In Mexico, the authority to investigate criminal activity and indict a case is held by prosecutors within the Attorney General’s Office. IP crimes are all considered to be a federal crime. There is a Specialized IP Unit within the Mexican Attorney General’s Office. In theory, not all IP matters are managed by this unit; only the ones that are considered to be “relevant” or where the amount of damages surpasses USD 500,000. However, in June 2021 the Attorney General Commissioner ordered that all IP matters should be managed directly by the IP Unit independently of the local AG’s Offices located in each State. 

Most investigations are pursued ex parte when involving industrial property rights, except for the sale of counterfeit products in the streets. In contrast, copyright counterfeiting activities will be pursued ex officio in most cases. In any event, the authority will require that a complaint is filed in both scenarios. 

Documentary evidence to prove the existence of rights should follow the complaint. The prosecutor will order that the facility where the goods are located is investigated and that a sample is obtained. The plaintiff will be required to submit a genuine sample which will then be analyzed by an in-house expert of the AG’s Office and compared with the allegedly counterfeit product with the aim of confirming the counterfeit status of the goods. The investigation report and witnesses’ testimonies may also be presented to support the case. With all this evidence, the prosecutor may decide to apply for a search warrant to try and seize all counterfeit goods and documents as evidence. 

Once the prosecutor has enough evidence from an individual or company to prove the criminal offense and liability, he or she may indict the case. The criminal activity should be decided by a criminal judge. With the “new” accusatory criminal system there is always the possibility to apply for an Alternative Dispute Resolution Mechanism and terminate the process at an earlier stage through a settlement agreement signed by both parties. 

The criminal judicial process is formed by two investigation stages followed by the trial and resolution which may also be appealed by a Criminal Tribunal. If constitutional violations take place, the resolution in the appeal stage may be fought by an Amparo Trial. 

Criminal proceedings can be filed for the protection of trademarks, copyrights and related rights, trade secrets, appellations of origin and geographical indications. Inventions are no longer subject to criminal proceedings.

The offenses against IP rights are as follows:

The burden of proof is carried by the prosecutor who is the formal plaintiff in the criminal process. The rights holder is considered to be a victim who has the right to collaborate with the prosecutor in providing evidence. However, the last word on what evidence should be presented to the judge goes to the prosecutors.

All goods confirmed to be counterfeit should be destroyed by the authority.

In addition to the Specialized Intellectual Property Unit within the Attorney General’s Office, there is a Specialized Intellectual Property Chamber as a second instance for administrative proceedings. The Mexican Trademark Office is, in effect, the court of first instance for all non-criminal enforcement proceedings involving industrial property rights and also copyright whenever there is a commercial profit involved.

Civil actions are not available to enforce IP rights in Mexico, only to quantify damages. However, there is an administrative regime which is used to enforce various types of activities by cataloguing them as infringement. 

Laws involved in civil enforcement are the Federal Law of Industrial Property Protection, the Federal Copyright Law, the Federal Civil Code and the Federal Civil Procedure Code.

Trademark owners are granted the right of exclusive use of a trademark when obtaining a registration. The laws applied to administrative actions include the Federal Law for the Protection of Industrial Property, the copyright federal law, the administrative procedure law and the Federal Law of Contentious Administrative Proceedings.

In addition to applying for an infringement action, the rights holder may apply for an injunctive relief which includes the possibility of a seizure action, prohibition of commercialization or publicity of allegedly infringing goods, removing infringing products from circulation and even a temporary or definitive closure of the business. 

Resolution of infringement will mean that the infringer is fined. No recovery of damages may be obtained unless the rights holder initiates proceedings for claiming damages. 

An IP rights holder has access to the following remedies from civil enforcement:

• Injunction reliefs.
• Damages.
• Legal costs.

Damages deriving from the violation to IP rights will never be less than 40% of the legitimate value indicator provided by the affected owner.

To set the amount of compensation, the date on which the infringement was proven to have taken place, and, at the behest of the affected IP rights holder, any legitimate value indicator presented thereby, shall be taken into consideration, including:

• the value of infringed goods or services, calculated at market prices, or the recommended retail price;
• profits that the owner did not receive as a result of the infringement;
• profits obtained by the offender as a result of the infringement; or
• the price that the offender should have paid the owner for the granting of a license, taking into account the commercial value of the right infringed and any contractual licenses that may already have been granted.

Unfortunately, no relevant cases have been decided upon the distribution of counterfeited goods in Mexico, due to the length of IP rights protection proceedings.

Grey markets in Mexico are authorized under the exhaustion of rights principle. 

The Federal Consumer Protection Law prescribes against false advertisements that could cause consumers to mistakenly buy counterfeited goods. The General Health Law prescribes against counterfeited drugs which are subject to criminal prosecutions. The Quality Infrastructure Law and the derived quality standards from it prescribe against the offering of any goods that might affect consumers’ health and safety.

Some of the benefits and challenges of criminal versus civil/administrative enforcement are as follows:

• Criminal enforcement can grant access to dangerous areas as actions are supported by the police authorities.

• Authorization from the defendant is not required to execute a raid under a criminal action, while in an administrative proceeding there is the possibility that the defendant will oppose the seizure action and not grant access to the premises. 

• An administrative action requires posting a bond. The bond must cover the value of the goods to be seized or the possible damages that may be caused to the defendant if the injunctive relief proved unwarranted. This results in the impossibility of pursuing actions involving larger shipments.

• The administrative process is more formal and requires the intervention of the plaintiff at various stages, which results in a more costly procedure. Also, it takes longer to be decided.

• Storage costs may need to be paid in administrative actions, while products seized by the criminal authority will be taken to official government warehouses. 

• Criminal procedures require the prosecutor’s willingness to evaluate and support the action while the administrative process may be initiated at the rights holder’s convenience. 

There have not been any improved counterfeiting methods in Mexico as such. However, counterfeiters have made it harder to trace them. When it comes to importation of illegal products, they import containers full of products of all types. The number of goods of each brand will be small, to try to discourage rights holders from taking legal action. 

In addition, goods are imported by logistics companies who will hide the identities of the counterfeit goods owners. 

Counterfeit goods manufactured locally are often sold via social media or the internet or by using WhatsApp groups to offer the products. The phone numbers and bank accounts of those selling will be changed often, making it difficult to track the owners of the business. Finally, products will be shipped by courier companies, hiding the sender’s address. 

Groups of individuals owning various entities who trade with counterfeit products among these companies make it additionally complicated to get to the origin of the illegal goods. Deeper investigations conducted by prosecutors are needed to make it harder for bad actors to continue with their illegal activities. 

There has certainly been an increase in the sale of piracy through online marketplaces, websites and social networking sites. The ability to hide the identity of the seller, in addition to not needing to invest in the sale of a physical storefront and making it easier to sell the products, has increased the number of online vendors over physical stores.

For some years now we have seen products being promoted and sold through live video streams and live shopping has become increasingly popular, but we do not consider it to be a significant problem. The difficulty in tracing this type of seller is the same as for other online or social media sites. Towards this end, there are platforms that have developed efficient mechanisms for preventing the sale of counterfeit/infringing products or who have developed anti-counterfeiting programs to tackle the sale of pirated goods.

Unfortunately, we also find cases of less popular platforms where we find it difficult to obtain information, achieve the removal of unauthorized or infringing content, or impose provisional measures by the Mexican Institute of Industrial Property. This results in more costly actions for rights holders. 

“Dupe culture” and “knockoff culture” have always existed. For decades we have seen different attempts to create imitations of popular and famous branded products. We do not believe that the popularity of these trends has, as yet, significantly increased the sale of counterfeit goods in Mexico. The sale of these products comes and goes depending on the time, industry, type of good, its popularity, and so on.

No new legislation has yet been proposed or implemented to shift the responsibility to online marketplaces to ensure they are more vigilant in vetting sellers and removing counterfeit and infringing items. Mexico has kept its regulation in line with international trends and international treaties. The culture of respect for freedom of speech as opposed to violation of IP rights has prevented shifting this type of responsibility to the operators of internet sites or online marketplaces. 

However, this same trend has led to the fact that operators of online sites must at least implement notice and takedown mechanisms and collaborate with authorities whenever they are required to disclose information or evidence. 

There have not yet been any changes made for rights holders who want to take a more financially-focused approach against counterfeit sellers and networks. Unfortunately, intellectual property has not been a priority for the current government administration. Lack of resources has resulted in an increased workload and therefore difficulty in conducting deep and efficient investigations to reach entities or individuals operating businesses and determine their properties, accounts and assets. 

In the best-case scenario, rights holders will achieve the destruction of illegal products after a few years of follow-up legal actions. 

In addition, most of these businesses operate under informal schemes in which there are no accounting books or transaction records. Apparently, tax reforms should bring positive changes in the coming years, but in the meantime, the authorities still find it difficult to access this information.

The most problematic platforms operating in Mexico and offering counterfeit products are:

• Mercado Libre.
• Amazon.
• Facebook.
• Facebook Marketplace 
• Instagram.
• Shopify.
• TikTok.
• Lineo.

All of these platforms have been in the market for a while, but none of them has become more problematic than the rest. The first four have certainly remained the most problematic, while TikTok has lately begun to offer more counterfeit products. 

The 2020 amendments to the Federal Copyright Law and the Federal Criminal Code incorporated express prohibition for online counterfeiting. This was possible thanks to the implementation of several international trade agreements that impose the obligation to introduce a legal framework in this regard.

The 2020 amendments to the Federal Copyright Law have established rules for internet service providers. Such rules include exceptions for any responsibilities for the sale of counterfeited goods. A notice and takedown procedure was also incorporated with these recent amendments.

Mexico does not have specific legislation addressing the online sale of counterfeit goods; however, the Federal Law of Industrial Property Protection and the Federal Copyright Law include express provision for taking provisional measures against online markets or websites.

Intelligence is crucial when faced with an online infringer that also has a physical storefront. All information from the website should be analyzed to try to detect any links with other sites or profiles. It is always advisable to conduct test purchases and investigations to try and locate the vendor behind the website. The taking down of an infringing profile or website may allow the infringer to simply open a new profile, unless the infringer has been identified and possibly served with a cease and desist letter to show him or her that he or she has been identified and may face actual risk of legal process. Mexican authorities are generally more interested in acting against physical stores.

Domain name disputes in Mexico are decided using the World Intellectual Property Organization’s (WIPO’s) Uniform Domain Name Dispute Resolution Policy. There are no national legal provisions regarding domain name disputes.

However, provisional measures such as suspension, blockage, removal of contents or cessation of activities that may give place to infringement through digital means may be ordered by the Mexican Trademark Office.

There has been no detectable increased activity in the number of fraudulent websites in Mexico in recent years. 

It is worth highlighting that the possibility of working directly with hosts of illegal content has made it easier to fight fraudulent websites without the need to file a complaint with WIPO and enter into a longer and more costly process.

The creation of new top-level domains (TLDs) has definitively increased the possibility of creating different fraudulent websites. It only takes a few hours for a site to operate to become a profitable business for bad actors and make it more complicated for rights holders as they have to focus on multiple different sites.

Facebook Marketplace is very popular in Mexico, along with Mercado Libre and Amazon. In the last five years, social media platforms and marketplaces have agreed to collaborate with the authorities by providing information related to infringing vendors or to take down infringing posts or sales. 

So far, we have not experienced any enforcement actions associated with non-fungible tokens (NFTs).

In the past year several bills and amendment bill projects have been submitted to the Mexican Congress to regulate the use and effects of AI in Mexico. All projects aim to protect personal data, privacy, copyrights, image use of people, financial and commercial interests and consumers. Also, they try to improve the legislative aspects of cybersecurity related to AI. None of the projects have yet been enacted as enforceable laws or amendments.

There are no criteria affecting lawyers in respect of the use of AI. There are also no planned projects that might affect lawyers in respect of the use of AI.

In Mexico, we only have amendment bills and bills that could establish provisions that might impact the use of AI with respect to privacy matters.

Not applicable.

There are no laws relating to crypto technology, but the Bank of Mexico has issued administrative regulations regarding the authorization to use cryptocurrency in commercial transactions. There are several amendment bill projects which aim to implement a more robust regulatory framework for using crypto technology and to protect all transactions made through it.

The Federal Copyright Law, the Federal Law for Industrial Property Protection and the Federal Criminal Code establish the legal framework relating to the streaming of content piracy.

The above-mentioned laws allow site blocking in Mexico through injunction reliefs ordered by the MTO against specific service providers. In addition, notice and takedown processes can also be used to block any streaming that might include content piracy.

QR code abuse is not an increasing activity, but there have been cases involving this as well as other types of tactics for online phishing such as sending of fraudulent phone messages or calls, or WhatsApp messages that require accessing a fraudulent link. These types of messages offer discounts, promotions or special prices related to well-known branded products. 

The Mexican Customs Service has no power to seize suspicious products related to IP crimes or infringement. According to Mexican customs law, it is necessary that the competent authority issues a resolution ordering formal seizure of the goods. 

The same two possible remedies to enforce IP rights are applicable for border measures: administrative action and criminal action. The rights holder must initiate either of these two legal remedies. In case of an administrative action, the plaintiff will be responsible for cost of detention, seizure, government fees, travel expenses for government officials (if necessary), posting a bond and sometimes storage. 

When detaining a shipment through a criminal action, the prosecutor and government will take responsibility for the inspection, seizure, storage and destruction of counterfeit goods at their own expense. In the past, depending on budget restraints, they may sometimes ask for the plaintiff’s support in transportation or travel costs. 

In general terms, it is an efficient system. However, the lack of power for Customs to detain suspected goods on their own initiative causes a delay and sometimes may make enforcement activities difficult. Also, historically, in-transit goods and transshipments have been seized through the criminal process. As a result of a disposition from the Internal Affairs Unit within the Attorney General’s Office they now may only be seized through administrative action (which becomes costly because of the bond requisite). 

There have been no significant changes to the existing measures save for the possibility of recording trademarks with Customs and providing training seminars to government officials. Although in the past the Mexican Trademark Office (MTO) used to execute border measures, the recent law expressly incorporated this faculty (among other injunctive remedies). 

In terms of the relationship between Customs and other types of law enforcement, for border measures, Mexican Customs, the Mexican Institute of Industrial Property and the Attorney General’s Office interact constantly because the Institute and the Attorney’s Office must issue the legal order to detain the suspected counterfeited goods.

Customs authorities will provide images of suspected goods, details of the port of entry and the approximate amount of suspected goods. Names and addresses of the importer and exporter may be obtained if legal action is initiated. Other documents and information may be provided directly to the MTO or AG’s Office. 

Suspected counterfeited goods can be detained at Customs, but the related enforcement proceedings are the real mechanism for obtaining any remedy.

Constant and strong collaboration between IP rights holders and Customs allows the organization of frequent training for the identification of counterfeited goods. Such training is organized throughout the country.

Lockdowns caused by COVID-19 caused a delay in most processes, but no substantial change is expected due to the pandemic and it does not appear to have resulted in any new trends in the types of goods seized/detained.

There is currently no national intellectual property law enforcement coordination body in Mexico. It would be desirable to have such a body for coordinating and strengthening IP rights protection.

6.1 Is it possible to record IP rights in Mexico? How does the recording process work? 

Only registered trademarks may be recorded with Customs. Recording is not mandatory, but it has proven to be a good way to increase the number of alerts received from Customs. Records do not need to be renewed. They remain in force as long as the registration does. No government fees are associated with Customs recordings. 

A motion needs to be filed before the Mexican Customs Service to record the brand owner. A power of attorney for lawsuits and collections with a special clause to file criminal complaints, a list with all trademark registrations to be recorded, and written confirmation in letterheaded sheet authorizing an individual/company or law firm to manage all the processes before Mexican customs on its behalf need to be attached.

The authority will revise the information and will grant access to the Customs platform. The recording process is made directly by the applicant. As Customs record systems are directly connected with the MTO database, registration information is directly obtained from it. Licensee names, authorized importers, exporters, port of entry of authorized products or any other information which helps to identify genuine products may be recorded too.

The system designates an alphanumerical code to identify each registration once it is recorded.

6.2 Does any amount of the fine collected through the administrative action go to the rights holder?

No, as an administrative sanction, it goes directly to the government.

6.3 Are there any other type of measures, such as service of cease and desist letters? If so, how do they work?

There is no law relating to the cease and desist (C&D) procedure, but they are always a good way to put pressure on the opposing party. The letter will usually demand that the infringing goods are surrendered for destruction. It is also common practice to demand signature of an undertaking committing to cease the infringing activities. In practice, the opposing party will hardly agree to surrender the goods or sign an undertaking but most of the times will simply cease the infringement. 

C&D letters may be served in presence of a notary with the aim of attesting the sale of unauthorized goods and service of the letter. The notarial deed may be used later as evidence in case the opposing party does not comply. 

It is vital that the new president-elect, the first woman in Mexico’s history, reconsiders the need to position intellectual property as one of the pillars of the economy and source of innovation. 

The last administration stated that its anti-counterfeiting policy would be focused on directing efforts and resources towards a more thorough investigation at a manufacturing and distribution level to locate the source of the products, resulting in an increasing number of prosecutions and convictions. 

As of 2020, the number of operations related to intellectual property crimes was reduced to “zero”, a figure that has been maintained for subsequent years according to information provided by the Institute for Transparency and Access to Public Information (Instituto de Transparencia y Acceso a la Información Pública). 

In contrast, the number of investigations that reach the trial or conviction stage has remained without significant changes even though the government maintained that its efforts and resources would be aimed at strengthening this new strategy.

The markets continue to be flooded with piracy not only of luxury goods, clothing, footwear, technology, electronics, but also of consumer goods, medicines, spare parts, and other items that put people’s lives and safety at risk.

The Specialized Intellectual Property Unit does not seem to be improving. Even though the experts assigned to the Prosecutor’s Office are established as auxiliaries of the Public Prosecutor’s Office, these officials leave all responsibility in the determination of the crime. 

Instead of evolving in the investigation of crimes and resolution of cases reflecting greater preparation and training, we see resolutions showing an intention to close an investigation by any means. This is the case of resolutions where the IP Unit abstains from investigating facts involving the introduction into the country of shipments or packages with small quantities of products. 

The crime of trademark counterfeiting in its modality of introduction into the country requires the purpose of commercial speculation. The Public Prosecutor’s Office has simply concluded “from the number of products it is possible to presume that they are intended for personal use.” National legislation imposes the obligation to exhaust all lines of investigation, so that the authority must ascertain this condition through acts of investigation into the activities of the importer, background, possible previous imports, and so on.

According to different studies and international organizations such as the Organization for Economic Co-operative and the European Union Intellectual Property Office (EUIPO) in 2018 the current trend in piracy trafficking has migrated towards the sending of small consignments.

We are still waiting for the publication of the Regulations of the Federal Industrial Property Protection Law, which entered into force in 2020. Various sectors such as the private sector, academia, and the authorities themselves worked together to submit proposals, but to date, the publication of this instrument has not been given the importance it deserves. 

On the contrary, the number of matters in backlog by the authorities, especially in the Mexican Institute of Industrial Property continues to rise, resulting in high costs, legal fees, storage and increasingly in a lack of legal certainty for right holders in an environment that affects investment, the environment of security and rule of law. 

Government offices

Mexican Trademark Office

The Mexican Trademark Office have an online trademark database and files. Official public documents can be seen through their website (www.gob.mx/impi).

Mexican Customs Service

General information for the customs recording process, points of contact and general operation rules can be found on the Mexican Customs Service’s website (www.anam.gob.mx).

General Attorney’s Office

General information can be accessed through the General Attorney’s Office website (www.gob.mx/fgr). 

Private organizations

American Chamber of Commerce/Mexico

The American Chamber of Commerce’s Mexico office has a Special Committee for Intellectual Property. Several activities destined to promote IP are developed by members. These activities include training activities and lobbying (www.amcham.org.mx). 

Confederation of Industrial Chambers of the United Mexican States (CONAMIN)

CONAMIN is the main organization representing the different industrial sectors and activities for the economic development of Mexico (www.concamin.org.mx).

Motion Picture Association Latin America

The Motion Picture Association Latin America serves as an advocate for the major international producers and distributors of movies, television and streaming programming in Mexico (www.mpa-americalatina.org).

Mexican Centre for the Protection and Promotion of Copyright (CEMPRO) 

CEMPRO is a non-profit collective management society of public interest, which protects and represents the rights of authors and editors (www.cempro.org.mx).

Mexican Association of Phonogram Producers (AMPROFON)

AMPROFON is a trade association of phonographic companies that represent more than 70% of the market in Mexico (www.amprofon.com.mx).