What has been your biggest achievement of the past year?
With regard to trademark prosecution and protection, we prepared and submitted a number of briefs to obtain declarations of famous trademarks for several clients, including a leading motorcycle company and a prominent Mexican retailer. Such declarations provide public recognition of the fame of these marks and enable clients to defend themselves against third-party infringement or criminal action. Moreover, once a trademark owner has secured a declaration that its mark is well known, the Mexican Trademark Office is obliged to block any identical or confusingly similar mark in any of the 45 existing classes.
With regard to enforcement, a major retail store in Mexico was offering infringing products under a luxury brand owned by one of our clients. Our firm detected this activity and settled the matter by destroying all the infringing goods and obtaining compensation for the damages caused.
What long-lasting impact is the covid-19 pandemic likely to have had on your practice?
The Mexican Institute of Industrial Property (IMPI) closed its offices and suspended all deadlines from 26 March 2020 until reopening on 13 July 2020. However, since then, IMPI has remained fully operational. Therefore, there has been practically no impact for trademark owners with regard to either protection or enforcement.
Our law office has been fully operational throughout the period to ensure the top-quality service that our clients expect from us.
How are client demands evolving in relation to IP protection and the services that they expect?
Clients always expect fast responses but they also need top-quality service and responses that benefit from deep knowledge of their specific industry needs.
Throughout my career I have learned to detect the expectations and needs of each client depending on its necessities and industry. Therefore, we have implemented direct channels of communication to ensure that client requests, queries and actions are well managed to meet their every need. Our firm follows a strict review system to confirm that our response to each request, query or action completely satisfies the client’s needs.
How has your management style developed over the course of your career?
In our increasingly connected world, we are no longer expected to work simply as individuals. Instead, we must be able to work effectively as part of a team in order to capitalise on a diversity of thinking that provides integrated solutions for clients.
One of the firm’s main strengths is the highly qualified and specialised team that we have. Working with so many sophisticated professionals helps to keep everybody up to date on the latest developments. As such, we continue to learn from one another and to listen to and observe different perspectives within the practice. In addition, we make a point of encouraging lawyers to monitor all projects to modify existing laws and to participate actively in various committees – not only those directly involved with intellectual property, but also other organisations such as the National Association of Corporate Counsel.
What emerging trends/technologies are having the biggest affect on clients’ trademark enforcement efforts?
Due to the covid-19 pandemic and the fact that more consumers in Mexico are turning to e-commerce, there has been an increase in the use of multiple platforms (eg, Amazon and Mercado Libre) to sell counterfeit goods or foreign products that use a trademark that it is registered in Mexico by a third party. Thus, e-commerce is having the biggest impact on our clients’ trademarks, particularly as more foreign goods are being sold in Mexico through various platforms without vendors necessarily being aware that the mark under which they are being commercialised is owned by a third party, whose IP rights are thus being infringed.
In this context, our clients are now taking measures to keep a watchful eye on these platforms and to take proactive measures to enforce their IP rights.
How can brand owners work with external parties such as regulatory authorities and Customs to clamp down on counterfeiting?
Because Customs cannot commence proceedings against counterfeit goods itself, rights holders must file corresponding legal actions to obtain the seizure of illegal goods.
One strategy that has been working for trademark owners for nearly 10 years is to record trademark registrations with the Official Database for Mexican Trademark Registrations of Mexican Customs. The main purpose of this is to allow the 49 outposts of the Mexico customs authorities to promptly identify counterfeit goods being imported into the country in violation of a valid trademark registration.
Another successful strategy has been to offer training to customs officers at the various customs offices throughout Mexico. This has allowed trademark owners to educate officers about the issues that should be considered when determining whether merchandise is genuine, as well as to share information about importers, materials, distributors and countries of origin for counterfeit goods. Such training has enabled officers to identify counterfeit merchandise more easily.
Due to the pandemic, some trademark owners in the healthcare industry have enforced their IP rights not only through the actions available against trademark infringement or counterfeiting, but also through the Federal Commission for the Protection Against Health Risks, arguing that where products are counterfeit or infringing, there is no way of knowing whether they comply with the corresponding regulations; therefore, they constitute a risk to consumers.
With more and more consumers turning to e-commerce, what are the biggest challenges that trademark owners face in protecting themselves from online counterfeiters – and how can these be overcome?
The biggest challenge is to identify infringing goods that are being commercialised online. If the trademark owner is unaware that its mark is being used by a non-authorised party, how can it take any action to protect itself?
We have found that a successful first step is to register our clients’ trademarks in the databases of various platforms and then carrying out periodic surveillance for any counterfeit goods, foreign products that may use a confusingly similar mark and unauthorised sales of goods.
If we detect any violation of a client’s trademark registration, we will implement several actions. These include sending a cease and desist letter directly to the unauthorised party selling the infringing product and requesting the platform to remove the infringing product, using its own takedown system.
Taking all these actions can help our clients to overcome the challenges resulting from the rise in e-commerce.
What are the top three skills that you need to succeed in the courtroom?
Number one is preparation. Always keep learning from colleagues; continue to monitor and analyse new laws, as the best tools are constantly being updated and refined; and actively participate in different committees, not only those involved with intellectual property.
Second is analytical skills. It is vital to develop these so that you can successfully absorb and recall information and then structure arguments to prepare cases. It is also important to be creative and to find alternative solutions to problems. The research you conduct is of no use if you cannot draw any useful conclusions from it. You need to be able to absorb information and then draw reasonable and logical conclusions and assumptions. Being able to critically analyse your findings and legal strategies with a level judgement is important when putting together an argument.
Finally, organisation and good judgement are key. Successful lawyers must be organised in order to comply with tasks in a timely manner, as well as to be able to anticipate all kinds of situations.
What key legislative or judicial developments have had the biggest impact on Mexican IP enforcement in past five years?
On 5 November 2020 the new Federal Law for the Protection of Intellectual Property entered into force, replacing the Industrial Property Law. Congress enacted this in order for Mexico to meets its obligations under recently executed international treaties, including the Comprehensive and Progressive Agreement for Trans-Pacific Partnership and the United States-Mexico-Canada Agreement.
The new law has several benefits for trademark owners, including the possibility of claiming damages by:
- filing a parallel procedure (incidental) before IMPI once the plaintiff has obtained a declaration that the behaviour is infringing; and
- filing a civil or mercantile lawsuit before the civil courts.
In the second scenario, the procedure may be suspended if the counterpart files as a counterclaim a cancellation or invalidation action against the plaintiff’s registration, which will be resolved by the Trademark Office.
In addition, the Federal Copyright Law was amended on 1 July 2020, again in order for the country to meet its obligations under various international treaties. The updated law sets out a notice and takedown procedure that obliges online service providers, websites, platforms and internet search engines to remove and deny access to any infringing material, work or content upon receiving notice from the corresponding rights holder.
How do you see the IP litigation landscape evolving in the coming years?
Taking into consideration the new Law for the Protection of Intellectual Property and the amended Copyright Law, we expect to see significant improvements to IP enforcement with the possibility of claiming damages more quickly, without the need to wait for a final and non-appealable resolution from IMPI.
Additionally, considering the increase of e-commerce, we expect to see a rise in litigation relating to the commercialisation of infringing and counterfeit goods.
Juan Carlos Amaro
Juan Carlos Amaro is an attorney at law with various specialisations, whose practice focuses on IP and administrative litigation, anti-counterfeiting and constitutional law. Mr Amaro is a senior partner at Becerril Coca & Becerril SC, where he leads the IP litigation group, the trademark and copyright group, and the corporate and commercial law group. With over 25 years’ experience, he has represented domestic and international clients in more than 500 litigation cases.