IMPI: the unheard specialist in IP crimes

Its effects are wideranging as it not only affects the owners of the counterfeited trademarks but the complete consumption chain. Therefore it cannot be tolerated by any state under any circumstances, especially considering the fact that such activities have taken on an unimaginable magnitude to the extent that today, almost every product is counterfeited, from clothing and handbags to tyres and nappies.

Mexico, like many other countries, has shown its commitment in this matter through different measures in Mexican legislation, such as the Mexican Industrial Property Law (MIPL), in which Mexico expressly recognised counterfeiting trademarks as harmful enough to our society and economy in order to call for the use of all of the state’s resources in the pursuit and punishment of these actions.

Under this scenario, every year criminal actions filed by IP rights owners to deal with trademark counterfeiting are increasing in number. One especially interesting aspect of this is that the Attorney General’s Office (GAO) requires the opinion of an expert witness to determine whether a trademark has been counterfeited or not.

The question then arises of who should provide such an expert witness opinion? The GAO’s regular practice is that the expert witnesses are qualified specialists who can provide an opinion in relation to IP matters. Notwithstanding this, in some cases the GAO expert witness requires trademark holders to provide an original and identical product to compare it to the presumably counterfeited merchandise and issue its opinion.

As a consequence of this, many criminal actions are held up at the very initial stage since it seems that, according to the GAO expert witness criteria, the crime is product counterfeiting instead of trademark counterfeiting.

For example, if a package containing hats that illegally reproduce a registered trademark is seized, the GAO expert witnesses will require the owner of the referred trademark to provide an identical hat in order to issue its opinion, disregarding that the trademark holder does not necessarily manufacture/commercialise hats, but different products protected by the same international class and that differ from those seized, such as clothing and footwear.

The trademark holder will not be able to provide the GAO expert witness with an identical hat, since he has not applied for the registered trademark for this product, or simply does not manufacture the goods in question.

It has sometimes been ignored that a trademark registration is granted to cover different products classified in the same international class, and therefore that what harms an IP right owner is the unauthorised use and counterfeiting of its registered trademark.

This is irrespective of the product which bears it; the comparison should be between the merchandise carrying the counterfeited trademark and the registered trademark. Therefore, it becomes almost impossible for registered trademarks owners to prove illegal actions and the violation of their IP rights.

As the above has become more frequent, it is evident that a solution must be found in order to avoid this obstacle to justice in Mexico.

In the author’s opinion, this conflict might be resolved if the GAO asked for the Mexican Institute of Industrial Property’s (IMPI’s) opinion on this kind of cases.

The IMPI is the specialist in IP matters in Mexico, and is empowered and qualified to determine the existence of similarity or infringement between marks by the strict comparison of trademarks, and not products. As a matter of fact, the MIPL expressly establishes that the IMPI can provide an expert witness opinion to the GAO.

Therefore, through this proposal, two very essential objectives might be achieved: first, criminal procedures that are filed related to trademark counterfeiting will be processed more quickly and the GAO determination of the existence of an IP crime will be more certain and valid; and second, by the recognition of the IMPI as the IP specialist in Mexico, it will encourage government organisations to focus on their own speciality.

In conclusion, the IP structure created by the Mexican state is well intended but it needs to be fully recognised in order that the registered trademark owners can enforce their rights in Mexico.