In 2008, the Federal Court for Tax and Administrative Affairs
(FCTAA) created a Specialized IP Court to decide all the cases
related to IP rights, which started work in January 2009.
But whenever cases referred to arguments based on International
IP Treaties, such as the Paris Convention or TRIPS, the files were
sent to the High Bench of the FCTAA, as this Bench had exclusive
jurisdiction in this regard.
This generated two separate problems: the magistrates of the
High Bench mostly specialized in tax issues and decisions were
delayed for months, due to the Bench's backlog.
As a result the internal law of the FCTAA was amended last
month, empowering Specialized Courts to decide cases based on
At this point the only Specialized Court at the FCTAA is the IP
Court, but there are plans to open additional Specialized Courts,
starting with one on antitrust issues.
Additionally, the Federal Contentious Administrative Proceedings
Law (FCAPL) was amended to establish the "via sumaria"
(summary venue). This reform should reduce the periods provided to
parties, authorities, and the FCTAA to prosecute the nullity trial,
by establishing shorter deadlines.
At this venue, once the Court admits the trial, it has to
indicate the date to review and determine if the trial is ready for
the issuance of the decision on the merits, which cannot exceed 60
Lawsuits challenging administrative decisions going against
precedents set forth by the Mexican Supreme Court concerning
unconstitutional laws, or precedents from the High Bench of the
FCTAA, can be studied under this new venue.
The summary venue cannot be used for fines imposed for
infringement of IP rights, and therefore it will not be used in
patent or trademark infringement cases, but cancellation cases and
other decisions by the Mexican authorities with jurisdiction on IP
matters could be challenged through it.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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Having spent years litigating IP matters, I have shared the frustration of clients who have been forced to intervene in administrative litigation because they are being frivolously accused of having committed an administrative infringement; their trademarks have been misappropriated; or their IP rights are being attacked in an ungrounded manner, through counterclaims that are filed in response to infringement actions previously filed by the owner of the IP right.
The last March 19, 2010 came into force the AGREEMENT by means of which the preceding agreement that establishes the guidelines for filing applications before the Mexican Institute of Industrial Property (MIIP), issued by the General Director of the MIIP and published in the Official Journal of the Federation on March 18, 2010, was modified.
Advocacia Pietro Ariboni Ariboni, Fabbri, Schmidt & Advogados Associados
The current Industrial Property Law, No. 9279/96, has been in
force in Brazil for over a decade. Generally speaking, the Law is
modern and in line with the principles of international treaties
such as TRIPS and the Paris Convention.
In recent days Mexico signed the Anti-Counterfeiting Trade Agreement (ACTA) in order to combat the counterfeiting and piracy of trade marks, inventions, intellectual and artistic works. Australia, Canada, Japan, Korea, Morocco, New Zealand, Singapore and the United States have all signed the agreement.
On December 13, 2011, in the case "Aventis Pharma S.A. v. Sandoz S.A. et al on patent infringement. Damages", Division 1 of the National Court of Appeals on Federal Civil and Commercial Matters examined the requirement of appraising the amount claimed when filing a complaint for patent infringement.
On November 10, 2011 Division 1 of the National Court of Appeals on Federal Civil and Commercial Matters confirmed the decision of the lower court in the case "Ediciones Proa y Alífaro, Roberto Francisco v. Fundación International Jorge Luis Borges y Kodama, María".
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