GRAND RAPIDS — Intellectual property rights under Mexican law offer U.S. businesses a fairly high standard of protection against IP theft, but the country’s track record in enforcement is somewhat dismal.
“The protection granted in the law is very good; the problem in Mexico is enforcing the law,” said Marie Alsace Galindo, a licensed Mexican attorney and special legal consultant on Mexican law to law firm Butzel Long. “Mexico is certainly improving, but the government is always struggling to get enough law enforcement people to maintain good control over what is going on.”
In comparison, the structure of law in the United States gives enforcement officials more capabilities, as well as the economic support, to follow up cases and prosecute counterfeiters, pirates or anyone else infringing on another’s IP rights, she said.
Galindo was one of three Butzel Long attorneys who made presentations this month at the two-day “Access Mexico” event held at GrandValleyStateUniversity‘s Van Andel Global Trade Center.
Galindo said Butzel Long has a number of automotive industry clients operating in Mexico but the firm doesn’t see a high incidence of intellectual property infringement there, particularly when compared to a country such as China, which is one of the biggest culprits in IP theft. Many people fear taking their proprietary technology to China, she said, and some simply won’t go to that country because of the infringement risks.
Although automotive engines and parts are often countfeited in China, that doesn’t happen in Mexico.
“In Mexico, the problem would more likely be conterfeited tennis shoes or T-shirts,” Galindo noted.
Every intellectual property right applies just to the jurisdiction where a copyright or patent was filed and registered, Galindo pointed out, so a company should seek protection in each country where it plans to market and sell its product.
The United States and Mexico are members of most of the same conventions. Under the international treaties of the Berne Convention and Universal Copyright Convention, for example, members agree to provide for the adequate and effective protection of the rights of authors and other copyright proprietors in literary, scientific and artistic works. If a work is first published in the United States, it is automatically susceptible to copyright protection in Mexico, Galindo said.
The same is true for a patent. The Mexican government will take into account the date of filing in the United States when it grants a patent, so the patent date under which it’s registered in Mexico will be the same as the date it was filed in the United States.
In Mexico intellectual property rights are basically divided into two categories: copyright and industrial rights. Industrial rights are geared to business and extend to patents, technology transfers, industrial secrets, industrial designs, integrated circuits, trademarks, trade names and commercial slogans and advertisements.
Infringement actions must be brought before the Mexican Institute of Industrial Property, rather than the courts. The courts become involved after the Patent Office has determined infringement has occurred. The institute is an independent entity dedicated to the enforcement of industrial rights under Industrial Property Law and in accordance with international standards. Similarly, the National Institute on Copyright handles copyright infringement.
Mexico doles out severe administrative, civil and criminal penalties for violation of copyright, patent and trademark rights. Penalties can include imprisonment, closure of commercial offices, seizure of infringing material and substantial fines.
U.S. nationals don’t need a visa to visit Mexico for pleasure or for business, Galindo noted. U.S. visitors flying into Mexico need only fill out a brief form, either a tourist or business visa form, while they’re on the plane. Other nationalities need to obtain a visa from the Mexican Consulate before they travel to Mexico.
Galindo advises executives who travel to Mexico regularly on business to get an FM3 temporary resident visa or an FM3 business visa. An FM2 visa is also available for business executives who go to Mexico for a long-term stay on behalf of their companies.