Applying federal law to industrial property

July 9, 2010

BY DANIEL SÁNCHEZ Y BÉJAR

MANAGING INTELLECTUAL PROPERTY, INTERNATIONAL BRIEFINGS, MARCH 2002

In April and May 2000, the Mexican Federal Administrative Proceedings Law was amended on a supplementary basis. The changes meant that standards for the administrative proceedings of the law became applicable to all actions filed before the Mexican Institute of Industrial Property (the IMPI). These included trade mark registration, granting of patents, nullity and infringement actions.

The first consequence of these changes to industrial property practice in Mexico concerned the legal right to appeal of those prosecuted by the IMPI. For many years, the traditional way to contest these types of resolution was through an Amparo appeal. However, in view of these amendments, an option arose to appeal the resolutions of the IMPI by means of a review recourse set out in the Federal Law for Administrative Proceedings (LFPA) or to appear before the Federal Court of Taxation and Administrative Law in an administrative lawsuit.

However, the interpretation of these amendments brought about a great deal of controversy in forums, workshops and congresses, without any harmonious agreement being reached that would satisfy all Mexican IP lawyers. Indeed, the IMPI has refused to accept the application on a supplementary basis of the Federal Law of Administrative Proceedings and all the review recourses filed before the IMPI have been dismissed.
Recently, the federal courts have issued two jurisprudences (precedent case laws) which set out the correct interpretation of these amendments. They state that the Federal Law for Administrative Proceedings is applicable on a supplementary basis to the Industrial Property Law and that in the event of official administrative actions coming before the IMPI, the former supplementary law, the Federal Code of Civil Procedure should be taken as a third supplementary alternative.

As a consequence of this, the applicability of the Federal Law of Administrative Proceedings to the actions mentioned above (including the so-called ficta refusal of the proceedings) and filed before the IMPI, is clear.