In 2015, the Mexican Association for the Protection of Intellectual Property ("AMPPI") celebrated its 50th anniversary, and although this is a date to be celebrated by people far and wide, as the efforts of this and other intellectual property-related associations and colleges to lead Mexico to an Intellectual Property Law consistent with the current needs are undeniable, this is also an appropriate time to reflect on the results of such efforts and on one of the essential issues – in the opinion of the undersigned – regarding the series of problems with respect to proper protection of Intellectual Property, i.e. the compensation for damages caused by those who infringe upon such rights.

In view of the inconsistent industrial property-related court precedents existing between the late 1990s and the early 2000s with respect to the need for an administrative declaration of infringement in order for affected holders to be able to have access to a action to demand a compensation for damages, Mexico's Supreme Court, by an inconsistent court precedent1, ruled that upon an administrative declaration of infringement issued by the Mexican Institute of Industrial property ("IMPI") becoming final and conclusive, the holder whose Industrial Property Rights have been affected may have access to a court proceeding to demand a compensation for any such damages sustained by holder.

In this regard, although the judgment rendered by Mexico's Supreme Court gave legal certainty to a controversial situation and the merits of the case could thus be legitimized to avoid any possibility of inconsistent judgments – that is, those rendered by judges who issue rulings in actions for damages against administrative decisions in the declaration of infringement issued by the IMPI – the same is limited by the legislative system itself, which does not meet the needs of the holders of Industrial Property rights, resulting in serious consequences to proper protection of the Industrial Property rights in Mexico, considering that, inter alia, the time and the resources needed to have the possibility to demand a compensation are clearly excessive and, in our opinion, the various provisions set forth in our legal framework are violated.

In the first instance, Article 17 of Mexico's Constitution establishes the right of access to justice in a prompt and expeditious manner. Inconsistent court precedent number 31/2003-PS is contrary to this constitutional provision, as it creates a lengthy proceeding that would take several years for a final judgment to be rendered because, according to our current legal framework, it is required to exhaust at least six instances in order to render a judgment ordering the remedy of the damage caused. As a result, the holders of such Industrial Property Rights have been led to adapt the protection of their rights rather than infringers simply stop infringing upon their rights or infringers are imposed a penalty, in which case the only party being benefited is the authority itself.

In an international context, by means of different treaties, Mexico has committed to guarantee access to court instances in order to settle any Industrial Property disputes. For instance, Article 1715 of the North American Free Trade Agreement provides that civil judicial authorities shall settle any disputes arising from Industrial Property rights.

Therefore, the fact that an administrative authority ("IMPI") is the one having the obligation to declare the administrative infringement as a result of the violation of an Industrial Property right and the need for it to become final and conclusive, before the possibility of requesting a compensation for damages caused in a subsequent civil instance, is contrary to the international obligations acquired by Mexico and contrary to the provisions set forth in the Constitution.

Based on this series of problems, we deem it essential to make a modification to the court precedent upheld by Mexico's Supreme Court, as well as an upgrade of the industrial property that conforms to the current national and international legal framework and, in particular, that provides the holders of Industrial Property rights with the legal means which guarantee an effective protection of their rights and the compensation for any damages caused. To this end, we suggest the following:

  1. A law reform that restraints IMPI's jurisdictional activity when issuing decisions in administrative proceedings for the administrative declaration of lapse or annulment, granting powers to the Intellectual Property Chamber of the Federal Tax and Administrative-Law Tribunal to hear, in a first instance, the proceedings for the administrative declaration of annulments and the administrative infringements.
  2. A law reform that grants sufficient powers to courts (district courts on civil matters and concurrent jurisdiction courts) to substantiate and issue a ruling in those lawsuits in which the infringement of an Industrial Property right is claimed, and also to rule on the compensation for the damages caused.

This proposal suggests strengthening the protection of Industrial Property Rights and, in any event, expediting access to such protection in those proceedings in which infringement of a right in this matter is claimed, thereby complying with the obligations acquired by Mexico under the different treaties that it is a party to.


1. Inconsistent court precedent number 31/2003-PS, ruled by the first Chamber, from which court precedent 1a./J. 13/2004 derives, published in the Weekly Federal Court Report and its Gazette, Ninth Judicial Period, Volume XIX, May 2004, page 365, under the title: INDUSTRIAL PROPERTY. A PREVIOUS DECLARATION ISSUED BY THE MEXICAN INSTITUTE OF INDUSTRIAL PROPERTY WITH RESPECT TO THE EXISTENCE OF AN INFRINGEMENT TO THE RELEVANT MATTER IS NEEDED IN ORDER FOR THE ACTION TO DEMAND THE COMPENSATION FOR DAMAGES TO BE ADMISSIBLE.

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.