Customs joins the fight against counterfeit imports into Mexico

10/07/2009

Authors / Contact:

Adriana Ibarra-Vázquez (aiv@sanchezdevanny.com)

Turenna Ramírez-Ortiz (tramirez@sanchezdevanny.com)

Ana Gabriela Olmeda-De Alejandro (ago@sanchezdevanny.com)

 

 

The General Customs Administration (“Customs”) has implemented a new procedure to verify the authorized use of trademarks to avoid the import of infringing and counterfeit products.

 

If upon import of foreign origin products into Mexico, Customs notices that the importer is not the owner of the trademark; Customs can request the importer to produce the trademark license agreement or distribution agreement whereby the trademark owner authorizes the use of the trademark evidencing the registry thereof in the Mexican Institute of Industrial Property (“IMPI”) registry.

 

Should the importer fail to properly evidence license of the trademark, Customs can assess administrative and/or criminal implications on such import and importer and give notice to the General Prosecutor’s Office (“PGR”), so that it can initiate applicable criminal action and seizure of the counterfeit of infringing products.

 

Trademark owners or the recorded licensee can attempt to stop the importation of counterfeit products, by requesting the IMPI to issue a provisional or preliminary administrative order (similar to a preliminary injunction) intended to seize infringing products at customs or by filing  criminal actions before the PGR, requesting such authority to order the seizure of the counterfeit products at customs.

 

These measures definitely increase protection for trademark owners against the import of infringing and counterfeit products; however, they can also become an obstacle for legal trade. Therefore, it is extremely important that Company’s importing trademark protected products into Mexico ensure that the trademarks are properly registered in Mexico, that the license or distribution agreements containing such license or an extract thereof also be registered at the IMPI so that upon importers do not face any delays because of the enhanced enforcement undertaken by Customs. By the same token, if you consider that your trademark protected goods might be subject to infringement or counterfeiting in the Mexican market, please consider these actions as an effective tool to combat such unlawful use and trade.