Litigation

Mexico offers three main options: (1) administrative infringement proceeding before IMPI — fines, prohibition on marketing of goods, takedown of infringing content, business closure; (2) civil lawsuit for damages before the Federal Judiciary; and (3) criminal complaint before the FGR for industrial property offenses. The most effective strategy generally combines the administrative and civil routes simultaneously.

It is the process through which the owner of a trademark, patent, or other industrial property right reports an alleged infringement by a third party to IMPI. IMPI investigates, conducts inspections, may order provisional measures (seizure, temporary closure), and issues a resolution imposing administrative sanctions. It is the fastest avenue for obtaining swift action.

In proceedings before IMPI or the Federal Judiciary, you may request: seizure of infringing merchandise, suspension of infringing activities, temporary business closure, withdrawal of products from the market, takedown of website content infringing registered trademarks, and prohibition on use of the trademark or patented process. Preliminary injunctions are crucial for stopping immediate harm.

Administrative proceedings before IMPI may be resolved in 18 to 24 months. Civil judicial proceedings or appeals before the Federal Judiciary may take 2 to 5 years, depending on complexity. Amparo proceedings may further extend timelines. De Alva & Asociados pursues strategies to expedite dispute resolution wherever possible.

It is a lawsuit filed before a Federal District Court to claim economic compensation for damages caused by infringement. The LFPPI establishes a minimum compensation of 40% of the retail price of each infringing product or service, in addition to lost profits and actual damages.

An opposition is the mechanism to prevent registration of a trademark published in IMPI's Industrial Property Gazette that is identical or confusingly similar to a previously registered or pending trademark for the same or similar goods or services. It must be filed within one month of the application's publication. Constant monitoring of new applications is essential to protect your portfolio.

Nullity is an administrative litigation action before IMPI, intended to retroactively cancel all legal effects of a trademark registration or patent from the date of grant, when legal requirements were not met or third-party rights were invaded. For trademarks: similarity to prior marks, descriptiveness, bad faith. For patents: lack of novelty, absence of inventive step, excluded subject matter.

Any person with a legitimate interest may request IMPI to cancel a trademark that has not been used in Mexico for 3 consecutive years. The burden of proof falls on the registered owner to demonstrate effective use. It is a strategic tool to free up signs that block new trademark registrations. De Alva & Asociados has a high success rate in these actions.

Bad faith registration occurs when someone registers a trademark they know belongs to another, to prevent its use, extort the original owner, or capitalize on its reputation. In Mexico, it can be challenged through a nullity action on bad faith grounds — a specific ground under the LFPPI. De Alva & Asociados has experience recovering trademarks registered in bad faith.

The amparo is the constitutional protection mechanism against government acts that violate fundamental rights. In IP, it is used against IMPI, INDAUTOR, or lower court rulings considered to violate rights. It can suspend the effects of the challenged act. Mastery of the amparo process is fundamental in Mexican IP litigation practice.

A trademark or patent owner may request the National Customs Agency (ANAM) to detain allegedly counterfeit goods at the border. Preventive recordings with customs authorities and inspection procedures can lead to seizure of pirated products. De Alva & Asociados coordinates customs enforcement actions to protect its clients.

Administrative litigation is handled before IMPI (infringement, nullity, cancellation proceedings) — more agile, cost-effective, and resulting in administrative sanctions. Judicial litigation is handled before Federal Courts and the Federal Administrative Justice Tribunal, allows for civil compensation claims, and is more formal and lengthy. Both avenues are frequently combined for the best outcome.

Yes, provided the infringement occurs in Mexican territory or its effects are felt in Mexico. For cross-border e-commerce cases, specific mechanisms exist. De Alva & Asociados has experience in international IP litigation and can coordinate strategies with firms in other countries when the infringement is multinational in scope.

UDRP (Uniform Domain-Name Dispute-Resolution Policy) and LDRP (Local Dispute Resolution Policy for .mx domains) proceedings are handled before international arbitration centers (such as the WIPO Arbitration and Mediation Center) to recover domain names registered in bad faith by third parties (cybersquatting). De Alva & Asociados has experience filing and defending UDRP and LDRP claims before WIPO and other accredited centers.

The LFPPI establishes minimum compensation of 40% of the retail price of each infringing product or service, or 40% of the licensing value the owner could have charged. Additionally, actual damages (detection costs, legal fees) and lost profits may be claimed. Expert economic evidence is often required to substantiate the full damages claim.

To prove infringement you need: a valid trademark or patent registration certificate, evidence of infringing acts (photographs, samples, invoices, screenshots, witnesses), demonstration of confusing similarity with the infringing sign, and where applicable, evidence of economic damages suffered. The quality of evidence is decisive in the outcome of the proceeding.

It is a formal communication sent by the IP rights holder to the alleged infringer, demanding immediate cessation of infringing acts and, upon failure, the option to bring legal action. While not self-executing, in some cases it can resolve conflicts without litigation and establishes the infringer's knowledge of the rights (relevant for damages).

Trademark piracy and counterfeiting are criminal offenses under the Federal Penal Code. Actions include: criminal complaints before the FGR, seizure operations with ANAM support, administrative actions before IMPI, and coordination with municipal authorities for business closures. De Alva & Asociados has coordinated successful anti-piracy operations in Mexico City and other cities.

The TFJA (formerly the Federal Tax Court) has jurisdiction to process and resolve contentious trials (nullity appeals) against IMPI's final resolutions. It is the second instance before reaching the Federal Judiciary through amparo. Timelines typically range from 1 to 2 years. Its involvement is frequent in complex trademark and patent disputes.

The rights holder may: (1) use platform reporting mechanisms (Meta, TikTok, Instagram, Google) to remove infringing content; (2) request preliminary injunction measures or administrative infringement proceedings before IMPI for the takedown of infringing pages or fraudulent accounts; (3) initiate UDRP or LDRP proceedings to recover domain names; (4) file administrative complaints with IMPI or criminal reports with the FGR for e-commerce infringement. De Alva & Asociados advises on comprehensive digital protection strategies.

The LFPPI sanctions unfair competition acts related to IP: unauthorized use of distinctive signs, misleading advertising involving IP rights, disclosure of trade secrets, and acts causing consumer confusion about product origin. IMPI has jurisdiction to investigate and sanction these conducts.

Yes. Both IMPI and the Federal Judiciary may grant urgent interim measures (ex parte, without hearing the infringer) when there is a risk of irreparable harm. IMPI's provisional measures procedure can be initiated within hours, especially at trade fairs, events, or flagrant infringement situations. Speed in filing the request is critical.

The IP attorney is key to: valuing the IP rights to be licensed, negotiating royalty clauses, exclusivity, territories, sublicensing and termination provisions, ensuring the contract is valid and recordable with IMPI, and protecting the rights holder against breaches. De Alva & Asociados has extensive experience negotiating and drafting license and technology transfer agreements.

If IMPI rules against you as the complainant, you may challenge the resolution before the TFJA and subsequently through amparo before the Federal Judiciary. If you are the respondent and the resolution sanctions you, you equally have the right to challenge it. Appeal deadlines are short (15 or 30 days depending on the avenue), so acting quickly with specialized counsel is essential.

IP litigation in Mexico combines specialized technical knowledge, mastery of proceedings before IMPI, INDAUTOR, the TFJA, and the Federal Judiciary, plus business strategy. A specialized firm like De Alva & Asociados — recognized by Chambers & Partners, Legal 500, and World Trademark Review — maximizes the probability of success and minimizes legal and economic risk for the client.