Confusion ends over prerequisite for filing actions for damages

Mexico

The Supreme Court of Mexico has put an end to contradictory case law relating to the award of damages in IP matters (Case 31/2003-PS).

Under the Mexican Industrial Property Law, an IP rights holder can only file an action for infringement with the Mexican Institute of Industrial Property (IMPI) rather than a court (but IMPI decisions may be appealed before a court). Rights owners may also file an action for damages before a local or federal civil court for an indemnification of at least 40% of the sale price of each infringing product or service. However, the law does not specify whether the action should be filed simultaneously with or after the conclusion of the administrative proceedings conducted before the IMPI to obtain a resolution establishing that the IP rights have been infringed.

This lack of precision has led federal courts to issue contradictory decisions. In March 2001, the Thirteenth Civil Collegiate Tribunal established in McDonald's Sistemas de México SA de CV (Case I13oC1 C) that it was not necessary to obtain an administrative declaration of IP infringement to proceed with the judicial action for damages. The Eleventh Civil Collegiate Tribunal upheld this decision in its Ropa Modelo SA de CV decision of August 2002 (Case I11oC17 C). In March 2003, however, the Second Civil Collegiate Tribunal stated that the administrative declaration was a precondition to initiate the action for damages (Grupo Victoria SA de CV, Case I2oC22 C). It then requested that the Supreme Court clarify the law in this area.

The court sided with the 2003 ruling and held that IP owners must obtain an administrative declaration from the IMPI prior to filing an action for damages.

Roberto Arochi and Joel Gómez, Arochi Marroquín & Lindner SC, Mexico City

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