RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/188
27 June 2000
(00-2634)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  Spanish
REVIEW OF LEGISLATION
Responses from Mexico to Questions Posed by Australia, Japan and the United States
By means of communications from the Permanent Mission of Mexico, dated 16 June 2000,
the Secretariat has received copies of the following responses to questions posed by Australia;  Japan;and the United States.
_______________
AUSTRALIA
A. C
OPYRIGHT
1. Are there any specific exceptions to copyright under the law of Mexico to allow use of
copyright material by third parties for permitted purposes (such as research, education, fair useor fair dealing?)  Are there any significant judici al decisions with bearing on this issue?  Are
there any specific rules or findings concerning exceptions or limitations to copyright protection
of computer software?
The Federal Law on Copyright, Title VI, merely establishes the limitations to copyright and
related rights, as set out below:
Chapter I.  Limitation on the grounds of public interest
Article 147.  The public interest is considered to be served by the publication or translation of
literary or artistic works necessary for the promotion of national science, culture and education.
Where it is not possible to obtain the consent of the holder of the corresponding proprietary rightsthrough payment of compensatory remuneration, the Federal Executive, through the Ministry of
Education, of its own motion or at the request of a party, may use the above-mentioned publication or
translation.  The foregoing shall be without prejudice to the international treaties on copyright and
related rights entered into and ratified by Mexico.
Chapter II.  Limitations on proprietary rights.
Article 148.  Previously published literary and artistic works may be used without
authorization by the proprietary right holder and without remuneration, provided that the normal
exploitation of the work is not affected, and as long as the source is cited in every case and the work isnot altered, but only in the following cases:
1. Citation of texts, provided that the quantity used cannot be considered as a simulated
and substantial reproduction of the content of the work.IP/C/W/188
Page 2
2. Reproduction of articles, photographs, illustrations and comments relating to topical
events, published in the press or disseminated by radio or television or any other
broadcasting medium, if this has not been expressly prohibited by the right holder.
3. Reproduction of parts of the work for purposes of criticism and scientific, literary or
artistic research.
4. Reproduction once only, and in a single copy, of a literary or artistic work, for the
personal or private use of the person making the reproduction, and for non-profit
purposes.
Legal persons may not avail themselves of the provisions of this subparagraph except
in the case of an educational or research institution or one not engaged in businessactivities.
5. Reproduction of a single copy on the part of an archive or library, for reasons of
security and preservation, where the work is out of stock, out of print or in danger of
going out of print.
6. Reproduction for use as evidence in judicial or administrative proceedings.
7. Reproduction, communication and distribu tion, by means of drawings, paintings,
photographs and audiovisual procedures, of works visible in public places.
8. Article 149.  The following may be effected without authorization:
I. The use of literary and artistic works in shops or establishments open to the
public, which deal in copies of such works, provided that there are no admissioncharges and that such use does not go beyond the place where the sale is effected and
is for the sole purpose of promoting the sale of copies of the works.
Chapter III.  Public domainArticle 152.  Works in the public domain may be freely used by any person, subject only to
the restriction of respect for the moral rights of the respective authors.
Article 153.  Free use may be made of the work of an anonymous author as long as the latter
does not make himself/herself known, or no proprietary right holder has been identified.
There have been no significant judicial decisions relating to this issue.The Federal Copyright Law provides for no exceptions or limitations to copyright protection
of computer software.
2. To what extent does current copyrigh t protection in Mexico cover the use and
dissemination of copyright works on digital ne tworks such as the Internet?  Are there any
specific provisions in copyright law concerning the digital on-line environment, and are there
any significant judicial or administrative  decisions with bearing on this issue?
Article 111 of the Federal Copyright Law provides for the protection of electronically
produced programs containing visual, sound, three-di mensional or animated elements, in respect of
their original content.
Article 112 prohibits the importation, manufacture, distribution and utilization of devices or
the provision of services designed to eliminate the technical protection of computer programs orIP/C/W/188
Page 3
transmissions through the radio frequency spectrum and telecommunication networks and of
programs containing electronic elements referred to in the preceding Article.
(a) Article 113 provides for the protection of works and performances transmitted by
electronic means through the radio frequency spectrum and telecommunication
networks and the result achieved by such transmission.
Moreover, Article 114 states that the transmission of works protected under the Federal
Copyright Law by means of cable, radio waves, satellite and the like, must be in conformity with
Mexican legislation and in every instance and at all times satisfy the regulations on the subject.
B. T RADEMARKS AND GEOGRAPHICAL INDICATIONS
3. Are there any specific provisions in Mexican  laws and regulations, on any significant
judicial decisions, with bearing on the use of tr ademarks or geographical indications on digital
networks such as the Internet?  Are there any relevant decisions or other legal provisions
concerning the relationship between Internet domain names and trademarks or geographical
indications?
No, there are no specific provisions in the applicable laws and regulations, since owing to the
nature of digital networks and their relationship with these legal topics, there are to date no relevant
judicial decisions on the subject.
C. C ONTROL OF ANTI -COMPETITIVE PRACTICES
10. Does Mexican law provide for any specific measures concerning practices that constitute
an abuse of intellectual property rights?  Are there any applicable court decisions or other legal
or administrative guidelines?
Yes, Article 129 of the Industrial Property Law (LPI) refers to those cases where the use of a
mark, whether registered or unregistered, may alter the dynamics of trade usage, giving rise tomonopolistic practices, or hinder the production and distribution of products.  The same Article lays
down the exceptions under which the public interest, where applicable, takes precedence over
individual interests.
Subparagraph I deals with the existence of monopolistic practices.  In this connection, it is
worth pointing out that Mexico's Federal Commission on Economic Competition is the authority
responsible for enforcing the Federal Law on Economic Competition, the purpose of which is toprotect the competitive process and freedom of competition by preventing and eliminating
monopolies, monopolistic practices and other restrictions on the efficient working of markets in goods
and services.  The issuance by the Commission of a declaration concerning the existence of
monopolistic practices, based on Articles 9 and 10 of the Federal Economic Competition Law
(LFCE), constitutes a condition for the applicability of this subparagraph.
Subparagraph II refers to situations where the use of a mark implies no unlawful trading
practice but does imply the inefficient distribution, production or marketing of goods and services.
Finally, subparagraph III refers to national emergencies.
One of the objectives of the Industrial Property Law is to prevent infringements of the law,
including those that constitute unfair competition and are related to the subject-matter regulated, and
to establish the corresponding sanctions and penalties.
In this connection, subparagraph I of Article 213 of the LPI lays down penalties for acts
contrary to fair use or good practice in the industry, trade or services, which involve unfairIP/C/W/188
Page 4
competition and are related to the subject-matter governed by the Law, this being a means of
sanctioning possible abuses of intellectual property rights.
There are no relevant judicial decisions concerning the abuse of intellectual property rights.Lastly, it should be pointed out that the legal system in Mexico, a country of
Roman/Germanic tradition, consists of a legal corpus made up of laws, decrees or regulations
promulgated by the legislature or the executive, unlike countries governed by the system of common
law which is based on decisions handed down by judges, i.e. case law.  Consequently, the action taken
by the judicial or administrative authorities is conditional on the existence of a legal hypothesis set
forth in a law predating the performance of the act.
JAPAN
A. 
COPYRIGHT
1. Please explain how the protection is provi ded for works, phonograms, performances and
broadcasts from other WTO Members under the Law on Copyright and Neighbouring Rightsof Mexico (hereinafter referred to as "Copyr ight and Neighbouring Rights Law").  Please
describe the provisions of the Copyright and Neighbouring Rights Law which provide for the
national treatment and most-favoured-nation treatment as required by Articles 3 and 4 of the
TRIPS Agreement as well as Article 9.1 of the Agreement which incorporates Article 5.1 of the
Bern Convention.
Article 7 of the Federal Copyright Law provides that foreign authors or right holders and their
successors in title shall enjoy the same rights as nationals under the terms of the Law in question and
of the international treaties on copyright and related rights entered into and ratified by Mexico.
In addition, Article 8 of the aforementioned Law states that performers, publishers, producers
of phonograms or videograms and broadcasting organizations which have effected outside the
national territory the first fixation of their performances, their publications, the first fixation of the
sounds of such performances or of the images of their videograms or the communication of their
broadcasts, respectively, shall enjoy the protection afforded by the law and by international treaties on
copyright and related rights entered into and ratified by Mexico.
The Federal Copyright Law contains no prov ision on the most-favoured-nation clause.
2. Please explain exceptions or exempt ions of the national treatment and
most-favoured-nation treatment under the Copyrigh t and Neighbouring Rights Law, if any, as
permitted in Article 3 and 4 of the TRIPS Agreement.
The Federal Copyright Law contains no provisions on the exceptions provided for in
Articles 3 and 4 of the TRIPS Agreement relating to national treatment and most-favoured-nation
treatment.
3. Please explain whether and how Mexico pr ovides retroactive protection to works,
phonograms, performances from other WTO Members, as required by Articles 9.1, 14.6 and
70.2 of the TRIPS Agreement which apply, mutatis mutandis, Article 18 of the Bern
Convention.  Please indicate the date to which su ch protection extends back with respect to each
category of subject-matter.
The Federal Copyright Law contains no provision expressly relating to retroactive protection
for works, phonograms and performances from other WTO Members.IP/C/W/188
Page 5
4. Please explain whether protection of "computer programs" under the Copyright and
Neighbouring Rights Law covers computer programs in both source and object code, as
required by Article 10.1 of the TRIPS Agreement.  Are those computer programs protected as
literary works in accordance with Article 2.1 of the Bern Convention?
The protection of computer programs under the Federal Copyright Law covers both operating
and application programs, whether in source code or object code (Article 102).
Likewise, computer programs are protected by the Federal Copyright Law under the same
terms as literary works.
5. Please clarify whether "database" under the Copyright and Neighbouring Rights Law
includes compilation of data in machine-readab le form.  Please explain how the Law complies
with Article 10.2 of the TRIPS Agreement in this respect.
Article 108 of the Federal Copyright Law states that databases or other material, whether in
machine-readable or other form, which by reason of the selection or arrangement of their contents
constitute intellectual creations, shall be protected as compilations.
6. Please explain the term of protection of a work, such as a work by a body corporate,
under the Copyright and Neighbouring Rights Law, as required by Article 12 of the TRIPS
Agreement.
The Federal Copyright Law establishes no specific term of protection for collective works by
a body corporate, but use may be made of the term provided for precisely in Article 12 of the TRIPS
Agreement, as well as the term provided for in the Federal Copyright Law in respect of individual
works.
7. Please explain how Articles 17 and 151 of the Federal Law on Copyright of Mexico
comply with Article 9.2 of the Bern Convention  and Article 13 of the TRIPS Agreement, which
require limitations and exceptions to exclusive rights to be limited to certain special cases which
do not conflict with a normal exploitation of the works and do not unreasonably prejudice the
legitimate interest of the right holder.
Article 17 of the Federal Copyright Law is not inconsistent with Article 9.2 of the
Bern Convention, inasmuch as Article 17 refers to the normal exploitation of the work.
At the same time, Mexico complies with the provisions of Article 9.2 of the Bern  Convention
and Article 13 of the TRIPS Agreement by virtue  of Article 148, subparagraph IV, of the Federal
Copyright Law, which permits the reproduction once only, and in a single copy, of a literary or artisticwork for personal and private use by the person making the reproduction and for non-profit purposes.
8. Please explain how Article 153 of the Federal Law on Copyright of Mexico complies
with Article 13 of the TRIPS Agreement whic h requires that limitations and exceptions to
exclusive rights confined to certain specia l cases which do not conflict with a normal
exploitation of the work and do not unreasonably prejudice the legitimate interests of the right
holder.
Article 153 is not inconsistent with Article 13 of the TRIPS Agreement, since the work of an
anonymous author may be used freely on condition that the latter does not make himself/herselfknown or that no pecuniary right holder has been identified.IP/C/W/188
Page 6
B. PATENTS
9. Please explain how the provisions of Arti cle 213 (XI), (XII) and (XIV) of the Mexican
Industrial Property Law expressly comply with Article 28 of the TRIPS Agreement which
stipulates exclusives rights to prevent third parties from the act of importing a patented product
or a product obtained by a patented process.
Both Article 28 (Rights Conferred) of the Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS) and Article 25 of the Industrial Property Law (LPI) refer to the
same hypothesis, which is designed to protect the ex clusive rights of the patent owner, authorizing the
latter to prevent third parties not having the owner's consent from carrying out any of the acts referred
to in those provisions.
The right to prevent the import of a patented product or a product obtained by a patented
process, as provided in Article 25 of the LPI, is closely related to the provisions contained in
Article 213, subparagraphs XI to XV, which provide for possible cases of administrative infringement
as follows:
"Article 213.   The following shall constitute administrative infringements:
…XI. Manufacturing or developing products protected by a patent or by a utility model or
industrial design registration, without the c onsent of the owner thereof or without the
necessary licence;
XII. offering for sale or placing on the market products protected by a patent or by a utility
model or industrial design registration, in the knowledge that they were manufactured
or developed without the consent of the patent or registration owner or without thenecessary licence;
XIII. using patented processes without the consent of the patent owner or without the
necessary licence;
XIV. offering for sale or placing on the market products that are the result of the use of
patented processes, in the knowledge that they were used without the consent of thepatent owner or the person holding a licence of use;
…
10. Please explain how Article 34 of the TRIPS Agreement, regarding the shift in the
burden of proof in civil proceedings for patent infringement, is implemented in Mexican
legislation.
Article 192 bis 1 of the LPI provides that, where the subject-matter of the patent is a process
for obtaining a product, the alleged infringer, in  the procedure for the administrative declaration of
infringement, must prove that the product was manufactured under a process different from the
patented process, where:
(1) The product obtained by the patented process is new;  and
(2) there is a substantial likelihood that the product was manufactured by means of the
patented process and the patent owner has been unable to determine the process
actually used, despite having attempted to do so.IP/C/W/188
Page 7
It should be pointed out that both these criteria have to be satisfied in order for there to be a
reversal of the burden of proof.
This exception only applies in the administrative field, specifically in cases of infringement of
patented processes.
C. ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS
11. Please indicate the remedies with the judicial authorities order regarding intellectual
property rights, including injunctions, damages, expenses, destruction or disposal of infringing
goods, materials or implements for their producti on.  Please explain the criteria for and the way
of calculation to decide the amount of the damages which judicial authorities order to the
person who infringes intell ectual property rights to pay to the right holder.
Industrial property
Pursuant to Articles 49 and 50.8 of the Agreement on Trade-Related Aspects of Intellectual
Property Rights, in administrative declaration proceedings relating to the violation of any of the rights
protected by the Industrial Property Law (LPI), the Mexican Industrial Property Institute may take thefollowing measures:
(a) Order the withdrawal from circulation or prevent the distribution of goods that
infringe rights protected by the LPI;
(b) order the withdrawal from circulation of:
• Articles, manufactured or used illegally;
• articles, packaging, packing, containers, stationery, advertising material and
the like that infringe any of the rights protected by the LPI;
• signs, labelling, stationery and the like that infringe any of the rights
protected by the LPI;  and
• tools or implements intended or used for the manufacture or production of
any of the items specified in the preceding subparagraphs.
(c) prohibit, with immediate effect, the marketing or use of products that infringe any of
the rights protected by the LPI;
(d) order the seizure of goods;(e) order the alleged infringer or third parties to suspend or discontinue acts constituting
a violation of the provisions of the LPI;  and
(f) order suspension of service provision or closure of the establishment, if the measures
provided for in the preceding subparagraphs are insufficient to prevent or avert the
violation of the rights protected by the LPI.
If the product or service is on the market, traders or service providers shall be required to
refrain from disposing of the product or providing the service from the date on which they are notified
of the ruling.IP/C/W/188
Page 8
Producers, manufacturers and importers shall be under the same obligation, as shall their
distributors, who shall be responsible for recovering forthwith any products already on the market.
Article 199 bis of the Industrial Property Law is applicable.
• Orders for damages, including recovery of profits, and expenses, including lawyers'
fees
Irrespective of the judicial or administrative action that may lie, a person whose intellectual
property rights have been violated may claim from the perpetrator or perpetrators compensation for
material injury and the payment of damages in respect of such violation, which in no case may be less
than 40 per cent of the public selling price of each product or service.
Articles 221 bis and 226 of the Industrial Property Law are applicable.
• Destruction or other disposal, outside the channels of commerce, of infringing goods
and the materials and implements used for their production
If the final ruling on the merits of the dispute finds that there has been an administrative
infringement, the authority shall decide, after hearing the parties, on the destination of the confiscatedgoods, and in doing so shall conform to the following rules:
I. It shall place the confiscated goods at the disposal of the competent judicial authority
as soon as it receives notice that the proc eedings for compensation for material injury
or payment of damages have been initiated.
II. It shall place them at the disposal of any person specified by the award where the
option of arbitration proceedings has been selected.
III. Where appropriate, it shall proceed in accordance with the terms of the agreement
reached between the aggrieved owner and the alleged infringer regarding the
destination of the goods.
IV. In cases not covered by the foregoing subparagraphs, each of the parties concerned
shall submit in writing, within five days of the date on which they are given sightthereof, their proposals concerning the destination of the goods that have been
confiscated or withdrawn from circulation, or the marketing of which has been
prohibited.
V. It shall give the parties sight of the proposals submitted, so that they may decide by
common consent on the destination of the said goods and submit their decision to the
Institute in writing within five days following the date on which they were givensight.
VI. If the parties fail to set out in writing their agreement on the destination of the goods
within the period allowed, or if none of the situations referred to in subparagraphs I to
III above has arisen within a period of 90 days from the issue of the final decision, theGoverning Board of the Institute may decide:
(a) To donate the goods to departments and agencies of the Federal Public
Administration, federated states, municipali ties, or public, charitable or social
security institutions, provided that the public interest is not affected;  or
(b) to destroy the goods.IP/C/W/188
Page 9
Article 212 bis 2 of the Industrial Property Law is applicable.
• Other Measures
(a) Fines
(b) Closures
(c) Imprisonment if an offence has been committed
Articles 214 and 218 of the Industrial Property Law are applicable.Judicial decisions may require a party to the pro ceedings or a third party to act in a particular
manner, i.e. to engage in or refrain from a specified form of conduct.
Articles 220 and 379 to 399 of the Federal Code of Civil Procedure are applicable.
• Orders for damages, including recovery of profits, and expenses, including lawyers'
fees
If the court awards damages, it shall fix the amount in monetary terms or at least establish the
basis on which payment must be made.  The judgement may include an order to pay court costs and
expenses.
Articles 7 to 11 of the Federal Code of Civil Procedure are applicable.
• Destruction or other disposal, outside the channels of commerce, of infringing goods
and the materials and implements used for their production
The court may include in its judgment an order for performance of an act which may consist,
inter alia , in the destruction of goods, and it may specify a reasonable period for compliance.
Article 420 of the Federal Code of Civil Procedure is applicable.
• Other measures
Taking into account the nature of the case, the competent court shall deliver its judgement and
may, under its own responsibility, adopt any measure it considers appropriate, as well as any proposal
put forward by the parties, provided that it is consistent with the law.
Articles 345 and 353 of the Federal Code of Civil Procedure are applicable.
12. Please indicate titles of laws and regulations and their provisions in which the
suspension of the release of counterfeit tradem ark or pirated copyright goods is prescribed, as
stipulated in Article 51 of the TRIPS Agreement.  Please explain types of intellectual property
rights about which the suspension can be ma de upon an application by a right holder.
The applicable provisions are contained in the Industrial Property Law (Articles 199 bis,
199 bis 1 to bis 8) and the Customs Law (Articles 144, 148 and 149).
In this connection, anyone requesting border measures with respect to goods suspected of
infringing an intellectual property right must submit a written application to the Mexican Industrial
Property Institute or to the competent judicial authority, showing that he/she is the holder of theIP/C/W/188
Page 10
allegedly infringed right, post security sufficie nt to cover any damages and provide information
sufficient to identify the goods or services allegedly infringing an intellectual property right, the
foregoing pursuant to Article 199 bis 1 of the LPI and Article 148 of the Customs Law.
Once the above-mentioned requirements have been met, the Mexican Industrial Property
Institute or the competent judicial authority shall no tify the ruling to the customs authorities in order
for the latter to suspend the release into free circul ation of the allegedly infringing goods.  The ruling
must meet the requirements laid down in Article 149 of the Customs Law:
1. The name of the importer;2. a detailed description  of the goods;
3. the customs office understood to be the one through which the goods are to enter;
4. the estimated time-scale for entry of the goods, which shall not exceed 15 days;5. the warehouse in which the goods are to be placed at the disposal of the competent
authority, which must be located within the territorial jurisdiction of the
corresponding customs office;  and
6. the designation or express acceptance of the depositary.
When the customs authority has carried out the order issued by the competent administrative
or judicial authority, it shall inform the latter that  the goods have been detained and place them at the
disposal of the authority concerned in the warehouse designated by the latter.  In so doing, the
customs authority shall make a detailed report which must include the following particulars:
1. The identity of the authority conducting the proceedings;
2. the order suspending release of the goods from abroad into free circulation and the
notification thereof made to the interested party;
3. the description, nature and other characteristics of the goods;  and
4. the place in which the goods are to be held at the disposal of the competent authority
(Article 148 of the Customs Law).
Any person affected by implementation of these measures must reply within ten days during
which they may exercise their entitlement to submit evidence, pleas and/or grounds of defence) to therequest for an administrative declaration of infri ngement or, where appropriate, to the complaint
against them and may post an indemnity bond sufficient to cover any damage or injury that might be
caused by the lifting of the measure.  Articles 192 bis 1 and 192 bis 2 of the Industrial Property Law
are applied in such cases
The competent authority must give a final ruling on the border measures procedure and shall
place the security or indemnity bond at the disposal of the party in whose favour it has ruled.
(Article 199 bis 3 to 199 bis 8 of the LPI.)
Articles 199 bis and 199 bis 1 to bis 8 of the Industrial Property Law and Articles 148 and
149 of the Customs Law are applicable.IP/C/W/188
Page 11
13. Please explain the kind and amounts of crim inal penalties including imprisonment and
fines regarding intellectual property rights.  In  particular, are the crimes persecuted only when
the injured party has made a formal accusation?  Please also explain whether penalties are
consistent with Article  61 of the TRIPS Agreement which requires the penalties to be sufficient
to provide a deterrent, consistently with the level of penalties applied for crimes of a
corresponding gravity.
• Imprisonment and monetary fines
Industrial property
Article 223 of the Industrial Property Law defines the following as offences:
I. Repeating the conduct provided for in Article 213, subparagraphs II to XXII, of the
Industrial Property Law once the first administrative penalty imposed on that account
has become final;
II. counterfeiting marks protected by the LPI with fraudulent intent and for purposes of
commercial speculation;
III. producing, storing, transporting, introducing into the country, distributing or selling,
with fraudulent intent and for purposes of commercial speculation, articles displaying
counterfeits of marks protected by the LPI, as well as knowingly contributing or
providing, in any way, raw materials or inputs intended for the production of articlesdisplaying counterfeits of marks protected by the LPI;
IV. revealing to a third party an industrial secret that is known by virtue of employment,
position, responsibilities, exercise of a profession or business relations or as a result
of the granting of a licence for its use, without the consent of the keeper of theindustrial secret, after having been advised of its confidential nature, for the purpose
of procuring an economic benefit for oneself or for the third party, or for the purpose
of causing injury to the keeper of the secret;
V. appropriating an industrial secret without entitlement and without the consent of the
keeper or authorized user, in order to use it or reveal it to a third party, for the
purpose of procuring an economic benefit for oneself or for the said third party, or for
the purpose of causing injury to the keeper of the industrial secret or the authorized
user thereof;  and
VI. using information inherent in an industrial secret, that is known by virtue of
employment, responsibilities, position, exercise of a profession or business relations,without the consent of the keeper or authorized user, or that has been revealed by a
third party, in the knowledge that the said third party was so acting without the
consent of the keeper of the industrial secret or the authorized user thereof, for the
purpose of procuring an economic benefit or causing injury to the keeper of the
industrial secret or the authorized user thereof.
In addition, Article 223 bis provides for a prison sentence of two to six years and a fine of 100
to 10,000 days of the general minimum wage in force in the Federal District to be imposed on anyone
who, with fraudulent intent and for purposes of commercial speculation, sells items displaying
counterfeits of marks protected by the LPI to any end-consumer on the street or in a public place.
A prison sentence of two to six years and a fine in the amount of 100 to 10,000 days of the
general minimum daily wage in force in the Federal District shall be imposed on anyone committing
an offence under subparagraphs I, IV, V or VI of Article 223, and in the case of subparagraphs II orIP/C/W/188
Page 12
III of the same Article 223, a prison sentence of three to ten years and a fine of 2,000 to 20,000 days
of the general minimum wage in force in the Federal District shall be imposed.  (Article 224 of the
Industrial Property Law.)
The above-mentioned offences are prosecuted at the request of the injured party.
Copyright
In the area of copyright and related rights, offences are defined and penalties established in
Title 26 of the Federal Criminal Code.
Articles 424 to 427 of the Code are applicable.
Article 424.  The following shall be liable to six years' imprisonment and a 300 to 3,000 day
fine:
1. Anyone who speculates in any way with  the free textbooks distributed by the
Ministry of Education;
2. any publisher, producer or recording company that knowingly produces more copies
of a work protected by the Federal Copyright Law than authorized by the right
holder;  and
3. anyone who, fraudulently, for financial gain and without appropriate authorization,
uses works protected by the Federal Copyright Law.
Article 424 bis.  The following shall be liable to three to ten years' imprisonment and a 2,000
to 20,000 day fine:
Anyone who, fraudulently, on a commercial scale and without the authorization required
under the Federal Copyright Law from the holder of the copyright or related rights, produces,
reproduces, introduces into the country, stores, transport, distributes, sells or rents out copies
of works, phonograms, videograms or books protected by the said Law;
The same penalty shall be imposed on anyone w ho knowingly contributes or provides, in any
way, raw materials or inputs intended for the production or reproduction of works,
phonograms, videograms or books referred to in the preceding paragraph or fraudulently uses,
on a commercial scale and without appropriate authorization, works protected by the above-
mentioned Law;  or
Anyone who manufactures, for financial gain, a device or system designed to deactivate the
electronic protection devices of a computer program.
Article 424 ter.  Anyone fraudulently selling to an end-consumer, on the street or in a public
place, for purposes of commercial speculation, copies of the works, phonograms, videograms orbooks mentioned in the first subparagraph of the preceding article shall be liable to imprisonment for
six months to six years and a 5,000 to 30,000 day fine.
If the copies are sold in commercial establishments or in an organized or continuing fashion,
the sale shall be subject to the provisions of Article 424 bis of this Code.
Article 426.  The following shall be liable to imprisonment for six months to two years or a
300 to 3,000 day fine:IP/C/W/188
Page 13
Anyone who manufactures, imports, sells or rents out a device or system for decoding an
encoded programme-carrying satellite signal, without authorization from the legitimate
distributor of that signal;  and
anyone who, for financial gain, carries out any act for the purpose of decoding an encoded
programme-carrying satellite signal, without authorization from the legitimate distributor ofthe signal.
Article 427.  Anyone who knowingly publishes a work substituting the name of the author
with another name shall be liable to imprisonment for six months to two years or a 300 to 3,000 day
fine.
It is important to note that all copyright offences are prosecuted at the request of the injured
party, except in the case of speculation with free textbooks, referred to in subparagraph 1 of
Article 424, which is prosecuted ex officio, under the terms of Article 429 of the Code.
All the penalties referred to above are fully consistent with Article 61 of the
TRIPS Agreement, insofar as they constitute a sufficient deterrent.
UNITED STATES
A. 
GENERAL
1. With respect to each form of intellectual  property covered by Part II of the TRIPS
Agreement, including plant variety protection, please explain the manner in which the laws of
Mexico ensure that nationals of other WTO Me mbers receive national treatment and most-
favoured-nation treatment as required by Articles 3 and 4 of the TRIPS Agreement.
Copyright
The application of national treatment to the nationals of other WTO Member States is ensured
by Article 7 of the Federal Copyright Law, which provides that foreign authors or right holders and
their successors in title shall enjoy the same rights as nationals, under the terms of the said Law and of
the international treaties on copyright and related rights entered into and ratified by Mexico.
Plant varieties
Article 7 of the Regulations to the Law on Plant Varieties provides that protection for the
rights of foreign breeders shall be granted pursuant to the provisions of the Law, the regulation and
the international treaties or agreements entered into by the United Mexican States.
Moreover, the above-mentioned Article states that the corresponding authority may refuse the
registration of plant varieties to nationals of other countries where no international treaty or agreement
exists with the country in question and the latter does not grant reciprocity to Mexican breeders.
Inventions and distinctive signs
Article 1 of the Industrial Property Law states that the provisions of the Law are public policy
provisions enforceable throughout the Republic, without prejudice to the provisions of the
international treaties to which Mexico is party.IP/C/W/188
Page 14
B. COPYRIGHT AND RELATED RIGHTS
2. Please explain, and clarify, Article 133 of Mexico's Copyright Law, which provides that,
once a phonogram has been exploited commercially "neither the owner of the economic rights
nor the performers nor the phonogram producers may object to its [the phonogram's] direct
communication to the public, provided that the persons using it for profit-making purposes
make the corresponding payment to them".  In addition, please indicate how the provisions ofArticle 133 comply with Article 11 bis of the Bern Convention, incorporated by Article 9 of the
TRIPS Agreement.
Article 133 of the Federal Copyright Law is not inconsistent with Article 11 bis of the Bern
Convention, since the former refers to related rights and the latter to copyright.
3. Please explain, and clarify, how Article 198 of Mexico's Copyright Law, which permits
reciprocity for the collection of royalties for foreign authors, compli es with the national
treatment obligations of the Bern Co nvention and with TRIPS Article 3.
Article 198 is not inconsistent with the nati onal treatment provided for in both the Bern
Convention and the TRIPS Agreement since the Article in question refers specifically to treatmentinvolving collective management companies.
C. 
TRADEMARKS
4. Section 90.XV of Mexico's Industrial Property Law, as published in English in the
June 1998 issue of WIPO's Intellectual Property Laws and Treaties, states that "three-
dimensional names, figures or shapes identical or  similar to a mark that the Institute considers
well known in Mexico, applied to any product or service", are not registrable as a mark.  Is the
prohibition for registration truly limited to "t hree-dimensional" names, figures or shapes and,
if so, please explain why the prohibition against registration is so limited.
First of all, it should be pointed out that the English translation cited in this question
concerning Article 90, subparagraph XV of the Industrial Property Law is inaccurate since a literal
translation into Spanish would read:  " nombres, figuras o formas tr idimensionales idénticos o
similares a una marca que el Instituto estime notoriamente conocida en México, para ser aplicados a
cualquier producto o servicio, no se registrarán como marcas ".
The actual Spanish text of subparagraph XV of the Article in question reads as follows:  " Las
denominaciones, figuras o formas tr idimensionales, iguales o semejantes a una marca que el Instituto
estime notoriamente conocida en México, para ser aplicadas a cualquier producto o servicio ".
It is clear from the above that, pursuant to Article 90, subparagraph XV of the Industrial
Property Law, the prohibition on registration in Mexico covers appellative, non-appellative, mixedand three-dimensional marks which the Institute considers well known in Mexico, to be applied to any
product or service.  In other words, it is understood that the term "appellations" ( denominaciones )
refers to the names constituted by appellative marks ( marcas nominativas );  "figures" ( figuras ) refers
to the figurative elements comprising non-appellative marks ( marcas innominadas );  combined names
and figures constitute mixed marks; and three-dimensional shapes ( formas tridimensionales )
constitute three-dimensional marks.
The ban on registration established in Article 90, subparagraph XV of the Industrial Property
Law is not limited to three-dimensional shapes.  Moreover, the concept of three-dimensionality refers
only to shapes, that is to say, such shapes as meet  the conditions of width, height and volume, and not
to appellations or figures, as stated in the question, based on the inaccurate translation into English.IP/C/W/188
Page 15
It is recommended that reference be made to the 1994 Industrial Property Law, the most
recent revision of which was published in the Official Journal ( Diario Oficial ) of the Federation on
17 May 1999 and forms part of the legislation notified to the Council for TRIPS (in Spanish).  The
actual wording of Article 90, subparagraph XV is as follows:
Article 90.  The following shall not be registrable as marks:…XV.  Appellations, figures or three-dimensional shapes equivalent or similar to a mark that
the Institute considers well known in Mexico, to be applied to any product or service.
5. Article 129 of the Industrial Property Law appears intended to authorize the Institute to
deal with anti-competitive practices.  Please explain in detail what I-III means, giving actual
examples, where possible.  How many times has th e authority been exercised since the law came
into force?
The Article in question refers to those cases where the use of a mark, whether registered or
not, might alter the dynamics of trade usage, giving rise to monopolistic practices, or hamper the
production and distribution of products.  The Article establishes the exceptions under which the public
interest, where applicable, takes precedence over individual interests.
Subparagraph I deals with the existence of monopolistic practices.  In this connection, it
should be pointed out that Mexico's Federal Commission on Economic Competition is the authority
responsible for enforcing the Federal Law on Economic Competition, the purpose of which is to
protect the competitive process and freedom of competition by preventing and eliminating
monopolies, monopolistic practices and other restrictions on the efficient working of markets in goods
and services.  The issuance by the Commission of a declaration concerning the existence ofmonopolistic practices, based on Articles 9 and 10 of the Federal Economic Competition Law (LFCE)
constitutes a condition for the applicability of this subparagraph.
Subparagraph II refers to situations where the use of a mark implies no unlawful trading
practice but does imply the inefficient distribution, production or marketing of goods and services.
Finally, subparagraph III refers to national emergencies.
It has not to date been necessary to apply the Article in question, so there are no actual
examples or particular rules of use;  however, the following hypothetical situations may be
mentioned:
An association of producers of a specific product, such as high-grade coffee, may request
regulation of the use of a mark (whether registered or not) when its use is associated with
unfair competitive practices.  There might be a case where a producer uses a mark which,
given its design and denomination, misleads the consuming public into thinking that the mark
concerned is a "guarantee mark" certified by a regulatory agency, thereby giving rise to an
improper advantage reflected in a distortion of marketing conditions for other coffee beanbrands.
The improper use of marks which imitate the image of food products in order to use that
image and displace such products in the market, taking advantage of the confusion caused to the
passing consumer at the mere sight of the product in a refrigerator or on a shelf.
In the case of national emergencies such as a natural disaster, the use of trademarks on
medicines may be prohibited with reference made only to their active ingredients, so that they can be
more efficiently located and distributed in the affected area.IP/C/W/188
Page 16
6. Title V bis of the Industrial Property Law establishes the procedure for applying for
protection for geographical indications in Mexico.  The process described is clear with respect to
Mexico's own geographical indications.  Please describe in detail, how foreign geographical
indications would receive protection in Mexico.  Would the Mexican State claim ownership of
the geographical indication pursuant to Article 16 7 and would individual users of the indication
have to apply for authorization to us e the geographical indication in Mexico?
Foreign geographical indications receive protection in Mexico in accordance with the
provisions of the Law itself and the agreements or treaties on the subject to which Mexico is party
(Article 1 of the Industrial Property Law).
Moreover, there are two alternative ways of protecting geographical indications in Mexico,
the first through appellations of origin and the second through collective marks.
The protection afforded by appellations of origin is more rigid in respect of the characteristics
of the geographical indication and is based on automatic enforcement of international treaties on the
subject.  Collective marks represent a more flexible system for the protection of geographical
indications.
Let us first deal with appellations of origin.  In the case of foreign appellations of origin
protected in Mexico by virtue of international treaties, they are subject to the same prerogatives as
national appellations of origin, and to the enforcem ent procedures indicated in the Industrial Property
Law (LPI), in the event of their unlawful use (governed by Articles 157 and 213 of the LPI).
However, foreign appellations of origin are not subject to the declaration of protection
procedure laid down in the Law for national appellations, nor is the Mexican State the owner, and
there is no authorization of use.  In other words, the procedure of application, declaration of protection
and authorization of use in respect of an appellation of origin, pursuant to the provisions of the Law,applies only to Mexican appellations of origin.  On the other hand, foreign appellations of origin are
protected by the automatic enforcement of international treaties on the subject.
Article 157 of the LPI reads as follows:  "The protection afforded by this law begins with the
declaration of protection issued to that effect by the Institute.  The illegal use of the same shall be
punished, including in cases where is it accompanied by indications such as 'kind', 'type', 'style',
'imitation' or other similar terms that create confusion in the mind of the consumer or imply unfair
competition".
Moreover, Article 213 of the LPI states that the following shall constitute administrative
infringements:
" …
IX. Performing, in the course of industrial or trading activities, acts that confuse, mislead,
or deceive the public by creating the unfounded belief or assumption that:
(a) A relation or association exists between a given establishment and that of a
third party;
(b) products are manufactured according to specifications, licences or
authorizations from a third party;
(c) services are provided or products sold on the basis of authorizations, licences
or specifications from a third party;IP/C/W/188
Page 17
(d) the product concerned comes from a territory, region or locality different
from the true place of origin, so that the public is misled as to the
geographical origin of the product.
…
XXII. Using an appellation of origin without the necessary  authorization or licence; …"As far as collective marks are concerned, Article 96 of the Industrial Property Law provides
that associations or groups of producers, manufacturers, traders or service providers may apply for
registration of collective marks to distinguish the products or services of their members on the market
from those of third parties.  This provision should be interpreted along the same lines as the
interpretation usually given to Article 7 bis of the Paris Convention for the Protection of Industrial
Property, i.e. that collective marks are signs serving to distinguish the geographical origin or othercommon characteristics of products or services from different companies which use the collective
mark under the control of its owner.
7. Since Articles 96 through 98 of the law on industrial property provide for collective
marks, might an entity recognized as responsibl e for a geographical indication in another WTO
Member be able to apply for protection of that indication in Mexico as a collective mark and
receive the same level of protection that would be accorded under Title V bis of the Law?
Please describe in detail the differences, if any, between the two forms of protection.
Yes, it is possible for any entity in a WTO Member State, which has an interest in protecting
a geographical indication in Mexico, to apply for its registration as a collective mark in accordance
with Articles 96 to 98 of the Industrial Property Law.  As mentioned under the previous question, the
protection of geographical indications through the registration of collective marks is one of the
alternatives offered by the Industrial Property Law for protection in such matters.
Regarding the level of protection of collective marks, Article 98, second paragraph, provides
that such marks shall be governed, in the absence of special provisions, by the provisions of the LPI
relating to marks.  Consequently, collective marks enjoy the same level of protection as is established
by the law for marks in general, subject in addition to the satisfaction of the requirements contained in
Title IV, Chapters I and V.
The registration of a collective mark shall be valid for a period of ten years from the date of
submission of the application and may be renewed for periods of the same duration.
8. There does not appear to be any means that  would allow a party that objects to the
grant of protection for a geographical indication  in Mexico to oppose that grant.  Please
describe in detail any procedures that might be used by a party to oppose a request for thegrant of protection of a geographical indication.
In the case of appellations of origin, Article 161 of the Industrial Property Law prescribes that
the Mexican Industrial Property Institute shall allow a period of two months for any third party able to
establish a legal interest to make observations or objections and produce the necessary evidence tooppose the application for a declaration of protection of a national appellation of origin.
The terms of the said declaration of protection may be amended at any time, either ex officio
or at the request of an interested party, in accordance with the procedure laid down in the Law
(Article 166 of the LPI).
The procedure of objection to the application for a declaration of protection is laid down in
Articles 162, 163 and 164 of the Industrial Property Law.IP/C/W/188
Page 18
In the case of collective marks consisting of geographical indications, a registration
invalidation procedure is available under Article 151 of the LPI.
9. If a registered trademark or a well-known trademark exists that incorporates the term
for which a request is made for protection as a geographical indication, is protection refused on
the basis of the existing right in the trademark?  If not, why not?
In such cases, Mexico shall act in accordance with the provisions of Article 22.3 of the TRIPS
Agreement, which reads:  "A Member shall, ex officio if its legislation so permits or at the request of
an interested party, refuse or invalidate the registration of a trademark which contains or consists of a
geographical indication with respect to goods not originating in the territory indicated, if use of the
indication in the trademark for such goods in that Member is of such a nature as to mislead the public
as to the true place of origin."
It follows from the above that two criteria must be met in order to invalidate or refuse the
registration of a mark consisting of a geographical origin for which protection is sought:  first, that the
registered mark or the mark it is wished to register, consisting of or containing a geographical
indication, should refer to goods not originating in the territory indicated;  and secondly, that theregistered mark or the mark it is wished to register, consisting of or containing a geographical
indication, is of such a nature as to mislead the public as to the true origin.
In connection with the refusal of registration of a mark which consists of or contains a
geographical indication, the Industrial Property Law provides as follows:
"Article 90.  The following shall not be registrable as marks:
…
X. Geographical, proper or common names, maps, and names and adjectives of origin,
when they indicate the source of the products or services and may be confusing or
misleading with regard to that source;
XI. names of towns or places characterized by the making of certain products, when used
to protect such products, except for the names of places under private ownership
when they are specific and unmistakable and the owner's consent has been given;  …"
Moreover, with respect to the invalidation of th e registration of a mark which consists of or
contains a geographical indication, the Industrial Property Law provides as follows:
"Article 151. The registration of a mark shall be void when:
I. It has been granted in contravention of the provisions of this Law or of the legislation
in force at the time of its registration.
…"Pursuant to the foregoing, it is possible to cancel the registration of a mark which consists of
or contains a geographical origin with respect to g oods not originating in the territory indicated or is
of such a nature as to mislead the public as to the true origin, since it was granted in violation of
subparagraphs X and XI of Article 90 of the LPI, cited above.
Moreover, the Industrial Property Law also contains the following provision:"Article 213.  The following are administrative offences:IP/C/W/188
Page 19
…
IX. Performing, in the course of industrial or trading activities, acts that confuse, mislead
or deceive the public by creating the unfounded belief or assumption that:
(a) A relation or association exists between a given establishment and that of a
third party;
(b) products are manufactured according to specifications, licences or
authorizations from a third party;
(c) services are provided or products sold on the basis of authorizations, licences
or specifications from a third party;
(d) the product concerned comes from a territory, region or locality different
from the true place of origin, so that the public is misled as to the
geographical origin of the product.
…
XXII. Using an appellation of origin without the necessary authorization or licence; …".
D. PATENTS
10. Article 192 bis 1 provides for reversal of the burden of proof in cases of patent
infringement under the Administrative Declaration Procedure in cases involving process
patents.  Please describe the way in which the reversal of the burden of proof would be carried
out in similar cases before the courts and cite to the relevant provisions of law.
Article 192 bis 1 of the LPI provides that, where the subject-matter of the patent is a process
for obtaining a product, the alleged infringer, in  the procedure for the administrative declaration of
infringement, must prove that the product was manufactured under a process different from the
patented process, where:
I. The product obtained by the patented process is new.II. There is a substantial likelihood that the product was manufactured by means of the
patented process and the patent owner has been unable to determine the process
actually used, despite having attempted to do so.
It should be pointed out that both these criteria have to be satisfied in order for there to be a
reversal of the burden of proof.
This exception applies only in the administrativ e sphere, specifically in cases of infringement
of patented processes.
E. 
UNDISCLOSED INFORMATION
11. Article 86 bis of the Law on Industrial Property states that information required by
special laws to determine the safety and efficacy of pharmaceutical and agricultural chemicals
are to be protected in accordance with internatio nal treaties to which Mexico is a party.  Please
describe in detail and provide copies of the relevant laws, the manner in which Mexico ensures
that undisclosed test or other data regardi ng pharmaceutical and agricultural chemicals
submitted to obtain marketing approval are protected against unfair commercial use.IP/C/W/188
Page 20
The records of government proceedings are confidential and only the interested parties may
have access to them in accordance with the provisions of the Federal Law on Administrative
Procedure, Article 33 of which provides that the parties to administrative proceedings shall be entitled
at any time to ascertain the status of their files,  by seeking the pertinent information in the offices
concerned, except where they contain information on defence and national security, have a bearing on
matters protected by trade or industrial secrets, where the interested party is neither the owner nor anassignee, or deal with matters concerning which prohibitory legislation exists.
Moreover, Article 47 of the Federal Law on Public Servants' Responsibilities provides that all
public servants shall be required to uphold the standards of legality, honour, loyalty, impartiality and
efficiency incumbent on them in the exercise of their employment, responsibilities or mission, subject
to the appropriate procedures and sanctions;  this requirement includes the obligation under
subparagraph IV of the above-mentioned Article to protect and preserve documentation andinformation which, by reason of their employment, responsibilities or mission, are kept under their
care or to which they have access, by preventing or averting the improper use, removal, destruction,
concealment or non-utilization of such documentation and information.
F. 
ENFORCEMENT
General provisions
12. Please briefly describe how the Government of Mexico meets the requirements of
TRIPS, Article 41, including 41.1, 41.2, 41.3 and 41.4.  In particular, please explain how the laws
of Mexico provide for effective action against in fringement of intellectual property rights as
required by Article 41.1 of the TRIPS Agreement.
The Industrial Property Law and the Federal Copyright Law lay down procedures for the
prevention and punishment of any act of infringement of an intellectual property right.
In administrative declaration proceedings relating to the violation of any of the rights
protected by the Industrial Property Law, the Mexican Industrial Property Institute may take the
following measures:
(a) Order the withdrawal from circulation or prevent the distribution of goods that
infringe rights protected by the LPI;
(b) order the withdrawal from circulation of:
• Articles manufactured or used illegally;
• articles, packaging, packing, containers, stationery, advertising material and
the like that infringe any of the rights protected by the LPI;
• signs, labelling stationery and the like that infringe any of the rights protected
by the LPI;  and
• tools or implements intended or used for the manufacture or production of
any of the items specified in the preceding subparagraphs.
(c) prohibit, with immediate effect, the marketing or use of products that infringe any of
the rights protected by the LPI;
(d) order the seizure of goods;IP/C/W/188
Page 21
(e) order the alleged infringer or third parties to suspend or discontinue acts constituting
a violation of the provisions of the LPI;  and
(f) order suspension of service provision or closure of the establishment if the measures
provided for in the preceding paragraphs are insufficient to prevent or avert the
violation of the rights protected by the LPI.
If the product or service is on the market, traders or service providers shall be required to
refrain from disposing of the product or providing the service from the date on which they are notified
of the ruling.
Producers, manufacturers and importers shall be under the same obligation, as shall their
distributors, who shall be responsible for recove ring forthwith any goods that are already on the
market.
Article 199 bis of the Industrial Property Law is applicable.
13. Please identify which courts have original jurisdiction over intellectual property
infringement cases, and which courts have appellate jurisdiction to review their decisions.
What legal limitations are placed on the ability of a party to have procedural rulings and final
decisions reviewed by the appellate bodies you have identified?  (TRIPS, Article 41)
The federal judicial authorities have jurisdiction and competence in intellectual property
matters to review decisions issued by the Mexican Industrial Property Institute, which is the
administrative authority competent to deal with in fringements of intellectual property rights.  The
judicial authorities in question are:
• The District Courts
• The Collegiate Circuit Courts
Moreover, Article 227 of the LPI provides that the courts of the Federation have jurisdiction
over the offences referred to in the relevant chapter, as well as over civil and commercial disputes and
the precautionary measures entailed by the implementation of the Law.
When such disputes affect only private interests, they may be heard by the ordinary courts if
the plaintiff so chooses, without prejudice to the ri ght of private individuals to submit to arbitration
proceedings.
Articles 33 to 39 and 42 to 55 of the Institutional Law on the Judicial Authority and Articles 1
and 227 of the Industrial Property Law are applicable.
14. Chapter II of Title VI of the Law on Industrial Property provides for an Administrative
Declaration Procedure.  Chapter III provides for appeals for reconsideration.  What body
within the Institute issues administrative declarations?  What body hears and decides the
appeals?
The appeal for reconsideration provided for in the LPI lies only against a decision refusing a
patent or the registration of a utility model or industrial design, and the Divisional Patent Directorate
has the authority to issue both the decision refusing the patent and the decision on the admissibility of
the appeal raised.
"Article 12 - the Divisional Patent Directorate shall be competent:IP/C/W/188
Page 22
III. To grant or refuse patents or registrations of utility models, industrial designs and
layout-designs of integrated circuits, which are processed in accordance with the
applicable provisions on the subject, and to hear and decide any proceedings under
the law with regard to the grant of patents and registrations;
…V. To hear and decide the appeal for reconsideration against decisions refusing
applications for patents and registrations, as provided in the law;  …"
The foregoing is based on Articles 200, 201 and 202 of the Industrial Property Law and
Article 12, subparagraphs III and V of the Regulations of the Mexican Industrial Property Institute.
15. Title VII of the Law on Industrial Property appears to provide administrative
procedures for enforcement of industrial property rights and includes provisions for the
Institute to inspect business facilities to ensu re that the Law is complied with.  Chapter III of
that Title defines criminal offences and establishes penalties therefor.  The Mexican Federal
courts have jurisdiction over these provisions, under Article 227, as well as over commercialand civil disputes.  Please explain in detail th e relationship between the administrative and the
court proceedings, indicating whether enforcement actions are available under both procedures
for the same offence and what factors a right holder should take into account in deciding which
to invoke to enforce rights.
For the institution of criminal proceedings, in the situations provided for in subparagraphs I
and II of Article 223 of the LPI, the Institute must issue a technical opinion which shall be without
prejudice to any criminal actions which may lie, this being a prerequisite for the admissibility of
criminal proceedings.
As mentioned above, the federal courts have jurisdiction and competence in intellectual
property matters to review decisions by the Mexican Industrial Property Institute.
Civil and administrative procedures and remedies
16. Please describe the procedures followed by the courts and/or administrative bodies for
notifying defendants that civil judicial proceedings have been initiated against them.  Also,
describe the type of information provid ed in the notice.  (TRIPS, Article 42)
Pursuant to Article 193 of the LPI, once the request for an administrative declaration of
nullity, expiry and cancellation has been accepted, the Mexican Industrial Property Institute (IMPI)
shall notify defendants of the initiation of administrative proceedings against them, allowing them a
period of one month to submit arguments in writing to support their case.
In cases of administrative infringement, the alleged infringer shall be subpoenaed and allowed
ten days to submit whatever evidence he/she deems appropriate.
Article 70 of the Regulations to the LPI states that any submission relating to the proceedings
referred to in Article 187 of the LPI must be accompanied by a copy which shall be made available to
the other party.
In judicial matters, the Federal Code of Civil Procedure (CFPC) lays down general rules on
notifications and service of process in particular.
First of all, under Article 276 of the CFPC, every litigant's first submission shall be
accompanied by as many single copies as are necessary for forwarding to the other parties, as regards
both the principal or supplementary application and accompanying documents.IP/C/W/188
Page 23
Once the application has been declared admissibl e, it shall be notified to the person against
whom it is lodged, and that person shall be ordered to reply within nine days, with any additional days
allowed on grounds of distance (Article 327).
According to Article 309 of the CFPC, the service of process on the defendant and service
involving the first notification in the proceedings must in all cases be effected personally.  Such
process must be served on the party concerned or his/her representative or agent, at the address forservice, together with a full, authorized copy of the decision notified (Article 310).
17. Do parties have the right to be represented by independent legal counsel in civil judicial
and administrative intellectual property (IP) case s, and are there any limitations on that right?
Please describe any special requirements concerning mandatory personal appearances by
parties.  (TRIPS, Article 42)
Parties have the right to be represented by independent legal counsel at all times and there is
no limitation on this right.  The special requirements for proving personal status are set out in
Article 181 of the Industrial Property Law, which provides that, when applications and submissions
are filed through an agent, the latter must establish his/her standing:
I. By a simple power of attorney signed before two witnesses if the principal is a natural
person.
II. By a simple power of attorney signed before two witnesses if, in the case of legal
persons, the case involves applications for patents or registrations or the registration
of licences or transfers of licences.
In the latter case, the power of attorney must specify that the person granting it has
the authority to do so and cite the instrument certifying such authority.
III. In cases not covered by the preceding subparagraph, by a public instrument or power
of attorney with authentication of signatures before a notary or other law officer
where a Mexican legal person is concerned, and the legal existence of the latter and
the powers of the grantor must also be established.
IV. In cases not covered by subparagraph II, by a power of attorney granted under the
applicable legislation of the place where it is granted, or in accordance with
international treaties where the principal is a foreign legal person.  When the saidpower of attorney attests the legal existence of the legal person in whose name the
power is granted, and the grantor's right to confer the power, it shall be presumed to
be valid, in the absence of proof to the contrary.
In each proceeding, the standing of the applicant or the party filing the submission must be
established;  however, a simple copy of the register entry will suffice if the power is registered in the
General Register of Powers kept by the Institute.
The Industrial Property Law makes no provision for mandatory appearances by parties.
Articles 1 to 6 of the Federal Code of Civil Procedure and Articles 181 and 182 of the
Industrial Property Law are applicable.
18. What requirements must a foreign party meet to initiate a proceeding in the courts and
administrative bodies identified that is not re quired of a national or resident of your country?
There are no special requirements;  nationals, residents and foreigners must all meet the
requirements laid down in Articles 179 et seq. of the LPI and Article 5 of the Regulations.IP/C/W/188
Page 24
19. Please describe any limitations on a party's ability to substantiate a claim or to present
relevant evidence in civil judicial and administ rative intellectual property cases.  (TRIPS,
Article 42)
The administrative declaration proceedings provided for in the LPI may be initiated ex officio
or at the request of any person who has a legal interest and provides grounds for their claim
(Article 188).
Moreover, Article 1 of the CFPC, supplementing the provisions on industrial property, states
that only a person having an interest in the pronouncement or establishment of a right or the delivery
of a sentence by the judicial authority, or a person having the contrary interest, may initiate or
participate in a judicial proceeding.
In addition, in accordance with Article 195 of the LPI, issues that have been the subject of a
prior specific decision shall not be examined in the administrative declaration procedure but shall be
resolved when the appropriate ruling is issued.
Finally, it should be pointed out that the judicial and administrative procedures envisaged
under Mexican legislation provide for the stages of production, admission and rebuttal of evidence;
once these stages have been exhausted, no new evidence is admissible, apart from such as may reflect
changed legal circumstances.
20. Please describe the mechanisms for identify ing and protecting confidential information
in civil judicial and administrative intellectual property cases.  (TRIPS, Article 43.1.)
In any judicial or administrative procedure where one of the parties or third parties is required
to reveal confidential information, the authority hearing the case shall adopt such measures as are
necessary to prevent the rights of the parties from being infringed.
Under no circumstances may any interested party reveal or make use of the industrial secret
referred to in the preceding paragraph.
In the case of proceedings relating to patents, utility models and industrial designs, all
Institute staff involved in the various procedures applicable under the LPI and the regulations thereto
shall be bound to observe absolute secrecy regarding the contents of pending case files, on pain ofpunishment under the Federal Law on the Responsibilities of Public Servants, irrespective of any
penalties which may apply in such cases. The staff of public or private bodies that might become
privy to the said contents in assisting the Institute in the discharge of its duties shall be under the same
obligation.
Article 80 of the Federal Code of Civil Procedure and Articles 86 bis 1 and 186 of the
Industrial Property Law are applicable.
21. What provisions ensure that intellectual pr operty infringement cases are handled in an
expeditious manner and what provisions are available to prevent deliberate delays by theparties to a proceeding?  Under what circumstances are such provisions applied?
The administrative declaration procedures envisaged in the LPI and the procedure for trade-
related infringements are based on summary process, that is to say brief administrative proceedings
devoid of unnecessary formalities. One special feature of  such proceedings  is that they may also be
initiated ex officio by the IMPI, thereby shortening the time limits and expediting the proceedings.
With regard to delays caused deliberately by frivolous appeals, Article 57 of the CFPC
provides that the courts shall in no circumstances accept blatantly malicious or improper applications,IP/C/W/188
Page 25
appeals or submissions, which shall be rejected outright, without any need to order notification to the
other parties, the sending of copies or the institution of interlocutory proceedings. Moreover, legal
precedents exist on the subject, such as the following:
FRIVOLOUS OR IMPROPER APPEALS:  EVALUATION
Level of
jurisdiction: Third Chamber
Source: Semanario Judicial de la Federación (Weekly Judicial Review of the Federation)Period: Fifth PeriodVolume: LXVIIIPage: 2005Text:
"The finding that an appeal is frivolous or improper shall not be left to the discretion of the
judges or lie exclusively with the adjudicating court, but must emerge clearly from the circumstances
of each case".
Precedent:Volume LXVIII, page 2005.  Sandi Mauricio – 6 June, 1941 – 5 votes.
FRIVOLOUS APPEALS
Level of
jurisdiction: Plenary
Source: Weekly Judicial Review of the Federation
Period: Fifth PeriodVolume: IVPage: 365
Text:
"…, since frivolous appeals are those that are groundless and unreasonable, introduced solely
with the aim of prolonging the proceedings; …"
Precedent:
Volume IV, Page 365: "The United Security Life Insurance and Trust Company of
Pennsylvania" – 14 February 1919 – 11 votes.
Finally, the Federal Criminal Code defines a series of special categories of offences by
lawyers, employers and litigants, which provide for appropriate penalties in cases of conduct designed
deliberately to delay the conclusion of a proceeding (Article 231 of the Federal Criminal Code).
"Article 231.  A prison sentence of two to six years, a fine of one hundred to three hundred
day units and suspension and disqualification for a term equivalent to that prescribed under
the preceding penalty in respect of the exercise of professional functions, shall be imposed on
lawyers, employers or litigants not overtly represented by lawyers, who commit any of the
following offences:IP/C/W/188
Page 26
…
II. Requesting terms in order to prove contentions that are patently unprovable or
unsustainable on their part; promoting points or issues to justify suspension of the
proceedings or manifestly improper appeals, or seeking in any other way to securepatently unlawful delays;
III. knowingly or on the basis of false or worthless documents or false testimony, taking
action or lodging pleas against another party with the judicial or administrative
authorities;  and
…"
22. Please describe how and under what circumstances judicial and administrative officials
may order parties to produce relevant evidence in  civil judicial and administrative intellectual
property cases.  What types of evidence or information may be required to be disclosed prior to
trial and how long does this pre-trial disclosu re period generally last?  (TRIPS, Article 43.2)
Any type of information or evidence may be required, apart from testimony or personal
statements, unless such testimony or personal statements are in documentary form, or evidence
contrary to morality and the law, pursuant to Article 192 of the Industrial Property Law.
In addition, for the substantiation of facts that may constitute a violation of one or more of the
rights protected by the LPI, or in administrative declaration procedures, the Institute may avail itself
of such evidence as it considers necessary.
Where the aggrieved owner or the alleged infringer have submitted sufficient evidence, in
terms of that to which they may reasonably have access, in support of their claims and have specifiedany relevant evidence to substantiate those claims, which is under the control of the opposing party,
the Institute may order the latter to submit the said evidence, subject where appropriate to such
conditions as may guarantee the protection of confidential information.
Moreover, Articles 79 and 90 of the Federal Code of Civil Procedure are applicable.
23. What kinds of actions may judicial and administrative officials take if the party fails to
provide the necessary information?  Please describe the circumstances under which those
actions are normally imposed in civil judicial and administrative enforcement actions.  (TRIPS,
Article 43.2)
Where the aggrieved owner or the alleged infringer deny access to evidence or fail to produce
relevant evidence under their control in a reasonable period of time, or significantly obstruct theprocedures, the Institute may issue preliminary and final rulings, either favourable or adverse, on the
basis of the evidence submitted, including the arguments put forward by the party adversely affected
by the denial of access to evidence, provided that the interested parties are given the opportunity to be
heard on the subject of the arguments and the evidence submitted.
Article 192 bis of the Industrial Property Law is applicable.
24. Do judges and administrative officials ha ve the authority to issue injunctions (or
equivalent measures) to order a party to desist from an infringement and to prevent infringing
goods from entering the channels of commerce?  Please describe, in detail, the procedures for
issuing such injunctions.  (TRIPS, Article 44.1)IP/C/W/188
Page 27
Pursuant to Articles 49 and 50.8 of the Agreement on Trade-Related Aspects of Intellectual
Property Rights, in administrative declaration proceedings relating to the violation of any of the rights
protected by the Industrial Property Law (LPI), the Mexican Industrial Property Institute may take the
following measures:
(a) Order the withdrawal from circulation or prevent the distribution of goods that
infringe rights protected by the LPI;
(b) order the withdrawal from circulation of:
• Articles manufactured or used illegally;
• articles, packaging, packing, containers, stationery, advertising material and
the like that infringe any of the rights protected by the LPI;
• signs, labelling, stationery and the like that infringe any of the rights protected
by the LPI;  and
• tools or implements intended or used for the manufacture or production of
any of the items specified in the preceding subparagraphs.
(c) prohibit, with immediate effect, the marketing or use of products that infringe any of
the rights protected by the LPI;
(d) order the seizure of goods;(e) order the alleged infringer or third parties to suspend or discontinue acts constituting a
violation of the provisions of the LPI;  and
(f) order suspension of service provision or closure of the establishment, if the measures
provided for in the preceding subparagraphs are insufficient to prevent or avert the
violation of the rights protected by the LPI.
If the product or service is on the market, traders or service providers shall be required to
refrain from disposing of the product or providing the service from the date on which they are notified
of the ruling.
Producers, manufacturers and importers shall be under the same obligation, as shall their
distributors, who shall be responsible for recovering forthwith any products already on the market.
Article 199 bis of the Industrial Property Law is applicable.
• Orders for damages, including recovery of profits and expenses, including lawyers'
fees
Irrespective of the judicial or administrative action that may lie, a person whose intellectual
property rights have been violated may claim from the perpetrator or perpetrators compensation for
material injury and the payment of damages in respect of such violation, which in no case may be less
than 40 per cent of the public selling price of each product or service.
Articles 221 bis and 226 of the Industrial Property Law are applicable.
• Destruction or other disposal, outside the channels of commerce, of infringing goods
and the materials and implements used for their productionIP/C/W/188
Page 28
If the final ruling on the merits of the dispute states that there has been an administrative
infringement, the authority shall decide, after hearing the parties, on the destination of the confiscated
goods, and in doing so shall conform to the following rules:
I. It shall place the confiscated goods at the disposal of the competent judicial authority
as soon as it receives notice that the proc eedings for compensation for material injury
or payment of damages have been initiated.
II. It shall place them at the disposal of any person specified by the award where the
option of arbitration proceedings has been selected.
III. Where appropriate, it shall proceed in accordance with the terms of the agreement
reached between the aggrieved owner and the alleged infringer regarding the
destination of the goods.
IV. In cases not covered by the foregoing subparagraphs, each of the parties concerned
shall submit in writing, within five days of the date on which they are given sightthereof, their proposals concerning the destination of the goods that have been
confiscated or withdrawn from circulation, or the marketing of which has been
prohibited.
V. It shall give the parties sight of the proposals submitted, so that they may decide by
common consent on the destination of the said goods and submit their decision to the
Institute in writing within five days following the date on which they were given
sight.
VI. If the parties fail to set out in writing their agreement on the destination of the goods
within the period allowed, or if none of the si tuations referred to in subparagraphs  I
to III above has arisen within a period of 90 days from the issue of the final decision,
the Governing Board of the Institute may decide:
(a) To donate the goods to departments and agencies of the Federal Public
Administration, federated states, municipali ties, or public, charitable or social
security institutions, provided that the public interest is not affected;  or
(b) to destroy the goods.
Article 212 bis 2 of the Industrial Property Law is applicable.
• Other measures
(a) Fines
(b) Closures
(c) Imprisonment if an offence has been committed
Articles 214 and 218 of the Industr ial Property Law are applicable.
Judicial decisions may require a party to the proceedings or a third party to act in a particular
manner, i.e to engage in or refrain from a specified form of conduct.
Articles 220 and 379 to 399 of the Federal Code of Civil Procedure are applicable.IP/C/W/188
Page 29
• Orders for damages, including recovery of profits and expenses, including lawyers'
fees
If the court awards damages, it shall fix the amount in monetary terms or at least establish the
basis on which payment must be made.  The judgement may include an order to pay court costs and
expenses.
Articles 7 to 11 of the Federal Code of Civil Procedure are applicable.
• Destruction or other disposal, outside the channels of commerce, of infringing goods
and the materials and implements used for their production
The court may include in its judgment an order for performance of an act which may consist,
inter alia , in the destruction of goods and it may specify a reasonable period for compliance.
Article 420 of the Federal Code of Civil Procedure is applicable.
• Other measures
Taking into account the nature of the case, the competent court shall deliver its judgement and
may, under its own responsibility, adopt any measure it considers appropriate, as well as any proposalput forward by the parties, provided that it is consistent with the law.
Articles 345 and 353 of the Federal Code of Civil Procedure are applicable.
25. How long in practice does it generally takes to obtain the injunctive relief (or equivalent
measures) from the time of the application to its grant?  What evidence must typically be
provided to establish a party's right to each of the types of relief identified and what are the
conditions imposed on obtaining such relief?  (TRIPS, Article 44)
The period of time will depend on the specific circumstances.
In order to determine the measures to be taken under Article 199 bis of the LPI, the Institute
shall require the applicant to:
Prove that he/she is the right holder and any of the following circumstances:
(a) The existence of a violation of his/her rights;
(b) the imminence of a violation of his/her rights;
(c) the existence of the possibility of irreparable damage being sustained;  and
(d) the existence of a justified fear that evidence might be destroyed, concealed, lost or
altered.
The evidence submitted by the interested party to establish the foregoing shall be evaluated
by the Institute as a condition for ordering the measures requested.
Article 199 bis 2 of the LPI is applicable.
Moreover, one of the requirements for ordering the measures is that the applicant post
sufficient security to cover any damage that might be caused to the person against whom the measure
is requested, and provide the necessary information for identifying the goods, services or
establishments with which or in which the violation of industrial property rights has been committed.IP/C/W/188
Page 30
The Institute may amend the terms of the measures adopted, taking into account the specific
circumstances of the case.
Articles 228 and 199 bis of the LPI are applicable.
26. Article 44.2 provides an exception to the requirement in paragraph 1 for government
use or use by third parties authorized by the government, limiting the remedy for infringement
to payment of adequate remuneration as prov ided in Article 31(h).   Are there any such
limitations on remedies in the laws of Mexico?
The limitations on remedies in respect of patents are set out in Article 22 of the Industrial
Property Law, which provides that the right conferred by a patent shall produce no effect against:
I. A third party who, in the private or academic sphere and for non-commercial
purposes, engages in scientific or technological research activities for purely
experimental, testing or teaching purposes, and to that end manufactures or uses a
product or process equivalent to the one patented;
II. any person who markets, acquires or uses the patented product or the product
obtained by the patented process, after the said product has been lawfully placed on
the market;
III. any person who, prior to the filing date of the patent application, or where applicable
the recognized priority date, uses the patented process, manufactures the patented
product or begins the necessary preparations for effecting such use or manufacture;
IV. the use of the invention concerned in transport vehicles of other countries when it
forms part of such vehicles and when the vehicles are in transit on the national
territory;
V. a third party who, in the case of patents relating to live material, makes use of the
patented product as an initial source of variation or propagation to obtain other
products, except where such use is made recurrently;  and
VI. a third party who, in the case of patents relating to products consisting of live
material, puts into circulation or markets the patented products for purposes other
than multiplication or propagation, after the said products have been lawfully placed
on the market by the patent owner or by the person to whom a licence has been
granted.
The performance of any act covered by this Article shall not constitute an administrative
infringement or offence within the meaning of the LPI.
As far as marks are concerned, Article 92 of the same LPI provides that registration of a mark
shall produce no effect against:
I. A third party who in good faith used the same or confusingly similar mark on the
national territory for the same or similar products or services, provided that the third
party had begun to make uninterrupted use of the mark prior to the filing date of theapplication for registration or the date of the first declared use of the mark.  The third
party shall be entitled to apply for registration of the mark within three years
following the day on which the registration was published, in which case he/she shall
previously apply for and obtain a declaration of invalidity of the said registration;IP/C/W/188
Page 31
II. any person who markets, distributes, acquires or uses the product to which the
registered trademark is applied, after the said product has been lawfully placed on the
market by the owner of the registered trademark or by the person to whom he/she has
granted a licence;
This eventuality shall include the importation of legitimate products to which the
mark applies, as effected by any person for use, distribution or marketing in Mexico,
under the terms and conditions laid down in the regulations to this law;  and
III. natural or legal persons who apply thei r own name or company or business name to
the goods that they produce or distribute, to the services they provide or to their
places of business, or who use it as part of their trade name, provided that they apply
it in the form in which they are accustomed to using it and that it has features thatclearly distinguish it from a homonym already registered as a mark or published as a
trade name.
The performance of any activity provided fo r in this Article shall not constitute an
administrative infringement or offence within the meaning of the LPI.
27. Please explain whether judicial  and administrative officials have the authority to order a
party found to be infringing to pay the right holder damages adequate to compensate for the
injury caused by the infringement and expenses , including attorney's fees.  What factors are
considered in establishing the amount of damages?  (TRIPS, Article 45)
Any person whose intellectual property rights have been infringed may claim from the
infringer or infringers compensation for material  injury and the payment of damages arising from
such infringement, which in no event may be less than 40 per cent of the public selling price of each
product or service.
It shall lie with the competent judicial authority to order the payment of damages;  it shall fix
the amount in monetary terms or at least establish the basis on which payment must be made.  The
judgement may include an order to pay court costs and expenses.
Articles 7 to 11 of the Federal Code of Civil Procedure and Articles 226 and 221 bis of the
Industrial Property Law are applicable.
28. Please describe any additional remedies  (e.g., disposal of goods and destruction of
materials and implements used to create infr inging goods) that judicial and administrative
officials may impose in civil judicial and admi nistrative intellectual property cases, the
circumstances under which those remedies will be imposed.  What factors are considered indetermining which kind of remedy to impose?  (TRIPS, Article 46)
In the event that provisional measures have been adopted, they may be made final pursuant to
Article 199 bis 5 which provides that the Institute, in the final ruling on the procedure for the
administrative declaration of infringement, shall decide on the lifting or confirmation of the measures
adopted under Article 199 bis.
If the final ruling on the merits of the dispute states that an administrative infringement has
been committed, the Institute shall decide, after hearing the parties, on the destination of the
confiscated goods, and in so doing shall abide by the following rules:
I. It shall place the confiscated goods at the disposal of the competent judicial authority
as soon as it receives notice that the proc eedings for compensation for material injury
or payment of damages have been initiated.IP/C/W/188
Page 32
II. It shall place them at the disposal of any person specified by the award where the
option of arbitration proceedings has been selected.
III. Where appropriate, it shall proceed in accordance with the terms of the agreement
reached between the aggrieved owner and the alleged infringer regarding the
destination of the goods.
IV. In cases not covered by the foregoing subparagraphs, each of the parties concerned
shall submit in writing, within five days of the date on which they are given sight
thereof, their proposals concerning the destination of the goods that have been
confiscated or withdrawn from circulation, or the marketing of which has been
prohibited.
V. It shall give the parties sight of the proposals submitted, so that they may decide by
common consent on the destination of the said goods and submit their decision to the
Institute in writing within five days following the date on which they were given
sight.
VI. If the parties fail to set out in writing their agreement on the destination of the goods
within the period allowed, or if none of the circumstances referred to in
subparagraphs I to III above has arisen within a period of 90 days from the issue of
the final decision, the Governing Board of the Institute may decide:
(a) To donate the goods to departments and agencies of the federal public
administration, federated states, municipalities or public, charitable or social
security institutions, provided that the public interest is not affected;  or
(b) to destroy the goods.
Furthermore, in case of persistent infringing conduct, an additional fine may be imposed
under Article 214, subparagraph II of the Industrial Property Law, up to the amount of 500 days of the
general minimum wage in force in the Federal District.
29. Do judicial and administrative officials have  the authority to order infringers to provide
right holders with information on third parties involved in the production and distribution of
infringing goods or services and their channels of distribution?  Under what circumstances is
this authority exercised?  (TRIPS, Article 47)
If a party asks to be allowed to inspect certain material objects, documents, books or papers
essential to the filing of its application, the judicial authority may order that they be made available,
subject to proof of the right to request the measure and its necessity.
The court may avail itself of any person, material object or document, whether belonging to
the parties or to a third party, in order to determin e their legal status in a dispute, with no limitation
other than that the evidence be admissible under the law and directly relevant to the facts at issue.
Articles 89, 90, 91 and 379 of the Federal Code of  Civil Procedure and Article 187 of the LPI
are applicable.
The IMPI, pursuant to Article 203, subparagraph 1 of the LPI, may request reports and
information in order to verify compliance with the law.
Moreover, Article 199 bis 7 provides that the party requesting provisional measures may use
the documentation relating to the application of provisional measures in order to institute theIP/C/W/188
Page 33
appropriate proceedings or for inclusion in files pertaining to pending procedures, but shall be
prohibited from using it and disclosing or communicating it to third parties.
30. Please explain whether public authorities and officials are exempt from liability for
abuse of enforcement procedures and describe the circumstances in which such limitations do
not apply.  (TRIPS, Article 48)
In connection with the conduct of proceedings, the judicial and administrative authorities
have no responsibility for any measures requested by the parties;  however, the actions of the public
authorities in Mexico are governed by the Federal Law on the Responsibilities of Public Servants,
which lays down the obligations incumbent upon civil servants in the discharge of their
responsibilities.
Article 47 of the Federal Law on the Responsibilities of Public Servants is applicable.
G. PROVISIONAL MEASURE
31. Please identify the provisional measures available under the law of Mexico to prevent an
infringement of any intellectual property righ t occurring and to preserve relevant evidence in
regard to an alleged infringement.  (TRIPS, Article 50)
In administrative declaration proceedings relating to the violation of any of the rights
protected by the Industrial Property Law (LPI), the Mexican Industrial Property Institute may take the
following measures:
(a) Order the withdrawal from circulation or prevent the distribution of goods that
infringe rights protected by the LPI;
(b) order the withdrawal from circulation of:
• Articles manufactured or used illegally;
• articles, packaging, packing, containers, stationery, advertising material and
the like that infringe any of the rights protected by the LPI;
• signs, labelling, stationery and the like that infringe any of the rights protected
by the LPI;  and
• tools or implements intended or used for the manufacture or production of
any of the items specified in the preceding subparagraphs.
(c) prohibit, with immediate effect, the marketing or use of products that infringe any of
the rights protected by the LPI;
(d) order the seizure of goods;(e) order the alleged infringer or third parties to suspend or discontinue acts constituting
a violation of the provisions of the LPI;  and
(f) order suspension of service provision or closure of the establishment, if the measures
provided for in the preceding subparagraphs are insufficient to prevent or avert the
violation of the rights protected by the LPI.IP/C/W/188
Page 34
If the product or service is on the market, traders or service providers shall be required to
refrain from disposing of the product or providing the service from the date on which they are notified
of the ruling.
Producers, manufacturers and importers shall be under the same obligation, as shall their
distributors, who shall be responsible for recovering forthwith any products already on the market.
Article 199 bis of the Industrial Property Law is applicable.
Pursuant to Article 199 bis 7, the requesting party may only use the documentation relating to
the application of a provisional measure in order to initiate the appropriate proceedings or for
inclusion in files pertaining to pending procedures, and shall be prohibited from using it and
disclosing or communicating it to third parties.
During or before the initiation of judicial proceedings, the following provisional measures
may be ordered at the request of the injured party:
(a) Goods embargo sufficient to guarantee the outcome of the proceedings;(b) deposit or seizure of material objects, books, documents or papers at issue in the
dispute;
Any measures necessary to maintain the status quo.Articles 384 and 389 of the Federal Code of Civil Procedure and Article 228 taken together
with Article 199 bis of the Industrial Property Law are applicable.
32. Please briefly describe:
(a) Any requirements to establish "irreparable harm" to the right holder.  (TRIPS,
Article 50.2).
(b) Factors considered by judicial and ad ministrative authorities in determining
whether a "demonstrable risk of eviden ce being destroyed exists".  (TRIPS,
Article 50.2).
In order to determine the provisional measures to be taken under the LPI, the Institute shall
require the requesting party to:
Prove that he/she is the right holder and any of the following circumstances:(a) The existence of a violation of his/her rights;(b) the imminence of a violation of his/her rights;
(c) the existence of the possibility of irreparable damage being sustained;
(d) the existence of a justified fear that evidence might be destroyed, concealed, lost or
altered.
For purposes of proving the points referred to above, any type of evidence shall be admissible,
apart from testimony or personal statements, unless they are in documentary form. No evidence
contrary to morality and the law shall be admissible.
Articles 192 and 199 bis 1 of the LPI are applicable.IP/C/W/188
Page 35
33. For each kind of intellectual property that is the subject of TRIPS, what kind of
evidence is required by right holders to establ ish ownership of the intellectual property in
question and that their right is being infringed?  (TRIPS, Article 50.3)
In order to establish ownership and the risk of infringement of their rights, right holders may
make use of any evidence to which they have access or which is available to them, for purposes of
establishing a degree of certainty  with regard to the circumstances.
In order to establish the circumstances referred to above, all types of evidence shall be
admissible, apart from testimony or personal statements, unless the latter are in documentary form.
No evidence contrary to morality and the law shall be admissible.
Articles 192 and 199 bis 1 of the LPI are applicable.
34. Are right holders required to provide a security or equivalent assurance to protect the
defendant and to provide against abuse and how is that amount determined?  (TRIPS,
Article 50.3)
In order to determine the measures to be taken under Article 199 bis, the Institute shall require
the requesting party to post sufficient security to cover any damage or injury that might be caused to
the person against whom the measure was requested.
The person against whom the measure has been applied may post an indemnity bond to cover
any damage or injury that might be caused to the requesting party, in order to have the measure lifted.
The Institute must take account of the seriousness of the offence and the nature of the
measure requested in deciding whether to apply the measure and in determining the amount of thesecurity and the indemnity bond.
Articles 384 and 389 of the Federal Code of Civil Procedure and Article 228 taken together
with Article 199 bis of the Industrial Property Law are applicable.
35. Please briefly describe the following:
(a) The authority judicial and administrative officials have to adopt provisional
measures inaudita altera parte , and what measures may be adopted inaudita
altera parte .  (TRIPS, Article 50.4)
(b) Does the exercise of the authorities identified above require a court order?
(TRIPS, Article 50.4)
Given the nature of such measures, they are ordered without hearing the opposing party.   
In addition, the party requesting a provisional measure must fulfil the following requirements:1. Prove that he/she is the right holder;2. post sufficient security to cover any damage or injury;
3. provide the information necessary to identify the goods or services.
Articles 384 and 389 of the Federal Code of Civil Procedure and Article 228 taken together
with Article 199 bis of the Industrial Property Law are applicable.IP/C/W/188
Page 36
36. For each of the measures identified above,  generally how long does it take from the
application for such relief until its grant?
The time taken will depend on the specific case.
37. Please describe the procedures for notifying affected parties after execution of the
provisional measures and initiating a review.  (TRIPS, Article 50.4)
The procedures for notifying the application of provisional measure depend on their nature.
By way of example, if the seizure of allegedly infringing goods is ordered, notification will be
effected in the course of an inspection visit.  In the event that the nature of the administrative
infringement does not call for an inspection visit, the alleged infringer must be notified personally of
the information and evidence on which the application is based, pursuant to Article 310 of the CFPC.
The person against whom any of the measures referred to above has been ordered shall have a
period of ten days in which to submit to the Institute any observations regarding such measures.
The Mexican Industrial Property Institute may amend the terms of the measure that has been
adopted, taking into account the observations submitted to it.
Articles 193, 209 subparagraph IX and 216 of the LPI are applicable.
38. Please describe the kind of information req uired from applicants to identify goods
which are the subject of provisional measures.  (TRIPS, Article 50.5)
The applicant must provide the information necessary to identify the goods, services or
establishments with which or in which the violation of industrial property rights has been committed,
and the authority is empowered to evaluate the information provided.
Article 199 bis 1, subparagraph III of the LPI is applicable.
39. Please describe the nature of the proof required from applicants before such provisional
measures are granted for each type of intellectual property protected under TRIPS.
(TRIPS, Article 50)
This depends on the specific case submitted to the authority, subject to the condition that the
evidence is sufficient to meet the requirements laid down in subparagraph I of Article 199 bis 1 of the
LPI.  Article 192 of the LPI is applicable.
40. Please describe the procedures for revoking or cancelling provisional measures in
judicial and administrative enforcement actions if proceedings leading to a decision on the
merits of a case are not initiated within a rea sonable time.  What constitutes a "reasonable
time-period" to initiate proceedings?  (TRIPS, Article 50.6)
When a provisional measure has been requested and no application or request for an
administrative declaration of infringement has been lodged with the competent authority in respect of
the substance of the dispute, the measure shall lapse and the situation prevailing prior to the ordering
of the measure shall be restored.
Moreover, the person against whom provisional measures have been requested shall have the
possibility to have them lifted, subject to posting an indemnity bond to cover any damage or injury
caused to the party requesting such measures.
Articles 187, 199 bis 1 and 199 bis 3, subparagraph II of the LPI and Article 397 of the
Federal Code of Civil Procedure are applicable.IP/C/W/188
Page 37
41. Please explain whether judici al and administrative officials have the authority to order
that the defendant be compensated for any injury  suffered as a result of a lapse or revocation of
provisional measures.  (TRIPS, Article 50.7)
The party requesting the provisional measures referred to in Article 199 bis shall be
responsible for the payment of damages for injury caused to the person against whom the measures
were applied, where the final ruling on the substance of the dispute states that there was no violation
or threat of violation of the requesting party's rights, and where a provisional measure has been
requested and no application or request for an administrative declaration of infringement has been
lodged with the competent authority or the Institute regarding the substance of the dispute within a
period of 20 days from the date of implementation of the measure.
Articles 199 bis to 199 bis 8 of the LPI are applicable.
H. BORDER MEASURES
42. Please identify the competent authority in Mexico authorized to accept applications for
a request to suspend release of suspected infringing goods.  (TRIPS, Article 51)
The authorities competent to receive applications for border measures are the Mexican
Industrial Property Institute and the competent judicial authority.
Articles 199 bis and 228 of the LPI and Article 148 of the Customs Law are applicable.
43. Please describe the procedures for protecting intellectual property at the border (e.g.,
application, required information, process and time-frame for notifying applicant of acceptance,
effective period for border enforcement action).  (TRIPS, Article 52)
The applicable provisions are contained in the Industrial Property Law (Articles 199 bis,
199 bis 1 to 199 bis 8) and the Customs Law (Articles 144, 148 and 149).
In this connection, anyone requesting border measures with respect to goods suspected of
infringing an intellectual property right must submit a written application to the Mexican Industrial
Property Institute or to the competent judicial authority, showing that he/she is the holder of the
allegedly infringed right, post security sufficie nt to cover any damages and provide information
sufficient to identify the goods and services allegedly infringing an intellectual property right, the
foregoing pursuant to Article 199 bis 1 of the LPI and Article 148 of the Customs Law.
Once the above-mentioned requirements have been met, the Mexican Industrial Property
Institute or the competent judicial authority shall no tify the ruling to the customs authorities in order
for the latter to suspend the release into free circul ation of the allegedly infringing goods.  The ruling
must meet the requirements laid down in Article  149 of the Customs Law:
1. The name of the importer;
2. a detailed description of the goods;
3. the customs office understood to be the one through which the goods are to enter;4. the estimated time-scale for entry of the goods, which shall not exceed 15 days;
5. the warehouse in which the goods are to be placed at the disposal of the competent
authority, which must be located within the territorial jurisdiction of the
corresponding customs office;  andIP/C/W/188
Page 38
6. the designation or express acceptance of the depositary.
When the customs authority has carried out the order issued by the competent administrative
or judicial authority, it shall inform the latter that  the goods have been detained and place them at the
disposal of the authority concerned in the warehouse designated by the latter. In so doing, the customsauthority shall make a detailed report which must include the following particulars:
1. The identity of the authority conducting the proceedings;2. the order suspending release of the goods from abroad into free circulation and the
notification thereof made to the interested party;
3. the description, nature and other characteristics of the goods;  and
4. the place in which the goods are to be held at the disposal of the competent authority
(Article 148 of the Customs Law).
Any person affected by implementation of these measures must reply within ten days (during
which they may exercise their entitlement to submit evidence, pleas and/or grounds of defence) to the
request for an administrative declaration of infringement or, where appropriate, to the complaint
against them and may post an indemnity bond sufficient to cover any damage or injury that might be
caused by the lifting of the measure. Articles 192 bis 1 and 192 bis 2 of the Industrial Property Law
are applied in such cases.
The competent authority must give a final ruling on the border measures procedure and shall
place the security or indemnity bond at the disposal of the party in whose favour it has ruled.
(Article 199 bis 3 to 199 bis 8 of the LPI.)
Articles 199 bis and 199 bis 1 to bis 8 of the Industrial Property Law and Articles 148 and
149 of the Customs Law are applicable.
44. Are procedures available to stop the export  of infringing goods and goods shipped in
transit?
Border measures are applicable only to imported goods. Goods in transit are not liable to be
detained by the customs authorities, since they do not pass through the random control system.
De minimis imports are considered to be of a personal nature and are not liable to be detained
by the customs authorities.
45. Please explain what evidence constitutes prima facie infringement for purposes of
TRIPS, Article 52?
The customs authorities may order a border measure only at the request of a competent
administrative or judicial authority, pursuant to Article 148 of the Customs Law; the customs
authorities are therefore not entitled to detain goods or to determine whether the cross-border entry of
goods constitutes a prima facie violation of any intellectual property right. However, in accordance
with Article 19 of the above-mentioned Law, the administrative or judicial authority issuing the ruling
on release of the goods into free circulation must provide sufficient information for the identificationand subsequent detention of the allegedly infringing goods.
Any type of evidence shall be admissible for that purpose, apart from testimony or personal
statements, unless they are in documentary form. No  evidence contrary to morality and the law shall
be admissible.IP/C/W/188
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Articles 192, 199 bis and 199 bis 1 of the LPI and Articles 148 and 149 of the Customs Law
are applicable.
46. Please verify that the competent authoritie s identified above are empowered to  require
security or equivalent assurance. (TRIPS, Article 53).
Where provisional measures are concerned, in order to show that they are necessary the
applicant must meet the requirements laid down in Article 199 bis 1 of the Industrial Property Law.
47. Please identify what forms of intellectual property, if any, are subject to provisions of
TRIPS, Article 53.2.
No distinction is made between forms of intellec tual property with regard to the application of
border measures.
In this connection, the person against whom the requested measures are directed may have
them lifted by posting an indemnity bond to cover any damage or injury that might be caused to the
requesting party.
48. What procedures exist for notifying applican ts of the suspension of release? (TRIPS,
Article 54)
At the time of effecting detention of the goods, a copy of the formal statement drawn up for
that purpose shall be issued to the person on whose behalf the measure was taken, together with a
copy of the ruling on release of the goods into free circulation issued by the competent administrative
or judicial authority, so that the administrative or judicial proceedings may continue in accordance
with the legislation on the subject.
Once the goods have been detained by the customs authority, the administrative or judicial
authority which issued the order shall be notified of the detention and shall in turn notify the
applicant.
Article 148 of the Customs Law is applicable.
49. Please identify the fora in which an appl icant/party may initiate proceedings on the
merits that will allow customs authorities to hold the goods beyond ten working days.  (TRIPS,
Article 55)
Border measures are subject to the provisions of the LPI;  hence there is an obligation to hold
the allegedly infringing goods for up to 20 working days, corresponding to the time-limit available to
the applicant for lodging a request for an administrative declaration.
Article 199 bis 3, subparagraph II of the LPI is applicable.
50. Do judicial and administrative officials have  the authority to order the applicant to pay
the importer, consignee or owner compensation for injury caused by wrongful detention or
through the detention pursuant to Article 55?  (TRIPS, Article 56)
The provisional measures procedure referred to earlier is applied.
51. Please explain the procedures for allowing  right holders an opportunity to inspect
suspect goods that have been detained by customs authorities.  (TRIPS, Article 57)IP/C/W/188
Page 40
In the context of administrative infringement proceedings, the applicant may request the
Institute, pursuant to Article 203, subparagraph II of the LPI, to carry out an inspection visit for the
purpose of checking the detained goods.
In accordance with Article 71, subparagraph III of the Regulations to the LPI, an industrial
property right holder may attend the corresponding inspection visit either in person or through anagent and may make observations which shall be entered in the record.
52. Please explain whether the competent au thorities in Mexico are empowered to act
ex officio and, if so, the enforcement action that may be taken.  (TRIPS, Article 58)
The customs authorities are not entitled to act ex officio;  they require a ruling issued by the
administrative or judicial authority competent in intellectual property matters.
Article 148 of the Customs Law and Articles 199 bis and 199 bis 1 of the LPI are applicable.
53. Please describe the remedies for infringing goods (i.e. destruction, disposal or both).
(TRIPS, Article 59)
In the event that the final ruling on the substa nce of the dispute finds that an administrative
offence has been committed, the authority shall de cide, after hearing the parties, on the final
destination of the confiscated goods.
Article 212 bis 2 of the Industrial Property Law is applicable.
54. Please clarify whether de minimis imports are excluded from the border measures
under the law of Mexico.  What constitutes a de minimis  import?  (TRIPS, Article 60)
De minimis  imports are regarded as imports of a personal nature and are not liable to be
detained by the customs authorities.
55. Please explain whether and under what circumstances seizure, forfeiture and
destruction of infringing goods and any materials and implements are available as remedies in
wilful trademark counterfeiting or copyrights piracy cases and describe the conditions under
which such penalties would be imposed.  (TRIPS, Article 61)
Industrial property
Article 223 of the Industrial Property Law defines the following as offences:
I. Repeating the conduct provided for in Article 213, subparagraphs II to XXII, of the
Industrial Property Law once the first administrative penalty imposed on that account
has become final;
II. counterfeiting marks protected by the LPI with fraudulent intent and for purposes of
commercial speculation;
III. producing, storing, transporting, introducing into the country, distributing or selling,
with fraudulent intent and for purposes of commercial speculation, articles displaying
counterfeits of marks protected by the LPI, as well as knowingly contributing or
providing, in any way, raw materials or inputs intended for the production of articlesdisplaying counterfeits of marks protected by the LPI;
IV. revealing to a third party an industrial secret that is known by virtue of employment,
position, responsibilities, exercise of a profession or business relations or as a result
of the granting of a licence for its use, without the consent of the keeper of theIP/C/W/188
Page 41
industrial secret, after having been advised of its confidential nature, for the purpose
of procuring an economic benefit for oneself or for the third party, or for the purpose
of causing injury to the keeper of the secret;
V. appropriating an industrial secret without entitlement and without the consent of the
keeper or authorized user, in order to use it or reveal it to a third party, for thepurpose of procuring an economic benefit for oneself or for the said third party, or for
the purpose of causing injury to the keeper of the industrial secret or the authorized
user thereof;  and
VI. using information inherent in an industrial secret that is known by virtue of
employment, responsibilities, position, exercise of a profession or business relations,
without the consent of the keeper or authorized user, or that has been revealed by athird party, in the knowledge that the said third party was so acting without the
consent of the keeper of the industrial secret or the authorized user thereof, for the
purpose of procuring an economic benefit or causing injury to the keeper of the
industrial secret or the authorized user thereof.
In addition, Article 223 bis provides for a prison sentence of two to six years and a fine of 100
to 10,000 days of the general minimum wage in force in the Federal District to be imposed on anyone
who, with fraudulent intent and for purposes of commercial speculation, sells items displaying
counterfeits of marks protected by the LPI to any end-consumer on the street or in a  public place.
A prison sentence of two to six years and a fine in the amount of 100 to 10,000 days of the
general minimum daily wage in force in the Federal District shall be imposed on anyone committing
an offence under subparagraphs I, IV, V or VI of Article 223, and in the case of subparagraphs II or
III of the same Article 223, a prison sentence of three to ten years and a fine of 2,000 to 20,000 days
of the general minimum wage in force in the Federal District shall be imposed. (Article 224 of theIndustrial Property Law.)
The above-mentioned offences are prosecuted at the request of the injured party.
Copyright
In the area of copyright and related rights, offences are defined and penalties established in
Title 26 of the Federal Criminal Code.
Articles 424 to 427 of the Code are applicable.Article 424.  The following shall be liable to six years' imprisonment and a 300 to 3,000 day
fine:
1. Anyone who speculates in any way with  the free textbooks distributed by the
Ministry of Education;
2. any publisher, producer or recording company that knowingly produces more copies
of a work protected by the Federal Copyright Law than authorized by the right
holder;  and
3. anyone who, fraudulently, for financial gain and without appropriate authorization,
uses works protected by the Federal Copyright Law.
Article 424 bis.  The following shall be liable to thre e to ten years' imprisonment and a 2,000
to 20,000 day fine:IP/C/W/188
Page 42
Anyone who, fraudulently, on a commercial scale and without the authorization required
under the Federal Copyright Law from the holder of the copyright or related rights, produces,
reproduces, introduces into the country, stores, transport, distributes, sells or rents out copies of
works, phonograms, videograms or books protected by the said Law.
The same penalty shall be imposed on anyone w ho knowingly contributes or provides, in any
way, raw materials or inputs intended for the production or reproduction of works, phonograms,
videograms or books referred to in the preceding paragraph or fraudulently uses, on a commercial
scale and without appropriate authorization, works protected by the above-mentioned Law;  or
Anyone who manufactures, for financial gain, a device or system designed to deactivate the
electronic protection devices of a computer programme.
Article 424 ter.  Anyone fraudulently selling to an end-consumer, on the street or in a public
place, for purposes of commercial speculation, copies of the works, phonograms, videograms or
books mentioned in the first subparagraph of the preceding Article shall be liable to imprisonment for
six months to six years and a 5,000 to 30,000 day fine.
If the copies are sold in commercial establishments or in an organized or continuing fashion,
the sale shall be subject to the provisions of Article 424 bis of this Code.
Article 426.  The following shall be liable to imprisonment for six months to two years or a
300 to 3,000 day fine:
I. Anyone who manufactures, imports, sells or rents out a device or system for decoding
an encoded programme-carrying satellite signal, without authorization from the
legitimate distributor of that signal;  and
II. anyone who, for financial gain, carries out any act for the purpose of decoding an
encoded programme-carrying satellite signal, without authorization from the
legitimate distributor of the signal.
Article 427.  Anyone who knowingly publishes a work substituting the name of the author
with another name shall be liable to imprisonment for six months to two years or a 300 to 3,000 day
fine.
It is important to note that all copyright offences are prosecuted at the request of the injured
party, except in the case of speculation with free textbooks, referred to in subparagraph 1 of
Article 424, which is prosecuted ex officio, under the terms of Article 429 of the Code.
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