Trademark anti

ProcedureCriminal penalties

In Mexico, IP crimes are investigated and prosecuted ex parte in certain cases, even though these types of crimes are considered to be felonies according to criminal law. This article is the second in a series on anti-counterfeiting in Mexico.(1) In particular, this article provides an overview of criminal actions.

Procedure

First, a criminal complaint is filed before the attorney general's office – in particular, one of the attorney's offices in charge of industrial property. The attorney's office will request the Mexican Institute of Industrial Property to prove the ownership of the trademark registration being counterfeited.

Then, the attorney general's office will grant a term to carry out an inspection in the premises of the presumed counterfeiter of the trademark registration to seize all merchandise bearing the trademark of interest. The office will thus serve the alleged counterfeiter with the criminal accusations against them. Since this type of crime is considered a felony, the presumed counterfeiter will be held in the attorney general's office during the prosecution of the criminal procedure.

The attorney general's office will request the assistance of the Mexican Institute of Industrial Property and an official expert witness. These parties will provide a written legal opinion to help the attorney general's office to determine whether the seized goods are considered counterfeit goods pursuant to the Mexican Industrial Property Law.

The attorney general's office will also have to determine whether it has been proved that a crime has occurred. If so, the attorney general's office will request the assistance of the federal criminal district judge (known as the "control judge") to issue a resolution. Such a resolution will set out what criminal penalties the alleged counterfeiter has incurred, which represents the initiation of the trial. The alleged counterfeiter will have the opportunity to present their own arguments at all times.

The trial will be carried out before a different federal criminal district judge (ie, not the control judge who initiated the trial). This judge will perform all necessary actions and provide the alleged counterfeiter with information on their right to a defence. The judge must issue a resolution within two years.

The counterfeiter may appeal the judge's resolution before another federal criminal district judge. This decision in turn may be challenged by a constitutional proceeding.

Criminal penalties

According to the Mexican Industrial Property Law, counterfeit crimes may be punished by means of:

For further information on this topic please contact Sebastián Suárez Venturo at Becerril, Coca & Becerril SC by telephone (+52 55 5263 8730) or email ([email protected]). The Becerril, Coca & Becerril SC website can be accessed at www.bcb.com.mx.

Endnotes

(1) For the first article in this series please see "Trademark anti-counterfeiting in Mexico: introduction".