Mexico: A guide to Mexico’s anti-counterfeiting law

Trademark counterfeiting is regulated by the Mexican Federal Law on the Protection of Industrial Property, as follows:

Art. 402. The following acts constitute crimes.

I. Counterfeiting trademarks with the intention of commercial speculation. For the effects of this law, counterfeiting will be understood as the act of using an identical mark or in such a manner that it cannot be distinguished in its essential aspects with a previously registered mark or one protected by this law, without the authorisation of its legitimate owner or its licensee, to falsely represent a good or service as original or authentic. To prove that it has been counterfeit, it will be sufficient if the mark is used identically or in such a manner that it cannot be distinguished in its essential aspects, as depicted in the trademark registration certificate, or in its case, in the resolution that estimates or declares its notoriety or fame;

II. Producing, storing, transporting, introducing to the country, distributing or selling, with commercial speculation purposes, objects that bear counterfeits of marks, as well as supplying or providing in any manner, knowingly, materials destined to produce objects bearing such counterfeits.

Criminal procedure (accusatorial/ adversarial system):

Trademark counterfeiting is investigated and prosecuted ex parte.

A criminal complaint shall be filed before the Special Unit in Charge of the Investigation of Copyright and Industrial Property Crimes (UEIDDAPI).

The UEIDDAPI will request that the Mexican Institute of Industrial Property (MIIP) proves the ownership of the trademark registration being counterfeited, and will grant a term to carry out an inspection in the premises of the presumed counterfeiter to seize all merchandise bearing the trademark of interest, serving the alleged counterfeiter of the criminal accusations against him/her.

"Trademark counterfeiting in Mexico represents huge revenues for crime organisations, to the extent that they’re comparable to those obtained in the narcotics industry."

Since this type of crime is considered a felony, the presumed counterfeiter will be held detained during the prosecution of the criminal procedure.

Once this is done, the UEIDDAPI will request the assistance of an official expert witness, in order to determine if the goods seized in possession of the presumed counterfeiter are considered counterfeit goods.

Furthermore, the UEIDDAPI will have to determine if all the elements of the corpus delicti have been integrated. If so, then the UEIDDAPI will request the assistance of the federal criminal district judge (control judge) to issue a resolution, mentioning which criminal penalties are incurred by the alleged counterfeiter.

The trial shall be carried out before a federal criminal district judge, who is different from the control judge that ordered the initiation of the trial, performing all the necessary actions and providing the alleged counterfeiter the opportunity to be aware of everything and the right of defence. The judge shall issue a resolution within two years.

The above resolutions may be appealed by the alleged counterfeiter before a federal criminal district judge, and this decision may be challenged by a constitutional proceeding (Amparo).

Counterfeit crimes may be punished through:

a) Imprisonment of three to ten years and a fine ranging between $12,000 and $2,900,000.

b) Imprisonment of two to six years and a fine ranging between $6,000 and $600,000 for individuals who sell to any final consumer in a public place, with ill intentions or with commercial speculation purposes, objects that bear counterfeit goods protected by MIPL.

c) If the sale is carried out in a commercial establishment, or in an organised or permanent form; imprisonment for three to ten years and a fine of between $12,000 and $1,450,000.

The aggrieved party is entitled to compensation for material damages, which in no case shall be less than 40% of the indicator of the legitimate value submitted by the affected owner.

Trademark counterfeiting in Mexico represents huge revenues for crime organisations, to the extent that they’re comparable to those obtained in the narcotics industry.

Sebastian Suarez Venturo is of counsel at BC&B. He can be contacted at: ssuarez@bcb.com.mx