Issues concerning copyright and trademarks
Several legal shortcomings exist, and even those that have been detected have not been amended.
One example is the lack of a legal provision to establish an obligation for the Mexican Institute of Industrial Property (IMPI) to verify rights granted by the National Institute of Authors’ Rights, and vice versa, before the granting of some of the rights governed by the relevant laws.
That is particularly the case in connection with trademarks and some copyrights, such as those included in the pictorial category: drawings, caricatures and/or some others that can be considered as artistic works and could be protected as trademarks.
The lack of a legal provision related to the above gives rise to several issues that affect IP owners directly. This is because the registration of a trademark could be granted despite the prior existence of copyrights, and vice versa, which could result in litigation due to the granting of different rights over the same object.
Under these circumstances, the trademark and copyright owners of the object could face a dispute to determine who has a better right over the object. If it is true that the earlier right will prevail over the one obtained later, it is also true that this issue must be resolved through a litigation process, which has impacted the enforcement of IP rights.
Infringers and counterfeiters provide an example of this, as they have taken advantage in bad faith of this legal shortcoming by obtaining copyrights over the sign protected by a mark, and vice versa, with the aim of excusing their illegal behaviour.
As the IMPI is not obliged to verify prior copyrights, and the National Institute of Authors’ Rights is not obliged to review the prior existence of trademark registrations, the granting of two different rights such as a trademark and a copyright over the same object to different owners could result relatively easily.
This situation seriously affects IP holders in relation to counterfeiting. Although rights holders are interested in battling against counterfeiting in Mexico, they are prevented from taking the proper actions in those cases where the counterfeiter has copyright over the same object protected under a trademark. This has become a worrying situation.
"A trademark could be granted despite the prior existence of copyrights, and vice versa, which could result in litigation due to the granting of different rights over the same object."
Even when, in theory, the conditions required by the Industrial Property Law for the commission of counterfeiting are met, any criminal action would be unsuccessful given the existence of copyrights over the same object protected by a trademark.
Moreover, this legal shortcoming interferes with efforts to tackle counterfeiting that include not only legislative amendments but also the implementation of strong and targeted measures and actions by the authorities, as it stops possible action.
Without question, the lack of a duty for the IMPI to verify rights granted by the National Institute of Authors’ Rights, and vice versa, before the granting of some of the rights governed by the legislation works to the detriment of holders and prevents them from enforcing their IP rights.
Nonetheless, in cases like this, there is still a way to defend IP rights, and that is to instigate legal proceedings against the illegitimate party.
Edith López-Bautista is an attorney at Becerril, Coca & Becerril, SC. She can be contacted at: elopez@bcb.com.mx
