decision issued by IMPI.

It is possible to amend a trade mark registration during a revocation/cancellation proceeding in order to resolve the dispute and reach an agreement beneficial to both parties.

In practice, it is common to initiate settlement talks during revocation/cancellation actions. One common approach is to limit the scope of goods or services covered by the trade mark registration. This allows the plaintiff, whose goal is to invalidate the trade mark to facilitate its own registration, to withdraw the action, enabling both trade marks to coexist without covering related or identical products or services.

In some cases, if both revocation and cancellation affect the same trade mark registration, IMPI may resolve them simultaneously in a single decision.

However, if there is an infringement action and the defendant files a cancellation action as a counterclaim, IMPI will first resolve the invalidation action, followed by the infringement case. The outcome of the invalidation action could significantly impact the result of the infringement case.

There are no special procedures designed to revoke or cancel trade marks or copyrights filed fraudulently.

However, there is a cancellation action based on bad faith, which can be used in cases where fraudulent intent is suspected. This action, though, follows the standard cancellation procedure and is not a special or separate process.

The only criminal offences related to trade marks concern counterfeiting. Therefore, if an application is filed in bad faith, no investigation will take place, and as such, the application will not be suspended during any investigation process.

The consequences of a fraudulently filed application are purely administrative and include the cancellation of the fraudulent trade mark or copyright registration.

The recordal of assignments of both trade marks and of copyrights must be through the filing of an application before IMPI/INDAUTOR, including the following information of the assignor and assignee:

• complete names;
• addresses;
• nationalities; and
• the subject matter of the licence.

The terms of the agreement may not include royalties involved and/or any other confidential information, this is because filing a petition for the recordal of a licence before IMPI/INDAUTOR will make this act public to third parties and such information will be publicly available at any time.

In Mexico, it is only possible to assign trade marks and/or copyrights as whole units and not in partial sections.

As long as a trade mark is in force, it can be transmissible to the heirs of the titleholder or any other person that the titleholder might name within their will. With respect to copyrights, upon the death of their authors, they will be valid for another 100 years and they are transmitted to their author’s heirs.

In order for the recordal of licences regarding trade mark matters it is mandatory to have a licence agreement in written form, including the following information of the licensor and licensee:

• complete names;
• addresses;
• nationalities;
• the subject matter of the licence;
• the term of the licence (it could be perpetual); and
• whether the licence will be exclusive.

The terms of the agreement may not include royalties involved and/or any other confidential information, this is because filing a petition for the recordal of a licence before IMPI will make this act public to third parties and such information will be publicly available at any time.

The recordal of licence and/or assignment agreements before IMPI/INDAUTOR is not mandatory, but doing so ensures that these agreements will have being effect on any third parties.

There is no strict statutory deadline to file trade mark or copyright infringement claims. It is advisable to file them as soon as the infringing acts are detected.

Infringement claims are subject to an undue delay defence as the authorities’ power to sanction infringement expires after five years from the date the infringement occurred.

There are several grounds on which an affected party can sustain their claim of infringement.

Trade Marks

For trade marks, these include:

• unfair competition;
• carrying out, in the exercise of industrial or commercial activities, acts that cause or induce confusion, error, or deception in the public;
• selling or distributing products or offering services, indicating that these are protected by a registered trade mark when they are not;
• using a similar trade mark to a registered one to cover the same or similar products or services as those protected by the registered trade mark;
• using, without the consent of its owner, a registered trade mark, or one similar to it, to form part of a trade name, business name, corporate name, or domain name, or vice versa, provided that such names, denominations, or business names are related to establishments operating with the products or services protected by the trade mark;
• using a previously registered trade mark, or one similar to it, to form a trade name, business name, corporate name, or domain name, or as part of these, by a natural or legal person whose activity is the production, importation or commercialisation of goods or services identical or similar to those covered by the registered trade mark, without the written consent of the trade mark holder or the person authorised to do so;
• using a registered trade mark, without the consent of its owner or without the proper licence, on products or services identical or similar to those covered by the trade mark;
• offering for sale or distributing products to which a registered trade mark is applied, and where such products or their labelling have been altered;
• offering for sale or distributing products to which a registered trade mark is applied, after having partially or totally altered, replaced, or removed that mark; and
• using a combination of distinctive signs, operational or image elements (ie, trade dress), which allow products or services to be identified, that are identical or similar to those protected by the FLPIP and that, by their use, cause or induce the public to believe or assume a non-existent association with the party who holds the right.

It is important to mention that in order to enforce an infringement action, a trade mark must be registered; otherwise, the interested party will not have any legal standing.

Copyrights

For copyrights, the infringement grounds include:

• the editor, entrepreneur, producer, employer, broadcasting organisation, or licensee entering into a contract for the transfer of copyright in violation of the provisions of the FCL;
• the licensee violating the terms of the mandatory licence;
• a collective management society claiming to be such without having obtained the corresponding registration with INDAUTOR;
• a collective management society administrator failing to provide the required reports and documents to INDAUTOR, without just cause;
• failing to include in a published work the mentions referred to in the FCL;
• omitting or falsely inserting in an edition of a work the data referred to in the FCL;
• failing to include the mentions referred to in the FCL on a phonogram;
• publishing a work, when authorised to do so, without mentioning in its copies the name of the author, translator, compiler, adapter or arranger;
• publishing a work, when authorised to do so, in a way that harms the reputation of the author as such and, if applicable, the translator, compiler, arranger, or adapter;
• publishing a work, before the Federation, states, or municipalities and without authorisation, of works made in the official service;
• deliberately using a title in a work that causes confusion with another published earlier; and
• fixing, representing, publishing, communicating, or using, in any form, a literary or artistic work, protected under the FCL, without mentioning the community or ethnic group, or if applicable, the region of the Mexican Republic from which it originates.

Actions that would lead to commercial copyright infringement include:

• communicating, making available or using publicly a work protected by any means, and in any form, without the prior and express authorisation of the author, their legitimate heirs, or the holder of the economic rights;
• using the image of a person without their authorisation or that of their heirs;
• fixing, recording, producing, reproducing, storing, distributing, communicating, making available, transporting or marketing copies of works, cinematographic works and other audiovisual works, phonograms, videograms or books, protected by copyright or related rights, without the authorisation of the respective holders as provided by the FCL;
• offering for sale, storing, transporting, or circulating works protected by the FCL that have been altered, modified or mutilated without the authorisation of the copyright holder;
• importing, selling, leasing or performing any act that leads to the possession of a device or system whose purpose is to deactivate the electronic protection devices of a computer program;
• retransmitting, fixing, reproducing and broadcasting to the public emissions of broadcasting organisations without the proper authorisation;
• using, reproducing, or exploiting a reserved right or a computer program without the consent of the holder;
• using or exploiting a name, title, designation, physical or psychological characteristics, or any operational features in such a way that induces error or confusion with a reserved protected right; and
• using any artistic or literary work against the provisions of the FCL.

It is important to mention that to enforce an infringement action, the copyrights do not need to be registered, as the FCL clearly establishes that said works are protected since the moment of their fixation.

The conduct described above constitutes infringement in Mexico; and therefore, all elements therein presented must be proven to make a successful claim, along with other procedural requirements such as the legal standing and the ownership of the affected IP right.

The only law applicable to trade mark infringement actions or any other action related to trade marks is the FLPIP. The only law applicable to copyright infringement actions is the FCL. However, infringement conducts related to the management of copyright information can be classified as commercial infringement actions, such as the ones mentioned in Article 12 of the WIPO Copyright Treaty.

For trade marks, the use of identical or confusingly similar signs to a previously registered trade mark is the conduct sanctioned as infringement.

For copyrights, the distribution, communication, or fixation of a work without authorisation constitutes the infringement

There are no prerequisites for filing a trade mark or a copyright infringement action. The issuance of warning letters or engaging in mediation are optional to the plaintiff.

There are no restrictions on trade mark or copyright owners enforcing their rights; however, if the defendant feels that said claims are groundless, or there was misuse/abuse they can argue that as part of their defence.

The initial instance of the infringement actions must be filed before MIIP (for trade mark and commercial related infringements) and before INDAUTOR (for copyright related infringements).

The costs will depend mostly on the complexity of the case, as well as the amount of evidence to be disclosed; however, clients can expect procedural cost of around USD20,000–30,000 per case.

For copyrights, it is not necessary to be registered before the INDAUTOR to bring infringement actions; however, trade marks must be protected before the IMPI to bring an infringement action.

There are no declaratory judgment proceedings regarding infringement actions; however, the defendant may file counterclaims to challenge the validity of the IP right that is deemed violated to destroy the legal standing of the plaintiff.

All claims, even small ones, must be filed and prosecuted under the standard filing procedures.

Decisions issued in infringement action proceedings can set a fine on the infringer, which will be collected by the authority to cover their internal expenses, as well as the obligation to immediately stop the conducts sanctioned.

Once the infringement decision becomes final, the plaintiff could opt to collect damages directly before IMPI (only for trade mark and commercial infringements) or by a civil court for copyright infringement or as an alternative to the trade mark and commercial courts.

“Counterfeiting”/”bootlegging” shall be understood as the use of a mark that is identical or so similar that it cannot be distinguished in its essential aspects from a previously registered trade mark or one protected by the FLPIP, without the authorisation of its owner or licensee, to falsely represent a product or service as original.

As counterfeiting is considered a felony in Mexico, the only option available to stop it is to file criminal actions before the General’s Attorney Office; therefore, there will be criminal liability in these procedures.

There are no special procedural provisions for trade marks and copyright proceedings. The standard administrative regulations apply, which means that all litigations must follow the following procedural overview:

• initial filing;
• response;
• manifestations against the response;
• disclosure of evidence (if the evidence filed is all in the form of documents, the disclosure takes place at the time of the filing of the initial brief and its response);
• final pleadings; and
• decision

Nullity appeals filed against the decisions issued by IMPI or INDAUTOR are decided by the FCAA. The last instance of appeal is decided by the FCC. The only judicial body specialised in IP is the relevant chamber of the FCAA.

At first instance, the cases are resolved by the examiner appointed by either IMPI or INDAUTOR, which are the administrative authorities specialised in trade marks and copyrights.

The nullity appeal is decided by the Magistrates of the FCAA and the amparo appeals are decided by the Magistrates of the FCC.

The authorities that resolve these matters are selected randomly by IMPI, INDAUTOR and the courts.

It is mandatory for a trade mark to be registered to be enforceable, unlike copyrights.

If the trade mark has not been declared as famous by IMPI, it will be necessary for the infringer to use a trade mark that is registered for identical or similar products or services to achieve the sanction.

Costs will depend on the complexity of the case, as well as the amount of evidence to be disclosed; however, clients are likely to pay in the range of USD25,000–35,000 per case.

In Mexico, defendants may raise a wide range of defences depending on the specific circumstances of the case. These defences may include any of the three grounds set forth in the FLPIP under which a trade mark registration shall not be enforceable:

• prior use of an identical or confusingly similar trade mark in good faith;
• exhaustion of trade mark rights; and
• lawful use of an individual’s or corporation’s name.

Additionally, as part of their defence strategy, defendants may file counterclaims.

There is no formal catalogue of defences for trade mark infringement actions. However, defendants may rely on any defence that fits the case strategy. These must be substantiated with evidence beyond a reasonable doubt to be effective. If proven, these defences can constitute total bars to liability.

The fair use doctrine allows the use of copyrighted works without the owner’s consent under certain circumstances; however, this doctrine is not applicable to trade marks.

This doctrine must be analysed within the framework of the Berne Convention, which establishes that fair use is only applicable in specific scenarios where it does not harm the rights of the author, economic holders, or the work itself, and does not interfere with its normal exploitation. The FCL provides a list of limitations under which copyright use may not constitute infringement. Therefore, when invoking fair use in Mexico, both the Berne Convention and the FCL must be carefully analysed to determine whether the specific case qualifies.

There are no exceptions to copyright infringement based on satire or parody. In a notable precedent, the Supreme Court of Justice (SCJ) ruled that parody could not be considered an exception to copyright infringement, even under the principle of freedom of speech. The SCJ determined that authorisation from the copyright owner was required to create and distribute a parody, and failure to obtain such authorisation constitutes infringement.

Mexico does, however, recognise the right to free speech or information as an exception to copyright infringement. For this exception to apply, the same factors as those outlined under the fair use doctrine must be met. These include ensuring that the use does not harm the rights of the owner or the normal exploitation of the work. A thorough analysis is required to determine whether the specific case qualifies under this exception.

In the case of registered trade marks, Mexico has recognised the right to use a trade mark to compare products or services with the purpose of informing the public, provided that such comparison is not misleading, false, or exaggerated according to the terms of the Federal Consumer Protection Law.

For registered trade marks, the FLPIP establishes that a registration shall not produce any effects against any person who markets, distributes, acquires, or uses the product to which the registered trade mark applies, after the product has been lawfully introduced into commerce.

Even though in there is a type of exhaustion of copyright rights based on the doctrine of first sale, it is subject to limitations that must be carefully considered to avoid engaging in infringement. This doctrine grants the buyer complete ownership of the specific product that has been acquired, and that is protected under a copyright, such as a book. However, while the owner is permitted to alter the item for personal use, actions such as reprinting for resale, or any other activities that harm the intellectual property holder’s rights are prohibited.

Regarding digital content, the exhaustion doctrine is more limited due to licensing agreements and the use of blockchain, which often prevent the transfer or resale of digital copies.

It is possible to file preliminary injunctions before IMPI regarding any potential trade marks or commercial infringement actions for copyrights.

Injunction Types

The preliminary injunctions that can be obtained are the following:

• The withdrawal from circulation, or the prevention of circulation, of goods that infringe rights protected by either the FLPIP or the FCL.
• The withdrawal from circulation of:
1. illegally manufactured or used objects, packaging, containers, wrapping, stationery, advertising materials, and similar items that infringe any of the rights protected by either the FLPIP of the FC
2. advertisements, signs, labels, stationery, and similar items that infringe any of the rights protected by either the FLPIP or the FCL; and
3. utensils or instruments intended for or used in the manufacturing, production, or obtaining of any of the items mentioned above.
• Prohibition of the commercialisation or use of products that violate a right protected under both the FLPIP and the FCL.
• Seizure of goods.
• Suspending or stopping acts that constitute a violation of the provisions of either the FLPIP or the FCL.
• Suspending the free circulation of goods intended for import, export, transit, or, as the case may be, any customs regime, that constitute a violation of the provisions of either the FLPIP or the FCL, in accordance with the applicable legal provisions in customs matters.
• Suspending, blocking, removing content to, or stopping acts that constitute a violation of the FLPIP or the FCL through any virtual, digital, or electronic means, known or yet to be developed.
• Suspending the service provided or closing the business that provides them when the measures outlined in the preceding points are not sufficient to prevent or avoid the violation of IP rights.

Requirements

To apply for preliminary injunctions, the applicant must fulfil the following requirements:

• Provide evidence of being the rights holder and meet any of the following conditions: the existence of a violation of their rights, that the violation of their rights is imminent, the existence of the possibility of suffering irreparable harm, or the existence of a well-founded fear that the evidence may be destroyed, concealed, lost, or altered (evidence of rights ownership shall not be required in cases of administrative infringements that do not involve a violation of industrial property rights).
• Grant a sufficient bond or security deposit to cover any harm that may be caused to the person against whom the measure has been requested.
• Provide the necessary information for the identification of the goods, services, physical establishments, or digital platforms where the violation of the rights protected by either the FLPIP or the FCL is committed.

The requirements enlisted must be met for IMPI to order any of the preliminary injunctions outlined above under Injunction Types.

The defendant may oppose the preliminary injunctions by:

• filing a brief showing a counter bond whose amount will be set by IMPI;
• proving a least the appearance of an arguable right to exploit the relevant IP; and
• showing that the harm that could be suffered by the person on whom the measures are to be imposed is greater than the harm that could be caused to the person requesting them.

IMPI will decide if said measures are lifted or maintained.

Damages can be claimed through either a civil court or directly with IMPI (only for trade mark infringements and commercial copyright violations). These damages result from proving and sanctioning an IP violation committed by a third party.

To claim damages, the plaintiff must request them from the appropriate authorities or courts; damages will not be awarded ex officio.

As for the amount of damages, the FLPIP establishes that compensation should not be less than 40% of the legitimate value indicator presented by the affected party. Meanwhile, the FCL establishes that compensation for damages due to copyright violations should, in no case, be less than 40% of the retail price of the original product or service involved in the infringement.

All damages resulting from an IP violation are generally grouped under the term “damages”.

There is one exception in copyright cases, where the affected party can request compensation for both moral damages and damages related to monetary loss.

Each party is responsible for paying their own litigation costs, including government fees (if applicable), expenses, and attorney’s fees. However, in the case of an infringement action, if the plaintiff seeks to recover damages through a civil lawsuit, attorney’s fees expenses related to the infringement and compensation for any damages and losses may be included as part of the damages caused by the infringer’s unlawful conduct.

If the case is settled, it is possible to request reimbursement for attorney’s fees and expenses, as well as compensation for any damage incurred. This reimbursement is not automatic and is subject to the specific circumstances of the case.

To seek compensation for damages caused by an intellectual property violation, a notice of the corresponding infringement action or civil action must be served to the alleged infringer, in accordance with the process established by national regulations.

There are non-litigation alternatives, such as a warning letter, to seek relief from the alleged infringer. This alternative is optional and will be subject to analysis to determine whether it is suitable in each case.

Customs authorities do not have any power to seize counterfeit goods or parallel importations; in fact, if counterfeit good are detected at customs, the IP right holder must file the corresponding legal action before IMPI or the Attorney General’s Office, so any of these authorities can send an official communication ordering the suspension of the free circulation of the imported goods and make them available to the competent authority in the warehouse designated by the authority for such purposes

In order that customs authorities are aware of counterfeit goods, the Official Database of Mexican Trade Mark Registrations of the Mexican Customs was created. After a trade mark is recorded in said database and once customs authorities receive any type of merchandise, they will review if it complies with the Mexican regulation and if there is the presumption of counterfeit/infringing merchandise.

Once customs authorities detect merchandise that is presumed to be counterfeit/infringing they will send an alert to the representatives of the trade mark holder, so they can file the corresponding actions against the merchandise.

Please refer to 3.9 Refusal of Registration and 5.2 Legal Grounds for Filing an Opposition or Cancellation for discussion of the appeal process in Mexico.

An appeal must be filed with the relevant administrative or judicial authority within the specified timeframes.

Regarding the types of appeals, a review recourse or an amparo appeal typically takes about six months to be decided. On the other hand, a nullity appeal is expected to be decided within approximately eight to ten months. These timeframes can vary depending the complexity of each case and the workload of the authorities.

Regulations regarding artificial intelligence (AI) are still under discussion and development. However, there is an ongoing case where ChatGPT, through its legal representatives, filed a nullity appeal against a copyright registration refusal issued by INDAUTOR, arguing that AI should not be denied moral rights.

This case is still pending, and its outcome could be pivotal in determining the legal status of AI in terms of title ownership. It is important to note that the FCL currently only recognises natural persons as copyright holders, particularly with regard to moral rights, meaning that AI does not have the legal capacity to hold these rights. We will have to wait to see how this issue is addressed as AI-related regulations continue to evolve.

The use of trade marks and copyrights on the internet is governed by the same rules as their use in physical spaces. However, recent amendments to the relevant regulations have introduced provisions for notice-and-takedown procedures, which establish a process to address alleged infringements.

Additionally, with the incorporation of blockchain-related provisions in the FCL, service providers may be held liable if content hosted on their platforms infringes intellectual property rights and they fail to remove it following a notice-and-takedown request or a corresponding warning letter.