1 January 2011TrademarksJuan Carlos Amaro

Fighting the counterfeiters: the Mexican solution

Even though it is possible to establish an effective strategy before customs and the Attorney General’s Office for a trademark holder intending to enforce a trademark portfolio in Mexico, several changes to the law would be beneficial.

Customs

Customs has no official database to review trademark owners or licensee information. Instead, it uses an informal database containing information collected from past actions and details that some trademark owners have provided informally about their portfolios. It is crucial for IP owners to have close communications with customs authorities in order to keep them updated with any new relevant information.

It is expected that Customs will soon launch an official trademark database with the assistance of the Mexican Institute of Industrial Property, which it can consult when potentially counterfeit merchandise is detected. This official database will be part of amendments to the Customs Law that will include additional powers to seize counterfeit merchandise entering the country.

This anticipated collaboration between the two authorities should improve the efficiency of the process, giving customs immediate access to detailed information about trademark owners, licensees and their representatives. This in turn will allow rights holders and their representatives to be contacted promptly so that they can initiate appropriate legal actions.

A parallel strategy that could be considered by trademark owners is giving training to customs officers. The idea is to teach the officers about the relevant issues to be considered in each case to determine whether merchandise is genuine or not, pointing out key points of genuine merchandise, main data of importers, distributors, country of origin, etc. With such training and information, it will be easier for the officers to better identify counterfeit merchandise.

“In order to ensure efficient border measures, it is crucial that rights holders provide customs with the details of their trademark portfolio, as well as information on who can take action on their behalf, so that their representative can be contacted in sufficient time to move swiftly against counterfeit merchandise detected at the borders.”

It is important for both parties—trademark owners and authorities—to move as fast as possible, since customs cannot proceed against counterfeit goods unless the trademark owner has initiated a corresponding legal action in order to obtain seizure of the counterfeiting merchandise. Therefore, customs must be swift to contact the trademark owner, since it has limited time to detain the merchandise if a legal action is not initiated. In order to ensure efficient border measures, it is crucial that rights holders provide customs with the details of their trademark portfolio, as well as information on who can take action on their behalf, so that their representative can be contacted in sufficient time to move swiftly against counterfeit merchandise detected at the borders.

This can be achieved by filing detailed information with the customs database even though at the moment, it is an informal source of information. This is despite the product training that trademark owners conduct with the authorities.

When these actions are properly executed, it is highly probable that the trademark owner can obtain useful results in its battle against counterfeiting. However, the system can be improved further if the following actions are implemented, considering that to date, customs authorities cannot proceed against counterfeit goods unless the IP rights holders have initiated corresponding legal action (administrative or criminal) to obtain the seizure of the counterfeiting merchandise:

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