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Ley de la Propiedad Industrial (texto refundido publicado en el Diario Oficial de la Federación el 28 de junio de 2010), México

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Detalles Detalles Año de versión 2010 Fechas Entrada en vigor: 28 de junio de 1991 Adoptado/a: 27 de junio de 1991 Tipo de texto Principal legislación de PI Materia Patentes (Invenciones), Modelos de utilidad, Diseños industriales, Marcas, Indicaciones geográficas, Nombres comerciales, Esquemas de trazado de los circuitos integrados, Información no divulgada (Secretos Comerciales), Transferencia de tecnología, Propiedad Industrial Materia (secundaria) Observancia de las leyes de PI y leyes conexas, Organismo regulador de PI

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Textos principales Textos principales Inglés Law on Industrial Property (consolidated text published in the Official Journal of the Federation on June 28, 2010)        


1

MEXICO

Industrial Property Law

of June 25, 1991,

as amended by the Decree of June 28 2010

ENTRY INTO FORCE: June 29, 2010

TABLE OF CONTENTS

TITLE I General Provisions

ARTICLE 1

ARTICLE 2

ARTICLE 3

ARTICLE 4

ARTICLE 5 [Repealed]

ARTICLE 6

ARTICLE 7

ARTICLE 7bis

ARTICLE 7bis 1

ARTICLE 7bis 2

ARTICLE 8

TITLE II Inventions, Utility Models and Industrial Designs

Chapter I Preliminary Provisions

ARTICLE 9

ARTICLE 10

ARTICLE 10bis

ARTICLE 1l

ARTICLE 12

ARTICLE 13

ARTICLE 14

Chapter II Patents

ARTICLE 15

ARTICLE 16

ARTICLE 17

ARTICLE 18

ARTICLE 19

2

ARTICLE 20 [repealed]

ARTICLE 21

ARTICLE 22

ARTICLE 23

ARTICLE 24

ARTICLE 25

ARTICLE 26

Chapter III Utility Models

ARTICLE 27

ARTICLE 28

ARTICLE 29

ARTICLE 30

Chapter IV Industrial Designs

ARTICLE 31

ARTICLE 32

ARTICLE 33

ARTICLE 34

ARTICLE 35

ARTICLE 36

ARTICLE 37

Chapter V Processing of Patents

ARTICLE 38

ARTICLE 38bis

ARTICLE 39

ARTICLE 40

ARTICLE 41

ARTICLE 42

ARTICLE 43

ARTICLE 44

ARTICLE 45

ARTICLE 46

ARTICLE 47

ARTICLE 48

ARTICLE 49

ARTICLE 50

3

ARTICLE 51 [Repealed]

ARTICLE 52

ARTICLE 52bis

ARTICLE 53

ARTICLE 54

ARTICLE 55

ARTICLE 55bis

ARTICLE 56

ARTICLE 57

ARTICLE 58

ARTICLE 59

ARTICLE 60

ARTICLE 61

Chapter VI Licensing and the Transfer of Rights

ARTICLE 62

ARTICLE 63

ARTICLE 64

ARTICLE 65

ARTICLE 66

ARTICLE 67

ARTICLE 68

ARTICLE 69

ARTICLE 70

ARTICLE 71

ARTICLE 72

ARTICLE 73

ARTICLE 74

ARTICLE 75

ARTICLE 76

ARTICLE 77

Chapter VII Invalidity and Lapse of Patents and Registrations

ARTICLE 78

ARTICLE 79

ARTICLE 80

ARTICLE 81

4

TITLE III Trade Secrets

ARTICLE 82

ARTICLE 83

ARTICLE 84

ARTICLE 85

ARTICLE 86

ARTICLE 86bis

ARTICLE 86bis 1

TITLE IV Marks, Advertising Slogans and Trade Names

Chapter I Marks

ARTICLE 87

ARTICLE 88

ARTICLE 89

ARTICLE 90

ARTICLE 9l

ARTICLE 92

ARTICLE 93

ARTICLE 94

ARTICLE 95

Chapter II Collective Marks

ARTICLE 96

ARTICLE 97

ARTICLE 98

CHAPTER IIbis Well-known and famous trademarks

ARTICLE 98bis

ARTICLE 98bis 1

ARTICLE 98bis 2

ARTICLE 98bis 3

ARTICLE 98bis 4

ARTICLE 98bis 5

ARTICLE 98bis 6

ARTICLE 98bis 7

ARTICLE 98bis 8

5

ARTICLE 98bis 9

CHAPTER III Advertising Slogans

ARTICLE 99

ARTICLE 100

ARTICLE 101

ARTICLE 102

ARTICLE 103

ARTICLE 104

CHAPTER IV Trade Names

ARTICLE 105

ARTICLE 106

ARTICLE 107

ARTICLE 108

ARTICLE 109

ARTICLE 110

ARTICLE 111

ARTICLE 112

CHAPTER V Registration of Marks

ARTICLE 113

ARTICLE 114

ARTICLE 115

ARTICLE 1l6

ARTICLE 117

ARTICLE 118

ARTICLE 119

ARTICLE 120 [Repealed]

ARTICLE 121

ARTICLE 122

ARTICLE 122bis

ARTICLE 123

ARTICLE 124

ARTICLE 125

ARTICLE 126

ARTICLE 127

ARTICLE 128

6

ARTICLE 129

ARTICLE 130

ARTICLE 131

ARTICLE 132 [Repealed]

ARTICLE 133

ARTICLE 134

ARTICLE 135

CHAPTER VI Licensing and Assignment of Rights

ARTICLE 136

ARTICLE 137

ARTICLE 138

ARTICLE 139

ARTICLE 140

ARTICLE 141

ARTICLE 142

ARTICLE 142bis

ARTICLE 142bis 1

ARTICLE 142bis 2

ARTICLE 143

ARTICLE 144

ARTICLE 145

ARTICLE 146

ARTICLE 147

ARTICLE 148

ARTICLE 149 [Repealed]

ARTICLE 150

CHAPTER VII Invalidity, Lapse and Cancellation of Registration

ARTICLE 151

ARTICLE 152

ARTICLE 153

ARTICLE 154

ARTICLE 155

7

TITLE V Appellations of Origin

CHAPTER I Protection of Appellations of Origin

ARTICLE 156

ARTICLE 157

ARTICLE 158

ARTICLE 159

ARTICLE 160

ARTICLE 16l

ARTICLE 162

ARTICLE 163

ARTICLE 164

ARTICLE 165

ARTICLE 166

ARTICLE 167

ARTICLE 168

Chapter II Authorization of Use

ARTICLE 169

ARTICLE 170

ARTICLE 171

ARTICLE 172

ARTICLE 173

ARTICLE 174

ARTICLE 175

ARTICLE 176

ARTICLE 177

ARTICLE 178

TITLE V bis Layout Designs of the Integrates Circuits

ARTICLE 178bis

ARTICLE 178bis 1

ARTICLE 178bis 2

ARTICLE 178bis 3

ARTICLE 178bis 4

ARTICLE 178bis 5

ARTICLE 178bis 6

ARTICLE 178bis 7

8

ARTICLE 178bis 8

ARTICLE 178bis 9

TITLE VI Administrative Procedures

Chapter I General Rules of Procedure

ARTICLE 179

ARTICLE 180

ARTICLE 181

ARTICLE 182

ARTICLE 183

ARTICLE 184

ARTICLE 185

ARTICLE 186

Chapter II Administrative Action Procedure

ARTICLE187

ARTICLE 188

ARTICLE 189

ARTICLE 190

ARTICLE 191

ARTICLE 192

ARTICLE 192bis

ARTICLE 192bis 1

ARTICLE 193

ARTICLE 194

ARTICLE 195

ARTICLE 196

ARTICLE 197

ARTICLE 198

ARTICLE 199

ARTICLE 199bis

ARTICLE 199bis 1

ARTICLE 199bis 2

ARTICLE 199bis 3

ARTICLE 199bis 4

ARTICLE 199bis 5

ARTICLE 199bis 6

ARTICLE 199bis 7

9

ARTICLE 199bis 8

Chapter III Appeal for Reconsideration

ARTICLE 200

ARTICLE 201

ARTICLE 202

TITLE VII Inspection, Administrative Infringements and Sanctions, and

Offenses

Chapter I Inspection

ARTICLE 203

ARTICLE 204

ARTICLE 205

ARTICLE 206

ARTICLE 207

ARTICLE 208

ARTICLE 209

ARTICLE 2l0

ARTICLE 211

ARTICLE 212

ARTICLE 212bis

ARTICLE 212bis 1

ARTICLE 212bis 2

Chapter II Administrative Infringements and Sanctions

ARTICLE 213

ARTICLE 214

ARTICLE 2l5

ARTICLE 216

ARTICLE 217

ARTICLE 218

ARTICLE 219

ARTICLE 220

ARTICLE 22l

ARTICLE 221bis

ARTICLE 222

10

Chapter III Offenses

ARTICLE 223

ARTICLE 223bis

ARTICLE 224

ARTICLE 225

ARTICLE 226

ARTICLE 227

ARTICLE 228

ARTICLE 229

Transitional Provisions (Omitted)

11

TITLE I GENERAL PROVISIONS

ARTICLE 1.

The provisions of this Law are a matter of public policy enforceable

throughout the Republic, without prejudice to the provisions of the

international treaties to which Mexico is party. Its administrative

enforcement is incumbent on the Federal Executive through the Mexican

Institute of Industrial Property.

ARTICLE 2.

The purpose of this Law is to:

I. Lay the foundations to permit the country’s industrial and trade

activities to have a permanent system for the improvement of their processes

and products;

II. Promote and encourage inventive steps with industrial applications

technical improvements and the dissemination of technological knowledge

in production sectors;

III. Promote and support quality improvements of goods and services from

the industry and trade in a manner consistent with the interests of

consumers;

IV. Encourage creativity in the design and presentation of novel and useful

products;

V. Protect industrial property by means of regulation and granting of

invention patents; registration of utility models, industrial designs,

trademarks and advertisements; publication of commercial names; actions

to protect appellations of origin and regulation of trade secrets;

VI. Prevent acts against industrial property or acts that constitute unfair

competition in relation to industrial property, and implement sanctions

and penalties for such acts and

VII. Establish legal certainty between parties in the operation of

franchises, and guarantee non-discriminatory treatment of all franchisees

from the same franchisor.

12

ARTICLE 3.

For the purposes of this Law:

I. “This Law” refers to the Industrial Property Law;

II. “International Treaties” refers to those treaties concluded by Mexico

in compliance with the Law on the Conclusion of Treaties;

III.〔Repealed〕

IV. “Institute” refers to the Mexican Institute of Industrial Property;

V. “Official Journal” refers to the Official Journal of the Federation;

VI. “Gazette” refers to the Gazette mentioned in Article 8 of this Law.

ARTICLE 4.

No patent, registration or authorization shall be granted, nor shall any

publicity be given in the Gazette to any of the legal authorities or

institutions governed by this Law, where their contents or substance are

contrary to public policy, morality or proper practice, or if said contents

or substance violate any legal provision.

ARTICLE 5. Repealed

ARTICLE 6.

The Mexican Institute of Industrial Property, the administrative authority

in industrial property matters, is a decentralized body with legal

personality and its own assets, which shall be empowered to:

I. Liaise with the administrative units of the Ministry of Trade and

Industrial Development, and with the different national, foreign and

international public and private institutions of which their purpose is

to promote and protect industrial property rights, to transfer technology

to study and promote technological development, to implement innovations,

to establish differentiation of goods and to provide information and

technical cooperation as required by the proper authorities in compliance

with the standards and policies established for such purpose;

II. Encourage the industrial sector involvement in the development and

implementation of technology to improve its quality, competitiveness and

productivity and conduct research on the progress and implementation of

13

national and international industrial technology and its effect on the

achievement of such aims, as well as propose policies to stimulate

development;

III. Process applications for and, where appropriate, grant invention

patents and utility model registrations industrial designs, trademarks

and advertisements, Issue declarations to the effect that trademarks are

well known, issue declarations of protection for appellations of origin,

authorizetheusethereof,publishcommercialnamesandalsorecordrenewals

thereof and the transfer or licensing of their use and exploitation, and

such other powers as are conferred on it by this Law and the regulations

thereunder, for the recognition and preservation of industrial property

rights;

IV. Substantiate proceedings for the invalidation, lapse and cancellation

ofindustrialpropertyrights,handdownrulingsandissuethecorresponding

administrative actions, in compliance with the provisions of this Law

and the Regulations thereunder and, in general, rule on such requests

as may arise as a result of the implementation of this Law;

V. Conduct investigations into alleged administrative infringements,

arrange and conduct inspections request information and particulars, order

and implement precautionary measures to prevent or stop violations of

industrial property rights; hear alleged infringers speak in their defense

and impose the appropriate administrative sanctions in industrial property

matters;

VI. Appoint experts when requested to do so under the Law; issue such

technical rulings as may be required by individuals or by the Federal

Public Prosecutor and take such proceedings and collect such proof as

may be necessary for the issue of said rulings;

VII. Act as receiver when so designated under the Law, and make available

to the proper authorities all goods as have been entrusted to it;

VIII. Substantiate and settle the administrative appeals provided for

in this Law that are lodged against the rulings handed down by it, relating

to acts performed pursuant to this Law the regulations thereunder and

other relevant provisions;

IX. act as arbitrator in the settlement of disputes relating to the payment

14

of damages for violation of the industrial property rights protected by

this Law where the parties to said disputes expressly designate it as

such, in compliance with the provisions contained in Title IV of Part

V of the Code of Commerce;

X.Carryoutthelegalpublication,theGazette,anddisseminateinformation

derived from patents, registrations, declarations of notoriety or fame

of brands, authorizations and publications granted and any other

information relating to industrial property rights conferred by this Law

and establish the general rules for managing transactions through

electronic media and putting it into operation;

Be published in the issue of the month immediately following their issuance,

all rulings issued in the administrative action procedures as provided

by this Act and petitions to amend the terms or scope of patents or

registrations granted shall be published in the monthly issue immediately

after their issuance;

XI. Disseminate, advise and render services to the public in industrial

property matters;

XII. Promote the creation of industrially applicable inventions, support

the development and use of said inventions in industry and trade. and

encourage technology transfer through:

(a) Disclosure of documents on inventions published either in Mexico or

abroad, and consultancy and use thereof;

(b) Compilation, updating and distribution of individuals or companies

concerned with the making of inventions and with technological research

work;

(c) Holding of competitions, contests or exhibitions and awarding of prizes

and other recognition to promote inventive steps, design creativity and

presentation of goods;

(d) Assistance to firms or financial intermediaries undertaking or

financing the manufacture of prototypes and the industrial or commercial

development of specific inventions;

(e) Dissemination of the provisions of this Law and their scope among

individuals, groups, associations or institutions concerned with research,

higher education or technical assistance in order to facilitate their

work during the creation of inventions and their subsequent industrial

and commercial development; and

(f) Conclusion of agreements providing for cooperation, coordination and

concerted action with the governments of federated entities, and also

15

with national or foreign public or private institutions to promote and

encourage industrially and commercially applicable inventions and

creations;

XIII. Participate in encouragement and support programs for the protection

of industrial property with a view to the generation, development and

implementation of Mexican technology in the economic activities, as well

as to improve productivity and competitiveness;

XIV. Compile and update the files of inventions published in Mexico and

abroad;

XV. Conduct researches of the prior art in all industry and technology

sectors;

XVI. Promote international cooperation through the exchange of

administrative and legal experience with institutions responsible for

the registration and legal protection of industrial property abroad,

including among others: vocational training of staff, transfer of work

and organizational methodology, exchange of publications and updating

of documents and databases in the industrial property field;

XVII. Conduct studies on the industrial property situation at world-scale

and take part in international meetings or fora concerned with said subject;

XVIII. Act as an advisory body on industrial property matters for the

various departments and agencies of the Federal public administration,

and also advise social and private institutions;

XIX. Take part in the training of human resources specialized in the various

industrial property disciplines by means of the design and implementation

of training, teaching and specialization programs and courses for

professional, technical and auxiliary staff;

XX. Devise and implement an institutional operations program;

XXI. Take part in negotiations lying within its sphere of competence in

coordination with the proper units of the Ministry of Trade and Industrial

Development; and

XXII. Render such other services and take such measures as are necessary

16

for the due exercise of its powers under this Law and any other legal

provisions applicable.

ARTICLE 7.

The Institute’s administrative bodies shall be the Board of Directors

and the Director General, who shall have the powers provided for in the

Federal Law of Public-Sector Bodies and in the legal enactment by which

it was created, without prejudice to the provisions of Articles 6 and

7 bis 2 of this Law.

ARTICLE 7 bis.

The Board of Directors shall be composed of 10 representatives:

I. The Minister of Trade and Industrial Development, who shall preside

over it;

II. One representative appointed by the Ministry of Trade and Industrial

Development;

III. Two representatives appointed by the Ministry of Finance and Public

Credit;

IV One representative each of the Ministry of Foreign Affairs, the Ministry

of Agriculture and Hydraulic Resources, the Ministry of Public Education

the Ministry of Health, and of the National Science and Technology Council

and the National Metrology Center.

An alternate shall be appointed for each head representative, and shall

attend the sessions of the Board of Directors in the absence of the head

representative, with all the powers and rights accruing to him.

ARTICLE 7 bis.1.

The Director General or an equivalent officer is the Institute’s legal

representative and shall be appointed by the Board of Directors on a proposal

by the Federal Executive, acting through the Minister of Trade and

Industrial Development.

ARTICLE 7 bis.2.

The Director General of the Institute shall, by means of agreement published

in the Official Journal, frame the rules and specifications of the requests

as well as the procedures and specific requirements to facilitate the

operation of the Institute and to guarantee the juridical safety of the

17

individuals, including the general rules for the management of steps across

mass media electronics.

ARTICLE 8.

The Institute shall issue the Gazette on a monthly basis, in which the

publications referred to in this Law shall be made and any information

with a bearing on industrial property and such other subjects as may be

specified shall be made public. Acts recorded in said organ of information

shall be binding on third parties from the day following the date on which

said acts are distributed, and that date shall be specified on each Gazette

copy.

18

TITLE II Inventions, Utility Models and Industrial Designs

CHAPTER I Preliminary Provisions

ARTICLE 9.

An individual who makes an invention or utility model or creates an

industrial design, or his successor in title, shall have the exclusive

right to use said invention, utility model or industrial design for their

benefit, either themselves or through third parties with their consent

in compliance with the provisions of this Law and the regulations

thereunder.

ARTICLE 10.

The right referred to in ARTICLE 9 shall be granted in the form of a patent

for inventions and in the form of a registration for utility models and

industrial designs.

ARTICLE 10 bis.

The right to obtain a patent or a registration shall belong to the inventor

or designer, as the case may be, without prejudice to the provisions of

Article 14 of this Law. If the invention, utility model or industrial

design has been made jointly by two or more persons the right to obtain

the patent or registration shall belong to them jointly.

Where several individuals make the same invention or utility model

independently of each other, the person who files the first application

for said invention or utility model or claims the earliest priority shall

have the prevailing right to obtain the patent or registration, provided

that the application is not abandoned or refused.

The right to obtain a patent or registration may be transferred by intervivos

transaction or by succession.

ARTICLE 11.

Patent or registration owners may be individuals or companies.

ARTICLE 12.

For the purposes of this Title:

I. “Novel” refers to anything not found in the prior art;

II. “ Prior art” refers to all the technical knowledge that has been made

public by oral or written means, by use or by any other dissemination

19

or information means, either in Mexico or abroad;

III. “Inventive step” refers to the creative process where the results

of which are not obvious from the prior art to a person skilled in the

art;

IV. Industrial application, the possibility that an invention has practical

utility or can be made or used in any branch of economic activity, for

the purposes stated in the application;

V. “Claim” refers to the essential characteristic of a product or process

for which protection is precisely and specifically claimed in the

application for a patent or registration and granted, where appropriate,

in the corresponding title; and

VI. “Filing date” refers to the date on which the application is filed

with the Institute, or with the local offices of the Ministry of Trade

and Industrial Development within the country, provided that it meets

the requirements specified in this Law and the regulations thereunder.

ARTICLE 13.

The individual(s) claiming to be the inventor(s) application for a patent

or registration shall be presumed to be the inventor(s). The inventor(s)

shall have the right to be mentioned in the corresponding title or to

refuse such mention.

ARTICLE 14.

The provisions of Article 163 of the Federal Labor Law shall be applicable

to inventions, utility models and industrial designs made by individuals

under employment relationships.

20

CHAPTER II Patents

ARTICLE 15.

Any human creation that allows matter or energy existing in nature to

be transformed for use by man for the satisfaction of his specific needs

shall be considered an invention.

ARTICLE 16.

Novel inventions resulting from an inventive step and subject to industrial

applicability under the terms of this Law shall be patentable, with the

exception of:

I. Essentially biological processes for obtaining, reproducing and

propagating plants and animals;

II. Biological and genetic material as found in nature;

III. Animal breeds;

IV. The human body and the living matter constituting it; and

V. Plant varieties.

ARTICLE 17.

The prior art on the filing date of the patent application or, where

applicable,therecognizedprioritydate,shallbeusedtodeterminewhether

an invention is novel and involves an inventive step. Furthermore, in

order to determine whether an invention is novel, the prior art shall

include all patent applications filed in Mexico prior to said date and

still pending, even if the publication referred to in Article 52 of this

Law occurs at a later date.

ARTICLE 18.

The disclosure of an invention shall not prevent it from continuing to

be considered novel where, within the 12 months prior to the filing date

of the patent application or where applicable, the recognized priority

date, the inventor or his successor in title has made the invention public

by any means of communication, by putting it into practice or by displaying

it at a national or international trade show. When the corresponding

application is filed, the confirming documentation shall be included in

the manner laid down in the regulations under this Law.

21

The publication of an invention contained in a patent application or in

a patent granted by a foreign office shall not be regarded as corresponding

to any of the situations referred to in this Article.

ARTICLE 19.

For the purposes of this Law, the following shall not be considered

inventions:

I. Theoretical or scientific principles;

II. Findings that consist in making public or disclosing something that

already existed in nature, even though it was previously unknown to man;

III. Diagrams, plans, rules and methods for carrying out mental processes,

playing games or doing business, and mathematical methods;

IV. Software;

V. Methods to present information;

VI. Aesthetic creations and artistic or literary works;

VII. Surgical and therapeutic treatment or diagnostic methods applicable

to the human body and to animals; and

VIII. Juxtaposition of known inventions or mixtures of known products,

or alteration of the use, form, dimensions or materials thereof, except

where in reality they are so combined or merged so that they cannot function

separately or where their particular features or functions have been so

modified as to produce an industrial result or their use is not obvious

to a person skilled in the art.

ARTICLE 20. Repealed

ARTICLE 21.

The right conferred by the patent shall be determined by the claims as

approved. Descriptions and blueprints or, where applicable, the deposit

of biological material referred to in Article 47, subparagraph I of this

Law, shall be used to interpret them.

22

ARTICLE 22.

The right conferred by a patent shall not have any effect against the

following:

I.Athirdpartywho,intheprivateoracademicsphereandfornon-commercial

purposes, engages in scientific or technological research activities for

purely experimental, testing or teaching purposes, and to that end

manufactures or uses a product or a process identical to the one patented;

II. Any person who markets, acquires or uses the patented product or the

product obtained by means of the patented process, after said product

has been lawfully placed on the market;

III. Any person who, prior to the filing date of the patent application

orwhereapplicabletherecognizedprioritydate,usesthepatentedprocess,

manufactures the patented product or undertakes the necessary preparations

for such use or manufacture;

IV. The use of the invention referred to in transportation vehicles of

other countries when it forms part of such vehicles and when the vehicles

are in transit within the national territory;

V. A third party who, in the case of patents relating to living matter,

makes use of the patented product as an initial source of variation or

propagation to obtain other products, except where such use is made

repeatedly; and

VI. A third party who, in the case of patents relating to products consisting

of living matter, uses, distributes or markets the patented products for

purposes other than multiplication or propagation, after said products

have been lawfully placed on the market by the patent owner or by a licensee.

Performance of any activity provided for in this Article shall not

constitute an administrative infringement or offense within the scope

of this Law.

ARTICLE 23.

The patent shall have a non-renewable term of 20 years, starting from

the filing date and shall be subject to payment of the relevant fees.

ARTICLE 24.

Once the patent has been granted, the patent owner may seek damages from

23

third parties who, prior to the grant, made use of the patented process

or product without his consent, where said use is made after the date

on which publication of the application in the Gazette takes effect.

ARTICLE 25.

The exclusive right of use of the patented invention shall confer the

following prerogatives to its owner:

I. If the subject of the patent is a product, the owner has the right

to prevent others from manufacturing, using, selling, offering for sale

or importing the patented product without his consent; and

II. If the subject of the patent is a process, the owner has the right

to prevent others from using said process and from using, selling, offering

for sale or importing the product obtained directly by means of the process

without his consent.

Use made by the person referred to in Article 69 of this Law shall be

considered made by the patent owner.

ARTICLE 26.

The existence of a patent, either pending or granted, may be mentioned

only in the case of products or processes covered by any of said situations.

24

CHAPTER III Utility Models

ARTICLE 27.

Utility models that are novel and industrially applicable shall be eligible

for registration.

ARTICLE 28.

Objects, items, appliances or tools which, as a result of a modification

in their arrangement, configuration, structure or form, offer a different

function with respect to their component parts or advantages regarding

their usefulness shall be considered utility models.

ARTICLE 29.

Utility models registration shall have a non-renewable term of 10 years

starting from the filing date and shall be subject to payment of the relevant

fees.

The use of the utility model and the limitations of the right conferred

ontheownerasaresultofitsregistrationshallbegoverned,asappropriate,

by the provisions of Articles 22 and 25 of this Law.

ARTICLE 30.

The regulations contained in Chapter V of this Title, with the exception

of Articles 45 and 52, shall apply as appropriate to the processing of

a utility model registration.

25

CHAPTER IV Industrial Designs

ARTICLE 31.

Industrially applicable and novel industrial designs shall be eligible

for registration.

Designs that are created independently of known designs or combinations

of known features of designs, and which differ significantly therefrom,

shall be considered as novel.

The protection conferred to an industrial design shall not cover those

elements or features that were dictated solely by technical considerations

or by the performance of a technical function, and which do not embody

any arbitrary contribution on the part of the designer; it shall likewise

not cover those elements or features of which their exact reproduction

was necessary to allow the product incorporating the design to be

mechanically assembled or connected to another product of which it

constitutes an integral part or component; this limitation shall not apply

to goods in which the design element lies in a shape or form intended

to permit the multiple assembly or connection of the goods or their

interconnection within a modular system.

An industrial design shall not be protected where its appearance consists

solely of the elements or features referred to in the previous paragraph.

ARTICLE 32.

Industrial designs shall include:

I. Industrial blueprints, which are any combination of shapes, lines or

colors incorporated in an industrial product for ornamentation purposes

and which give it a specific appearance of its own; and

II. Industrial models, which are constituted by any three-dimensional

shape that serves as a model or pattern for the manufacture of an industrial

product, giving it a special appearance that does not involve any technical

effects.

ARTICLE 33.

The following shall be enclosed with the applications for the registration

of industrial designs:

I. A graphic or photographic reproduction of the design concerned; and

II. An indication of the type of product for which the design will be

26

used.

ARTICLE 34.

The description submitted in the application shall refer briefly to the

design’s graphic or photographic reproduction of the design, with a clear

indication of the angle from which the illustration is depicted.

ARTICLE 35.

The industrial design name shall be given in the application in the form

of a claim followed by the words “as referred and illustrated”

ARTICLE 36.

Industrial designs registration shall have a non-renewable term of 15

years, starting from the filing date and shall be subject to the payment

of the relevant fees.

The use of industrial designs and the limitation of the rights conferred

on the owner as a result of their registration shall, where appropriate,

be governed by the provisions of Articles 22 and 25 of this Law.

ARTICLE 37.

The process of registering industrial designs shall, where appropriate,

be carried out in compliance with the rules contained in Chapter V of

this Title, with the exception of Articles 45 and 52.

27

CHAPTER V Processing of Patents

ARTICLE 38.

In order to obtain a patent a written application shall be filed with

the Institute in which the inventor and applicant’s name and address,

the nationality of the latter, the invention’s name and any other data

required by this Law and the regulations thereunder shall be included,

along with the receipt of the relevant fees, including those relating

to the procedure and of substance examinations.

The pending patent application and its addenda shall be confidential until

publication.

ARTICLE 38 bis.

The Institute shall recognize as the filing date of a patent application

the date and hour of filing of the application, provided that said

application complies with the requirements laid down in Articles 38, 47,

subparagraphs I and III, 179 and 180 of this Law.

Where the application does not comply with the requirements laid down

in the previous paragraph as of the filing date, the date on which it

does comply with said requirements shall be considered as the filing date.

The filing date shall determine the preemptive right.

The regulations under this Law may provide for other means by which

applications and other submissions may be filed with the Institute.

ARTICLE 39.

The patent may be applied for directly by the inventor or by his successor

in title or through his representatives.

ARTICLE 40.

Where a patent is requested having been applied for abroad, the filing

date in the country of first filing may be recognized as the priority

date, provided that filing in Mexico occurs within the periods specified

by international treaties or, otherwise, within 12 months after the

application for a patent in the country of origin.

ARTICLE 41.

To give priority referred to in the preceding article shall meet the

following requirements:

I. Upon application for the patent, priority shall be claimed and the

country of origin and the date on which the application was filed in that

28

country shall be specified;

II. The application filed in Mexico shall not seek the grant of rights

additional to those deriving from the application filed abroad.

For rights additional to those arising from the application filed abroad

as a whole, the priority shall be only partial and relative to this

application. The request for additional rights may be a new recognition

of priority or, failing that, they will be subject to examination for

novelty that corresponds to the filing date referred to in Article 38

bis;

III. The requirements specified in international treaties, this Law and

the regulations thereunder shall be complied with within 3 months after

filing the application.

IV. 〔Repealed〕

ARTICLE 42.

Where several inventors have made the same invention independently of

each other, the patent rights shall belong to the inventor whose application

bears the earliest filing date or recognized priority date, as the case

may be, provided that said application is not rejected or abandoned.

ARTICLE 43.

The patent application shall refer to a single invention, or to a group

of inventions so related to each other that they constitute a single

inventive concept.

ARTICLE 44.

If the application does not meet the provisions of the previous Article,

the Institute shall notify the applicant in writing so that, within a

2-month period he may divide it into several applications, retaining as

the date of each one that of the first application and that of any recognized

priority. If, on expiration of the period allowed, the applicant has not

divided the application, it shall be considered abandoned.

Where the applicant complies with the provisions of the previous paragraph,

the divisional applications shall not be published as provided for in

Article 52 of this Law.

ARTICLE 45.

A single patent application may contain:

29

I. Claims relating to a finished product and claims relating to processes

specially devised for its manufacture or use;

II. Claims relating to a certain process and claims relating to an apparatus

or means specially devised for its application; and

III. Claims relating to a finished product and claims relating to a process

specially devised for its manufacture and to an apparatus or means specially

devised for its application.

ARTICLE 46.

The process and machinery or apparatus for producing a utility model or

an industrial design shall be subject of patent applications independent

of the application for registration of said model or design.

ARTICLE 47.

A patent application shall be accompanied by:

I. The description of the invention, which must be sufficiently clear

and complete to enable a full understanding of it and, where appropriate,

to guide its accomplishment for a person who possesses know-how and average

knowledge in the matter. Likewise, when it is not clear from the description

of the invention, it must also include the best method known to the applicant

to implement the invention, as well as information that illustrates the

industrial application of the invention. In the case of biological material

where the description of the invention cannot itself be sufficiently

detailed, the application shall be completed with a record of the deposit

of the material at an institution recognized by the Institute, in compliance

with the provisions of the regulations under this Law;

II. The blueprints required for the description to be understood;

III. One or more claims, which shall be clear and concise and may not

exceed the contents of the description; and

IV. An abstract of the description of the invention, which shall serve

solely for the publication thereof and as an element of technical

information.

ARTICLE 48.

Where a patent application has to be divided, the applicant shall submit

30

the descriptions, claims and blueprints necessary for each application,

with the exception of the documentation relating to the priority claimed

and the translation thereof included in the initial application and, where

appropriate, the assignment of rights and power of attorney. The blueprints

and descriptions submitted shall not be altered in any way that might

modify the invention referred to in the original application.

ARTICLE 49.

The applicant may convert the patent application into one for the

registration of a utility model or industrial design and vice versa, where

it appears from the contents of the application that they are not consistent

with the title of protection applied for.

The applicant may make such a conversion of the application only within

three months of the filing date or within three months of the date on

which the Institute requires him to make the conversion, provided that

the application has not been abandoned. If the applicant does not convert

the application within the time allowed by the Institute, the application

shall be considered abandoned.

ARTICLE 50.

Once the application has been filed, the Institute shall perform a formal

examination of the documents, and may require that further details or

clarifications be provided wherever it considers this necessary, or that

omissions be rectified. If the applicant fails to fulfill this requirement

within two months, the application shall be considered abandoned.

ARTICLE 51. Repealed

ARTICLE 52.

The publication of the pending patent application shall take place as

soon as possible following the expiration of the 18-month period from

the filing date or, where applicable, from the date of recognized priority.

At the request of the applicant the application shall be published prior

to the expiration of said period.

ARTICLE 52 bis.

The Institute may receive information within six months from the date

of publication in the Gazette from any person on the application that

complies with the provisions of Articles 16 and 19 of this Act.

The Institute may, when deemed appropriate, without being obliged to decide

on the scope thereof, consider the information and technical support

31

documents for the consideration of background on the request made. The

Institute, if deemed appropriate, will review applicant data and documents

submitted to it and will give a period to state in writing the arguments

about his rights.

The presentation of information does not suspend the proceeding, nor confer

on the person that has made the character of interest, or third hand,

and, where applicable, shall exercise the actions envisaged in Article

78 of this Law.

ARTICLE 53.

Once the patent application has been published and the relevant fees have

been paid, the Institute shall conduct a substantive examination of the

invention in order to determine whether the requirements specified in

Article 16 of this Law are complied with, or whether the invention is

covered by any of the situations provided for in Articles 16 and 19 of

this Law.

In order to conduct substantive examinations, the Institute may, where

appropriate, request the technical support of national specialized

agencies and institutions.

ARTICLE 54.

The Institute may accept or request the findings from substantive

examinations or the equivalent thereof conducted by foreign patent offices

or, where appropriate, a plain copy of the patent granted by any of said

foreign offices.

ARTICLE 55.

The Institute may call upon the applicant in writing to submit, within

a period of two months, such additional or complementary information or

documentation as may be necessary, including that which relates to

researches or examinations undertaken by foreign offices, to alter the

claims, description or blueprints, or to make such clarifications as it

deems relevant where:

I. In the opinion of the Institute this is necessary for the conduct of

the substantive examination; and

II. During or as a result of the substantive examination it transpires

that the invention, as identified in the application, does not meet the

patentability requirements or falls into any of the cases provided for

in Articles 16 and 19 of this Law.

32

If within the period referred to in this Article the applicant does not

comply with the request served on him, his application shall be considered

abandoned.

ARTICLE 55 bis.

Documents submitted either in compliance with any of the requests referred

to in Articles 50 and 55 of this Law or in the case of voluntary amendments

may not contain additional material or claims that give a scope greater

than that contained in the original application considered as a whole.

Voluntary amendments shall be accepted only up to before the issue of

the decision on the appropriateness or otherwise of the grant of a patent

referred to in Articles 56 and 57 of this Law.

ARTICLE 56.

Where the Institute refuses the patent, it shall notify the applicant

in writing, stating the legal basis and grounds for its decision.

ARTICLE 57.

Where it is found that the grant of a patent may proceed, the applicant

shall be notified in writing so that, within a period of two months, he

meets the necessary requirements for its publication and submits to the

Institute a receipt of the fees for the issue of the title. If the applicant

does not meet the provisions of this Article within the fixed period,

the application shall be considered abandoned.

ARTICLE 58.

The person concerned shall be allowed an additional 2-month period to

comply with the requirements referred to in Articles 44, 50, 55 and 57

of this Law, without having to request it, subject to proof of payment

of the fee applicable to the month of compliance.

The period referred to in the previous paragraph shall run as from the

day following the day on which the 2-month period provided for in the

Articles referred to above expires.

The application shall be considered abandoned if the applicant fails to

comply with the requests served on him within the initial period or the

additional period provided for in this Article, or if he fails to provide

a receipt of the relevant fees.

ARTICLE 59.

The Institute shall issue the patent owner with a certificate for each

patent, as proof and official recognition. The certificate shall comprise

33

one copy of each of the description, claims and blueprints, if any, and

shall specify the following:

I. The number and classification of the patent;

II. The name and address of the person(s) to whom it is issued;

III. The name of the inventor(s);

IV. The filing date of the application and any recognized priority date,

as well as the issue date of the patent;

V. The invention’s name; and

VI. The effective and expiration date to maintain existing rights,

specifying that it will be subject to payment of fees under the terms

established by law.

ARTICLE 60.

Once the patent has been granted, the Institute shall proceed with its

publication in the Gazette, which shall contain the information referred

to in Articles 47, subparagraph IV, and 59 of this Law.

ARTICLE 61.

Changes in the text or blueprints of the patent protection title may be

allowed only under the following circumstances:

I. To correct any obvious errors or errors in form; and

II. To limit the scope of the claims.

The changes authorized shall be published in the Gazette.

34

CHAPTER VI Licensing and Transfer of Rights

ARTICLE 62.

The rights conferred by a patent or registration, or those deriving from

a pending application may be encumbered and transferred either wholly

or partially under the conditions and formalities laid down in ordinary

legislation. For the transfer of rights or encumbrance to be binding on

third parties, it shall be registered with the Institute.

A single request may be filed seeking ownership transfer registration

of two or more pending applications or two or more patents or registrations

where the transferor and transferee are the same persons in each case.

The applicant shall identify each of the applications, patents or

registrations in respect of which the entry is to be made. The appropriate

fees shall be paid according to the number of applications, patents or

registrations involved.

ARTICLE 63.

The patent or registration owner may, by virtue of an agreement, license

the use thereof. The license shall be registered with the Institute to

be binding on third parties.

A single request may be filed seeking rights licensing registration in

two or more pending applications or two or more patents or registrations

where the licensor and licensee are the same persons in each case. The

applicant shall identify each of the applications, patents or registrations

in respect of which the entry is to be made. The appropriate fees shall

be paid according to the number of applications, patents or registrations

involved.

ARTICLE 64.

To register a patent transfer, registration, license or encumbrance with

the Institute, it shall be sufficient to make the appropriate request

in the manner specified in the regulations under this Law.

ARTICLE 65.

There shall be grounds to cancel the registration of a license in any

of the following cases:

I. When the patent or registration owner and the licensee jointly so request;

II. When the patent or registration is declared invalid or lapses;

35

III. 〔Repealed〕

IV. When a court order so rules.

ARTICLE 66.

The license shall not be registered when the patent or registration has

expired or where its duration is longer than the term of the patent or

registration.

ARTICLE 67.

Unless provided otherwise, the grant of a license shall not prevent the

patent or registration owner from granting other licenses, or from making

use of the patent at the same time himself.

ARTICLE 68.

The person to whom a license registered with the Institute has been granted

shall, unless stipulated otherwise, be entitled to institute legal

proceedings in defense of the patent rights as if he were the actual owner

of those rights.

ARTICLE 69.

The use of the patent by the person to whom a license registered with

the Institute has been granted, shall be considered as being done by the

patent owner, except in the case of compulsory licenses.

ARTICLE 70.

In the case of inventions, after three years from the date of grant of

the patent, or four years from the filing of the application, whichever

period expires later, any person may apply with the Institute for the

grant of a compulsory license to use said invention, where it has not

been used, unless there are duly justified reasons for such non-use.

A compulsory license shall not be granted when the patent owner or the

holder of a contractual license have been importing the patented product

or a product obtained with the patented process.

ARTICLE 71.

Whoever applies for a compulsory license must have the technical and

economic ability to use the patented invention efficiently.

ARTICLE 72.

Prior to granting the first compulsory license, the Institute shall give

36

the patent owner the opportunity to make use of the patent within a period

of one year from the date of the personal notification addressed to him.

After the parties have been heard, the Institute shall decide on the grant

of the compulsory license and, if it decides to grant the license, shall

specify the duration, terms and scope thereof and the amount of the royalties

payable to the patent owner.

In the event of a compulsory license being applied for where another already

exists, the person holding the earlier license shall be notified and heard.

ARTICLE 73.

On expiration of the period of two years following the date of grant of

the first compulsory license, the Institute may for administrative purposes

declare the patent lapse if the grant of the compulsory license has not

remedied the non-working thereof, or if the patent owner has not proved

the working thereof or the existence of reasons that are justified in

the opinion of the Institute.

The payment of royalties under a compulsory license shall end when the

patent expires or is invalidated, or for any other reason provided for

in this Law.

ARTICLE 74.

At the request of the patent owner or of the holder of the compulsory

license, the conditions of the license may be modified by the Institute

when circumstances so dictate, and, in particular, when the patent owner

hasgrantedcontractuallicensesthataremorefavorablethanthecompulsory

license. The Institute shall rule on the modification of the compulsory

license conditions after hearing the parties.

ARTICLE 75.

Whoever holds a compulsory license shall start making use of the patent

within two years from the date on which the license was granted to him.

Failure to comply with this condition, unless there are reasons that are

justified in the opinion of the Institute, shall constitute grounds for

the revocation of the license either ex officio or at the request of the

patent owner.

ARTICLE 76.

The compulsory license shall not be exclusive. The person to whom it is

granted may assign it only with the authorization of the Institute and

provided that it is transferred together with that part of the production

unit in which the licensed patent is being used.

37

ARTICLE 77.

For reasons of national emergency or security, and for as long as those

reasons persist, including the outbreak of serious diseases declared as

requiring priority attention by the General Health Council, the Institute

shall, in a declaration published in the Official Journal, determine that

use may be made of certain patents by means of the grant of licenses of

public utility in cases where, if such use were not made, the production

supply or distribution to the public of staple goods and services or

medicines would be prevented, hindered or made more expensive.

In cases of serious diseases causing an emergency situation or threatening

national security, the General Health Council shall issue the declaration

of priority attention either on its own initiative or in response to a

written request by the national institutions specialized in diseases which

are accredited by the General Health Council, in which it justifies the

need for priority attention. Once the Council’s declaration has been

published in the Official Journal, pharmaceutical firms may request that

the Institute grants a license of public utility, and the Institute shall

grant said license after hearing the parties, for a period as short as

justified by the case in accordance with the opinion of the General Health

Council, within 90 days, starting from the date on which the request is

submitted to the Institute.

TheMinistryofHealthshalldeterminetheproductionandqualityconditions,

the duration and scope of application of said license, and the

classification of the applicant’s technical ability. After listening to

both parties, the Institute shall establish a reasonable total in royalties

for the patent owner. The grant may cover one or all of the prerogatives

referred to in subparagraphs I or II of Article 25 of this Law. With the

exception of the grant of licenses of public utility as referred to in

paragraphs two and three of this Article, other licenses shall be granted

in accordance with the terms contained in paragraph two of Article 72.

None of the licenses referred to in this Article may be exclusive or

transferable.

38

CHAPTER VII Invalidity and Lapse of Patents and Registrations

ARTICLE 78.

The patent or registration shall be invalid in the following cases:

I. when it is granted in violation of the provisions on the requirements

and conditions for the grant of patents or registrations of utility models

and industrial designs. For the purposes of the provisions of this

subparagraph, the requirements and conditions for the grant of patents

and registrations shall be those laid down in Articles 16, 19, 27, 31

and 47;

II. When such grant takes place in violation of the provisions of the

law in force at the time of grant of the patent or registration.

An action seeking invalidation under this subparagraph may not be based

on the disputing of the legal representation of the patent or registration

applicant;

III. When abandonment of the application occurs in the course of processing;

and

IV. When the grant has been invalidated by serious error or negligence,

or has been made to a person not entitled to it.

An action seeking invalidation as provided for in subparagraphs I and

II above, may be brought at any time; that deriving from the circumstances

provided for in subparagraphs III and IV above may be brought within five

years following the date on which the publication of the patent or

registration in the Gazette becomes effective.

Where the invalidation affects only one or some of the claims, or part

of a claim, invalidation shall be declared only in respect of the claim(s)

affected, or the affected part of a claim. Invalidation may be declared

in the form of a limitation or specification of the corresponding claim.

ARTICLE 79.

The action for invalidity shall be made for administrative purposes by

the Institute, either ex officio or at the request of an individual or

the Federal Public Prosecutor, where the Federal Government has some

interest in the case, as provided for in this Law. The action for invalidity

shall cancel the patent or registration effects concerned with retroactive

effect to the filing date of the application.

39

ARTICLE 80.

Patents or registrations shall expire and the rights that they protect

shall become in the public domain under the following circumstances:

I. upon expiry of their term;

II. When the fee provided for the maintenance of the rights therein is

not paid, or is not paid within the six-month grace period following said

expiry date;

III. In the case provided for in Article 73 of this Law.

Lapse due solely to the passage of time shall not require an administrative

action by the Institute.

ARTICLE 81.

The reinstatement of the patent or registration that has expired owing

to failure to pay the fee on time may be requested, provided that the

appropriate request is made within the six months following the grace

period referred to in subparagraph II of the previous Article and the

unpaid fee is settled, together with any surcharges.

40

TITLE III Trade Secrets

ARTICLE 82.

Any industrially or commercially applicable information which an

individual or company keeps and which is confidential in nature and

associated with securing or retaining a competitive or economic advantage

over third parties in the conduct of economic activities, and regarding

to which said individual or company has adopted sufficient means or systems

to preserve its confidentiality and restrict access thereto, shall be

considered a trade secret.

The information constituting a trade secret shall necessarily relate to

the nature, characteristics or purposes of products, to production methods

or processes or to ways or means of distributing or marketing products

or rendering services.

Information that is in the public domain, is obvious to a person skilled

in the art on the basis of previously available information or must be

disclosed by virtue of a legal provision or court order shall not be

considered a trade secret. Information that is supplied to any authority

by a person possessing it as a trade secret shall not be considered as

entering the public domain or being disclosed by virtue of a legal provision,

when it is supplied for the purpose of obtaining licenses, permits,

authorizations, registrations or any other official documents.

ARTICLE 83.

The information referred to in the previous Article shall consist of

documents, electronic or magnetic media, optical disks, microfilms, films

or other similar material.

ARTICLE 84.

The person who keeps a trade secret may transfer it to or authorize its

use by a third party. The authorized user shall be under the obligation

not to disclose the trade secret by any means.

In agreements under which technical knowledge, technical assistance and

basic or detailed engineering are provided, confidentiality clauses may

be included to protect any trade secrets covered, which shall specify

the aspects to be treated as confidential.

ARTICLE 85.

Any person who, by reason of his work, employment, function or post, the

practice of his profession or the conduct of business relations, has access

to a trade secret the confidentiality of which he has been warned of shall

41

abstain from revealing it without just cause and without the consent of

the person keeping said secret or of the authorized user thereof.

ARTICLE 86.

Any individual or company engaging either a worker who is working or has

worked for, or a professional, adviser or consultant who is rendering

or has rendered his services on behalf of another person, with a view

to obtaining trade secrets from the latter, shall be liable for payment

of damages for any harm caused to that person.

Any individual or company who by any unlawful means obtains information

constituting a trade secret shall likewise be liable for the payment of

damages.

ARTICLE 86 bis.

The information required by special laws to determine the safety and

efficacy of pharmaceutical and agricultural products that make use of

new chemical components shall be protected under the terms of the

international treaties to which Mexico is party.

ARTICLE 86 bis.1.

Where one of the parties involved in any judicial or administrative

proceeding is required to reveal a trade secret, the authority hearing

the proceeding shall take the necessary measures to prevent its disclosure

to third parties having no connection with the dispute.

No interested party may in any event reveal or make use of the trade secret

referred to in the previous paragraph.

42

TITLE IV Trademarks, Advertisements and Commercial Names

CHAPTER I Trademarks

ARTICLE 87.

Industrialists, traders or service providers may use trademarks in industry

or trade or in the services that they provide. However, the right to their

exclusive use shall be obtained through their registration with the

Institute.

ARTICLE 88.

A trademark is understood as being any visible sign that distinguishes

products or services from others of the same type or category in the market.

ARTICLE 89.

The following signs may constitute trademarks:

I. Visible names and figures that are sufficiently distinctive and capable

of identifying the products or services to which they are applied, or

areintendedtobeapplied,comparedwithothersofthesametypeorcategory;

II. Three-dimensional shapes;

III. Commercial names and company or business names, provided that they

are not covered by the following Article; and

IV. The proper name of an individual, provided that it is not the same

as a registered trademark or published commercial name.

ARTICLE 90.

The following may not be registered as trademarks:

I. Three-dimensional animated or changing names, figures or shapes that

are expressed in motion even when visible;

II. The technical or commonly used names of products or services for which

the protection of the trademark is sought, and also those words that have

turned into the usual or generic designation of said products or services

in everyday language or business practice;

III. Three-dimensional shapes that are in the public domain or have come

43

into common use, those that lack the originality that readily distinguishes

them, and the usual and everyday shapes of products or those determined

by their nature or industrial function;

IV. Three-dimensional names, figures or shapes which, when their

characteristics are considered as a whole, are descriptive of the products

or services to which they are intended to afford trademark protection.

The above shall include descriptive or indicative words which, in trade,

serve to identify the kind, quality, quantity, composition, purpose, value

or place of origin of the products or the time of their production;

V. Isolated letters, digits or colors, except where they are combined

with or accompanied by elements such as signs, designs or names that give

them distinctive character;

VI. The translation into other languages, the arbitrarily changed spelling

or the artificial construction of words not eligible for registration;

VII. Signs that reproduce or imitate, without authorization, the coats

of arms, flags or emblems of any country, State, municipality or equivalent

political divisions, and the names, abbreviations, symbols or emblems

of international, governmental or non-governmental organizations, or of

any other officially recognized organization, as well as the verbal

designation thereof;

VIII. Signs that reproduce or imitate official signs or seals of control

and guarantee adopted by a State, without the authorization of the proper

authority, or coins, banknotes, commemorative coins or any national or

foreign legal tender;

IX. Signs that reproduce or imitate the names or graphic representation

of decorations, medals or other prizes awarded at officially recognized

trade shows, fairs, congresses or cultural or sporting events;

X. Proper or common geographical names and maps, and also gentilic nouns

and adjectives, where they indicate the origin of the products or services

and may cause confusion or error regarding such origin;

XI. The names of towns or places known for the manufacture of certain

products, to protect those products, except the names of places in private

ownership, where they are special and not liable to be confused, and where

44

the consent of the owner has been obtained;

XII. The names, pseudonyms, signatures and portraits of persons, without

the consent of the persons concerned or, if they are deceased, of their

surviving spouse, blood relations in direct line and by adoption and

collateral relations, both down to the fourth level of relationship, in

that order;

XIII. The titles of intellectual or artistic works and the titles of

publications and periodicals distributed, the names of fictional or

symbolic characters or real personages portrayed, stage names and the

names of performing groups, except where the owner of the corresponding

rights has expressly authorized such registration;

XIV.Three-dimensionalnames,figuresorshapesliabletodeceiveormislead

the public, understood as being those that constitute false indications

as to the nature, components or qualities of the products or services

that they claim to protect;

XV. Three-dimensional names, figures or shapes identical or similar to

a trademark that the Institute considers or has declared well known in

Mexico, to be applied to any product or service.

This impediment shall apply in any case where the use of the trademark

for which registration is sought:

a) Is liable to cause confusion or a risk of association with the owner

of the well-known trademark; or

b) Is liable to constitute an unauthorized appropriation by the owner

of the well-known trademark; or

c) Is liable to discredit the well-known trademark; or

d) Is liable to dilute the distinctive character of the well-known

trademark.

Thisimpedimentshallnotbeapplicablewheretheapplicantforregistration

is the owner of the well-known trademark; and,

XV bis. Three-dimensional names, figures or shapes identical or confusingly

similar to a trademark that the Institute considers or has declared famous

under the terms of Chapter II bis, to be applied to any product or service.

Thisimpedimentshallnotbeapplicablewheretheapplicantforregistration

is the owner of the famous trademark;

XVI. A trademark that is identical or confusingly similar to another in

45

respect of which an application has been filed earlier and is awaiting

registration or to another that is already registered and in force, and

is applied to the same or similar products or services However, a trademark

identical to one previously registered may be registered if the application

is made by the same owner for use in connection with similar products

or services; and

XVII. A trademark that is identical or confusingly similar to a commercial

name applied to a firm or industrial, commercial or service establishment

of which the principal business is the manufacture or sale of the products

or the provision of the services that the trademark is intended to protect,

provided that the commercial name has been used prior to the filing date

of the application for registration of the trademark or the date of the

declared use thereof; the foregoing shall not be applicable where the

application for a trademark is filed by the owner of the commercial name,

if no other identical commercial name exists that has been published.

ARTICLE 91.

A registered trademark or a trademark confusingly similar to another

previously registered trademark may not be used or form part of the

commercial name or company or business name of any establishment or company

where:

I. The establishments or companies concerned are engaged in the production,

import or marketing of goods or services identical or similar to those

to which the registered trademark applies; and

II. There is no consent in writing from the owner of the trademark

registration or from the person empowered to give such consent.

Violation of this principle shall lead to the imposition of the sanctions

provided for in this Law, which shall be independent of the possibility

of legally seeking the removal of the registered trademark or the trademark

confusingly similar to the previously registered trademark from the

commercial name or company or business name concerned and the payment

of damages.

These provisions shall not be applicable where the commercial name or

corporate or business name already incorporated the trademark prior to

the filing or first declared use date of the registered trademark.

ARTICLE 92.

Registration of a trademark shall not be effective against:

46

I. A third party who in good faith, used the same or a confusingly similar

trademark on the national territory for the same or similar products or

services, provided that the third party had begun to make uninterrupted

use of the trademark prior to the filing date of the application for

registration, or the date of the first declared use of the trademark.

The third party shall have the right to apply for registration of the

trademark within three years following the day on which the registration

was published, in which case he shall first apply for and obtain an action

for invalidity of said registration; and

II. Any person who markets, distributes, acquires or uses the product

to which the registered trademark is applied, after said product has been

lawfully introduced on to the market by the owner of the registered trademark

or his licensee.

This case shall include the import of lawful products to which the

trademark is applied, carried out by any person for their use, distribution

or marketing in Mexico, pursuant to the terms and conditions laid down

in the regulations under this Law; and

III. An individual or company who applies his own name or his company

or business name to the goods that he renders or distributes, to the services

that he provides or to his places of business, or who uses it as part

of his commercial name, provided that he applies it in the form in which

heisaccustomedtousingitandthatithasfeaturesthatclearlydistinguish

it from a homonym already registered as a trademark or published as a

commercial name.

The conduct of any activity provided for in this Article shall not constitute

an administrative infringement or an offense within the meaning of this

Law.

ARTICLE 93.

Trademarks shall be registered in relation to specific products or services

according to the classification provided for by the regulations under

this Law.

Any doubt as to the class to which a given product or service belongs

shall be settled finally by the Institute.

ARTICLE 94.

Once a trademark has been registered, there may be no increase in the

number of products or services that it protects, even where they belong

to the same class, but it may be restricted to certain products or services

47

as often as requested.

In order to protect a different product or service subsequently with a

previously registered trademark, it shall be necessary to obtain a new

registration.

ARTICLE 95.

The registration of a trademark shall have a term of 10 years, starting

from the filing date of the application, and may be renewed for periods

with same duration.

48

CHAPTER II Collective Trademarks

ARTICLE 96.

Legally incorporated associations or groups of producers, manufacturers,

traders or service providers may apply for registration of a collective

trademark to distinguish the products or services of their members on

the market from those of third parties.

ARTICLE 97.

The rules for the use of a collective trademark shall be filed with the

application for said trademark.

ARTICLE 98.

The collective trademark may not be transferred to third parties, and

its use shall be reserved for association members.

In the absence of special provisions, collective marks shall be governed

by the provisions of this Law that relate to trademarks.

49

CHAPTER II bis Well-known and famous trademarks

ARTICLE 98 bis.

For the purposes of its assessment or declaration by the Institute, a

trademark shall be considered well known in Mexico when a given sector

of the public or of the country’s business circles is aware of the trademark

as a result of business activities conducted in Mexico or abroad by a

person who makes use of the trademark in connection with his goods or

services, or as a result of the promotion or advertising thereof.

For the purposes of its assessment or declaration by the Institute, a

trademark shall be considered famous in Mexico when the majority of

consumers are aware of the trademark.

All forms of proof permitted by this Law may be used for the purpose of

demonstrating that the trademark is well known or famous.

ARTICLE 98 bis.1.

The declaration or any updates issued shall constitute an administrative

act by means of which the Institute declares, based on the evidence provided,

that the conditions by virtue of which a trademark is well known or famous

persist at the time that the act is issued.

The impediments provided for in ARTICLE 90, subparagraphs XV and XV bis,

for the protection of well-known or famous trademarks, shall apply

independently of whether those trademarks are registered or declared.

However, so that the owner of a trademark may obtain a declaration, the

trademark shall be registered in Mexico to protect the products or services

in which the notoriety or fame of the trademark originated.

ARTICLE 98 bis.2.

For the purpose of obtaining the declaration to the effect that a trademark

is well known, the applicant must provide, inter alia, the following

information:

I. The sector of the public comprising real or potential consumers who

identify the trademark with the products or services which it protects,

based on a market survey or study or any other method permitted by law;

II. Other sectors of the public excluding real or potential consumers

that identify the trademark with the products or services which it protects,

based on a market survey or study or any other method permitted by law;

III. The commercial circles comprising traders, industrialists or service

50

providers connected with the type of products or services, who identify

the trademark with the products or services protected by the trademark,

based on a market survey or study or any other method permitted by law;

IV. The date of first use of the trademark in Mexico and, where applicable,

abroad;

V. The period of continued use of the trademark in Mexico and, where

applicable, abroad;

VI. The marketing channels in Mexico and, where applicable, abroad;

VII. The methods of disseminating the trademark in Mexico and, where

applicable, abroad;

VIII. The period of actual advertising of the trademark in Mexico and,

where applicable, abroad;

IX. The investment made during the previous three years in advertising

and promoting the trademark in Mexico and, where applicable, abroad;

X. The actual geographical area of influence of the trademark;

XI. The sales volume of the products or the revenue received from the

provision of the services protected by the trademark, during the previous

three years;

XII. The economic value represented by the mark in the shareholders’ equity

of the company owning the trademark, or in accordance with a valuation

of the company;

XIII. The registrations of the trademark in Mexico and, where applicable,

abroad;

XIV. The franchises and licenses that have been granted with respect to

the trademark; and

XV. The percentage of the share of the trademark in the relevant market

sector or segment.

51

ARTICLE 98 bis .3.

The Institute shall assume, except where there is evidence to the contrary,

that the conditions which gave rise to the declaration or its updates

shallpersistforaperiodoffiveyearsfromthedateofissue;consequently,

during that period, the impediment provided for in ARTICLE 90, subparagraph

XV, or the provisions of subparagraph XV bis, shall apply, as applicable,

expeditiously.

The declaration may be updated at any time, at the request of the person

with a legal interest in such, provided that the person proves that the

conditions which gave rise to said declaration persist on the date of

the relevant application.

ARTICLE 98 bis. 4.

The application for a declaration to the effect that a trademark is well

known shall be filed in writing in accordance with the formalities laid

down for applications and submissions in this Law and the Regulations

thereunder,andaccompaniedbytheevidentiaryelementsonwhichtherequest

is based, and shall include at least the following:

I. The name, nationality, address, telephone number, fax number and e-mail

of the applicant and, where applicable, his agent;

II. The trademark and registration number; and

III. The evidentiary documents and elements accompanying the application.

ARTICLE 98 bis.5.

Once the Institute has received the application and the relevant fees

have been paid, the elements, data and documents provided shall be examined.

If, in the opinion of the Institute, the aforementioned elements, data

and documents do not meet the legal requirements or are insufficient for

the understanding and analysis of any of the elements of the application,

the applicant shall be required to make the necessary clarifications or

additions, for which purpose he shall be granted a 4-month period .

If the applicant fails to comply with the requirement within the period

granted, the request shall be rejected.

ARTICLE 98 bis.6.

Once the application has been processed and the legal and regulatory

requirements have been met, the relevant declaration shall be issued.

In the event that the Institute denies the issue of the declaration, it

52

shall notify the applicant in writing, stating the reasons and legal grounds

for its decision and assessing all the evidentiary elements received.

ARTICLE 98 bis.7.

Decisions on declarations to the effect that a trademark is well known

shall be published in the Gazette.

ARTICLE 98 bis.8.

The declaration shall be invalid if:

It was granted in violation of the provisions of this Chapter;

The evidence supporting the declaration is false;

It was granted based on an incorrect assessment of the evidence;

It was granted to a person who had no right thereto.

Administrative actions for invalidity shall be issued by the Institute,

at the request of persons having a legal interest who prove the grounds

on which their request is based.

When the trademark registration or registrations based on which the action

was issued become invalid, expire or are cancelled, the declaration shall

lose its evidentiary value.

ARTICLE 98 bis.9.

For the purposes of its transfer, the declaration shall be considered

linked to the trademark registration(s) which gave rise thereto.

53

CHAPTER III Advertisements

ARTICLE 99.

The exclusive right to use advertisements shall be obtained by its

registration with the Institute.

ARTICLE 100.

Sentences or statements the purpose of which is to make commercial,

industrial or service establishments or businesses, products or services

known to the public so that they may be distinguished from others of the

same kind shall be considered as advertisements.

ARTICLE 101.

If the purpose of a piece of advertisement is to publicize products or

services, said products or services shall be specified in the registration

application.

ARTICLE 102.

If the purpose of the piece of advertisement is to publicize a certain

establishmentorbusiness,ofwhatevertype,itshallbeconsideredincluded

in a special complementary class of the classification provided for in

the regulations under this Law In such cases, the registration shall not

protect products or services, even where they are related to the

establishment or business.

ARTICLE 103.

The registration of advertisements shall have a term of 10 years, starting

from the filing date of the application, and may be renewed for periods

with same duration.

ARTICLE 104.

In the absence of special provisions, advertisements shall be governed

by the provisions of this Law that relate to trademarks.

54

CHAPTER IV Commercial Names

ARTICLE 105.

The commercial name of an industrial, commercial or service firm or

establishment and the right to its exclusive use shall be protected without

the need for registration. The protection shall cover the geographical

area of the actual clients of the firm or establishment to which the

commercial name is applied, and shall extend to the entire Republic if

the name is widely and consistently publicized at the national level.

ARTICLE 106.

Any person using a commercial name may apply with the Institute for its

publication in the Gazette. Such publication shall produce the effect

of establishing the presumption of good faith in the adoption and use

of the commercial name.

ARTICLE 107.

The application for publication of a commercial name shall be filed in

writing with the Institute together with the documents that prove the

actual use of the commercial name in connection with a certain area of

business.

ARTICLE 108.

Once the application has been received and the legal requirements have

been met, a substantive examination shall be made to determine whether

there exists any identical or confusingly similar commercial name that

is applied to the same area of business, the registration of which is

pending or which has been published earlier, or any identical or confusingly

similar trademark the registration of which is pending or which has already

been registered, protecting identical or similar products or services

related to the principal business of the firm or establishment involved.

If there is no prior art, publication may proceed.

ARTICLE 109.

Commercial names that lack elements distinguishing the firm or business

involved from others of the same kind, and those that infringe such

provisions contained in ARTICLE 90 of this Law as are applicable, shall

not be published.

ARTICLE 110.

The effects of publication of a commercial name shall last for ten years,

55

starting from the filing date of the application, and may be renewed for

periods with same duration. If not renewed, the effects shall cease.

ARTICLE 111. Unless provided otherwise, the transfer of a firm or

establishment shall include the right to the exclusive use of the commercial

name.

Article. 112. In the absence of special provisions and where applicable,

commercial names shall be governed by the provisions of this Law relating

to trademarks.

56

CHAPTER V Trademark Registration

ARTICLE 113.

Fortheregistrationofatrademark,anapplicationcontainingthefollowing

information shall be filed in writing with the Institute:

I. The name, nationality and address of the applicant;

II. The distinctive sign constituting the trademark, with a mention of

whether it embodies a nominative element, or no such element, or if is

three-dimensional or mixed;

III. The date of first use of the trademark, which may not be subsequently

modified, or a mention that it has not been used; in the absence of any

indication, it shall be presumed that the trademark has not been used;

IV. The products or services to which the trademark is to be applied;

and

V. all other information provided for in the regulations under this Law.

ARTICLE 114.

The application for registration of a trademark shall be accompanied by

proof of payment of the fees payable for processing of the application,

registration and issue of the relevant title, and copies of the trademark

where it is devoid of a verbal element, three-dimensional or mixed.

ARTICLE 115.

The copies of the trademark filed with the application shall contain no

words or captions that might deceive or mislead the public. When an

application is filed for the protection of a trademark without any verbal

element or a three-dimensional trademark, the copies of the application

shall not contain any words that constitute or might constitute a trademark,

except where an express reservation to that effect is included.

ARTICLE 116.

Where the trademark is applied for in the name of two or more persons,

the rules agreed upon between the applicants regarding the use and licensing

of the trademark and the transfer of rights in it shall be filed together

with the application.

57

ARTICLE 117.

When the registration of a trademark is applied for in Mexico within the

periods specified in international treaties or, failing that, within six

months of the filing of applications in other countries, the filing date

in the country of first filing may be recognized as the priority date.

ARTICLE 118.

For the priority referred to in the previous Article to be recognized,

the following requirements shall be met:

I. The priority must be claimed, and proof given of the country of origin

and of the filing date of the application in that country, when applying

for registration;

II. The application filed in Mexico must not seek to cover products or

services additional to those provided for in the application filed abroad,

in which case priority will be recognized only for those specified in

the application filed in the country of origin;

III. The requirements specified in international treaties, this Law and

the regulations thereunder must be met within three months of the filing

of the application; and

IV. 〔Repealed〕

ARTICLE 119.

Once the application has been received, the documentation filed shall

undergo a formal examination to determine whether the requirements

specified in this Law and in the regulations thereunder have been met.

ARTICLE 120 Repealed

ARTICLE 121.

If at the time of filing the application meets the requirements of Articles

113, subparagraphs I, II and IV, 114, 179 and 180 of this Law, that date

shall be the filing date thereof; otherwise the date on which the

requirements are met within the prescribed time limit shall be considered

as the filing date.

The filing date shall determine precedence between applications.

The regulations under this Law may provide for other means by which

applications and other submissions may be filed with the Institute.

58

ARTICLE 122.

On completion of the formal examination a substantive examination shall

be made to determine whether the trademark is eligible for registration

under the provisions of this Law.

If the application or documentation submitted does not comply with legal

or regulatory requirements, if there is any impediment to the registration

of the trademark or if there are anticipations, the Institute shall inform

the applicant accordingly in writing, allowing him a period of two months

within which to rectify the errors or omissions that he has committed

and to make whatever statement best serves his interests in relation to

the impediments and anticipations cited. If the applicant does not respond

within the time allowed, his application shall be considered abandoned.

ARTICLE 122 bis.

The person concerned shall be allowed an additional period of two months

within which to comply with the requirements referred to in the previous

Article, without having to request it, subject to proof of payment of

the fee applicable in the month of compliance.

The additional period shall run from the day following that of the expiry

of the 2-month period provided for in Article 122 above.

The application shall be considered abandoned if the applicant fails to

comply with the requirements specified within the initial period or the

additional period referred to in this Article, or fails to provide proof

of payment of the relevant fees.

ARTICLE 123.

If the applicant, on responding within the time allowed for remedying

the legal impediment to registration, alters or substitutes the trademark,

said trademark shall be subject to renewed processing, with the applicant

having to pay the fee applicable to a new application and meet the

requirements of Articles 113 and 114 of this Law and the applicable

provisions of the regulations thereunder. In that event the date on which

the renewed processing is applied for shall be considered the filing date.

ARTICLE 124.

If the impediment relates to the existence of one or more registrations

of identical or confusingly similar trademarks and if invalidation, lapse

or cancellation proceedings are pending at the request of a party or ex

officio, the Institute shall suspend the processing of the application

until said proceedings are ruled upon.

59

ARTICLE 125.

Once the application has been processed and the legal and regulatory

requirements have been complied with, the title shall be issued.

Where the Institute refuses registration of the trademark, it shall inform

theapplicantinwriting,statingthereasoningandlegalgroundsunderlying

its decision.

ARTICLE 126.

The Institute shall issue a certificate for each trademark as proof of

its registration. The certificate shall include a specimen of the trademark

and shall specify the following:

I. Registration number of the trademark;

II. Distinctive sign constituting the trademark, mentioning whether it

is nominative, non-appellative, three-dimensional or mixed;

III. Products or services to which the trademark will be applied;

IV. Name and address of the owner;

V. Location of the establishment, where applicable;

VI. Filing date of the application and recognized priority and first use

dates, if any, and issue date; and

VII. Term of the trademark.

ARTICLE 127.

Decisions on registrations of trademarks and their renewals shall be

published in the Gazette.

ARTICLE 128.

The trademark shall be used on the national territory in the form in which

it was registered or with modifications that do not alter its distinctive

character.

ARTICLE 129.

The Institute may declare the registration and use of trademarks as

mandatory in respect of any product or service, or prohibit or regulate

the use of trademarks, registered or not, either ex officio or at the

60

request of representative organizations, where:

I. Use of the trademark is a factor associated with monopolistic or

oligopolistic practices or unfair competition which cause serious

distortions in the production, distribution or marketing of certain

products or services;

II. Use of the trademark impedes the efficient distribution, production

or marketing of goods and services; and

III. Use of trademarks prevents, hinders or increases the cost of the

production supply or distribution of staple goods or services to the public

in cases of national emergency and for as long as such an emergency persists.

The relevant declaration shall be published in the Official Journal.

ARTICLE 130.

If for three consecutive years a trademark is not used for the products

or services for which it was registered, there shall be grounds for the

lapse of the registration thereof, except where the owner or registered

licensee has used it during the three consecutive years immediately prior

to the filing of the request for the administrative action for lapse,

or where a situation has arisen that is beyond the control of the owner

of the trademark which constitutes an obstacle to the use thereof, such

as the restriction of imports or other government requirements applicable

to the goods or services to which the trademark is applied.

ARTICLE 131.

The display of the legend “registered trademark” the letters M.R. or the

® symbol may be used only in connection with the products or services

for which the trademark in question is registered.

ARTICLE 132 Repealed

ARTICLE 133.

The renewal of the registration of a trademark shall be requested by the

owner six months prior to the expiration of its term. However, the Institute

shall nevertheless process requests that are filed within six months of

the expiry of the term of registration. Once that period expires without

any request for renewal having been filed, the registration shall expire.

61

ARTICLE 134.

Renewal of the registration of a trademark shall proceed only if the person

concerned submits proof of payment of the appropriate fee and makes a

sworn statement in writing attesting his use of the trademark on at least

one of the goods or services to which it is applied, such use not having

been interrupted, without just cause, for a period equal to or longer

than that provided for in Article 130 of this Law.

ARTICLE 135.

If one and the same trademark is registered to protect particular goods

or services, there need only be renewal of any of those registrations

for the use of the trademark to have effect on and to benefit all the

registrations, subject to submission of proof of payment of the relevant

fees.

62

CHAPTER VI Licensing and Transfer of Rights

ARTICLE 136.

The owner of a registered or pending trademark may, by agreement, license

one or more persons to use the trademark in relation to all or some of

the goods or services to which said trademark applies. The license shall

be registered with the Institute in order to be binding on third parties.

ARTICLE 137.

For a license to be registered with the Institute, it shall be sufficient

to file the corresponding application in the manner specified in the

regulations under this Law.

A single submission may be made to request registration of the licensing

of rights relating to two or more pending applications or two or more

registered trademarks, where the licensor and licensee are the same in

all of them. The applicant shall identify each of the applications or

registrations in respect of which the registration is to be made. The

corresponding fees shall be paid according to the number of applications

or registrations involved.

ARTICLE 138.

There shall be grounds for cancellation of the registration of a license

in the following cases:

I. Where it is jointly applied for by the owner of the trademark and the

licensed user;

II. Owing to invalidity, lapse or cancellation of the registration of

the trademark, or where the trademarks in question were pending and their

registration is not granted; and

III. Where a court order so rules.

ARTICLE 139.

The products sold or the services rendered by the licensee shall be of

the same quality as those manufactured or rendered by the owner of the

trademark. Moreover, those products or the establishment in which the

services are rendered or contracted, shall state the name of the user

and any other particulars required by the regulations under this Law.

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ARTICLE 140.

The person holding a license registered with the Institute shall, unless

stipulated otherwise, be empowered to institute legal proceedings for

the protection of the rights in the trademark as if he were the owner.

ARTICLE 141.

Use of the trademark by the user holding a license registered with the

Institute shall be considered made by the owner of the trademark.

ARTICLE 142.

A franchise shall exist where, together with the licensing of the use

of a trademark, granted in writing, technical know-how is transferred

or technical assistance provided, so that the person to whom the license

is granted can produce or sell goods or provide services consistently

according to the operating, commercial and administrative methods

established by the owner of the trademark, in order that the quality,

prestige and image of the products or services distinguished by said

trademark may be maintained.

The franchisor shall provide the prospective franchisee, at least thirty

days before the signing of the corresponding agreement, with the relevant

information on the state of his firm, as provided for in the regulations

under this Law.

In the event that the information referred to in the previous paragraph

is not truthful, the franchisee shall have the right, in addition to

demanding that the contract be declared null and void, to demand

compensation for damage suffered by it as a result of the non-compliance.

The franchisee may exercise such right during the year following conclusion

of the contract. After that period has passed, the franchisee shall have

the right only to demand that the contract be declared null and void.

The provisions of this Chapter shall apply to the registration of

franchises.

Article 142 bis.

The franchise agreement shall be drawn up in writing and contain at least

the following:

I. The geographical area in which the franchisee shall carry out the

activities covered by the contract;

II. The location, minimum dimension and characteristics of the investments

ininfrastructure,withrespecttotheestablishmentinwhichthefranchisee

64

will carry out the activities covered by the contract;

III. The inventory, marketing and advertising policies, as well as the

provisions relating to the supply of goods and contracting of suppliers,

where applicable;

IV. The policies, procedures and deadlines relating to repayments,

financing and other consideration borne by the parties under the terms

agreed upon in the contract;

V. The criteria and methods applicable to determining the profit and/or

commission margins of the franchisees;

VI. The characteristics of the technical and operational training of the

franchisee’s staff, as well as the method or form in which the franchisor

is to provide technical assistance;

VII. The criteria, methods and procedures for supervision, information,

evaluation and classification of the performance, as well as the quality,

of the services for which the franchisor and franchisee are responsible;

VIII. To establish the terms and conditions for subfranchising, where

the parties agree to such;

IX. The clauses for termination of the franchise agreement;

X. The circumstances in which the terms or conditions relating to the

franchise agreement may be revised and, where applicable, modified, by

mutual agreement;

XI. The franchisee shall not be under the obligation to transfer ownership

of its assets to the franchisor or to anyone designated by the franchisor

on termination of the contract, except where it has been agreed to the

contrary; and

XII. The franchisee shall not be under the obligation at any time to transfer

shares in his company to the franchisor or make it a partner in his company,

except where it has been agreed to the contrary.

This Article shall, where applicable, comply with the provisions of the

Regulations under this Law.

65

Article 142 bis. 1.

The franchisor may interfere in the organization and running of the

franchisee only to guarantee compliance with the standards of management

and image of the franchise in compliance with the provisions of the contract.

The franchisor shall not be considered as interfering in the case of a

merger, split, conversion, amendment to articles of association or transfer

or encumbrance of shares in the franchisee’s company, which results in

a change in the personal characteristics of the franchisee as laid down

in the relevant contract as determining the franchisor’s willingness to

conclude the contract with the franchisee concerned.

Article 142 bis.2.

The franchisee shall, during the term of the contract and after the

termination thereof, keep confidentiality of information which is of a

confidential nature or of which it becomes aware, and which is the property

of the franchisor, including information concerning the operations and

activities carried out under the contract.

Article 142 bis.3.

The franchisor and franchisee may not consider the contract terminated

or cancelled unilaterally, except where the contract has been concluded

for an indefinite period or there is justified cause. In order for the

franchisee or franchisor to consider the contract terminated early, either

by mutual agreement or cancellation, the grounds and procedures agreed

upon in the contract must be complied with.

In the event of a violation of the provisions of the previous paragraph,

the early termination effected by the franchisor or franchisee shall give

rise to the payment of the conventional penalties agreed upon in the contract

or compensation for damage caused, where appropriate.

ARTICLE 143.

The rights deriving from an application for the registration of a trademark

or those conferred by a registered trademark may be encumbered or

transferred in the manner and according to the procedures laid down in

ordinary legislation. Such encumbrance or transfer of rights shall be

registered with the Institute as provided for in the Regulations under

this Law, in order to be enforceable against third parties.

A single submission may be made to request registration of the transfer

of ownership of two or more pending applications or two or more registered

trademarks, where the person transferring them and the person acquiring

them are the same in all cases. The applicant shall identify each of the

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applications or registrations in respect of which the registration is

to be made. The corresponding fees shall be paid according to the number

of applications or registrations involved.

ARTICLE 144.

Where companies are merged it shall be understood that, unless stipulated

otherwise, the registered trademark rights are transferred.

ARTICLE 145.

For the purposes of their transfer, the registrations of the trademarks

of one and the same owner shall be considered linked when said trademarks

are identical and protect similar products or services, or are confusingly

similar and are applied to the same or similar products or services.

ARTICLE 146.

Where the owner of the registrations of two or more linked trademarks

considers that there will be no confusion in the event of one of them

being used by another person for the products or services to which the

trademark concerned is applied, he may apply for the removal of the linkage.

The Institute shall make the appropriate final ruling.

ARTICLE 147.

The transfer of any of the linked trademarks shall be registered only

where all of them are transferred to the same person.

ARTICLE 148.

When registration is sought for any transfer of a registered or pending

trademark that has been the subject of earlier, unregistered transfers,

those earlier transfers shall likewise be registered with the Institute.

ARTICLE 149 Repealed

ARTICLE 150.

The Institute shall refuse the registration of a license or transfer of

rights where the registration of the trademark is not in force.

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CHAPTER VII Invalidity, Lapse and Cancellation of Registration

ARTICLE 151.

The registration of a trademark shall be invalid when:

I. It is granted in violation of the provisions of this Law or that which

was in force at the time of registration;

Notwithstanding the provisions of this subparagraph, the invalidation

action may not be based on a challenge to the legal representation of

the applicant for the registration of the trademark.

II. The trademark is identical or confusingly similar to another that

has been used in the country or abroad prior to the filing date of the

application in respect of the registered trademark and has been applied

to the same or similar products or services, provided that the person

who asserts the stronger right by virtue of prior use proves uninterrupted

use of the mark in the country or abroad prior to the filing date or,

where applicable, prior to the date of first declared use by the person

who has registered it;

III. The registration was granted on the basis of false information

contained in the application;

IV. The registration was granted in error, by mistake, or owing to a

difference of judgment, there being another registration in force which

is considered infringed because it is that of an identical or confusingly

similar trademark applied to identical or similar services or products;

and

V. The agent, representative, user or distributor of the owner of a trademark

registered abroad applies for and secures the registration of the trademark

or of a confusingly similar trademark in his own name without the express

consent of the owner of the foreign trademark, in which case the registration

shall be regarded as having been obtained in bad faith.

Invalidation proceedings under this Article may be instituted within a

period of five years from the date on which the publication of the

registrationintheGazettebecomeseffective,withtheexceptionofactions

under subparagraphs I and V, which may be instituted at any time, and

under subparagraph II, which may be exercised within a period of three

years.

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ARTICLE 152. The registration shall expire in the following cases:

I. When it is not renewed as provided for by this Law; and

II. When the trademark ceases to be used during the three consecutive

years immediately prior to the request for an administrative action for

lapse, except where there are reasons for the non-use that are justified

in the opinion of the Institute.

ARTICLE 153.

There shall be grounds for cancellation of the registration of a trademark

if its owner has caused or condoned its conversion into a generic name

denoting one or more of the products or services for which it was registered

in such a way that, in commercial circles and in the course of its generalized

use by the public, the trademark has lost its distinctive character as

a means of distinguishing the product or service to which it is applied.

ARTICLE 154.

The owner of a registered trademark may at any time, in writing, request

the cancellation of the registration thereof. The Institute may require

authentication of the signature on the request in the cases provided for

in the regulations under this Law.

ARTICLE 155.

The action for invalidity, lapse or cancellation of the registration of

a trademark shall be made for administrative purposes by the Institute,

eitherexofficioorattherequestofapartyortheFederalPublicProsecutor,

where there is an interest on the part of the Federal Government. Lapse

as referred to in Article 152, subparagraph I of this Law shall not require

an administrative action on the part of the Institute.

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TITLE V Appellations of Origin

CHAPTER I Protection of Appellations of Origin

ARTICLE 156.

An appellation of origin shall be understood to be the name of a geographical

region of the country that is used to designate a product originating

therein of which its qualities or characteristics are due exclusively

to the geographical environment, including both natural and human factors.

ARTICLE 157.

The protection that this Law affords to appellations of origin begins

with a declaration issued to that effect by the Institute. Illegal use

of the appellation shall be punished, including cases in which it is

accompanied by indications such as “kind,” “type,” “style,” “imitation”

or other similar terms that create confusion in the mind of the consumer

or imply unfair competition.

ARTICLE 158.

The declaration of protection of an appellation of origin shall be made

ex officio or at the request of any person who demonstrates that he has

a legal interest therein. For the purposes of this Article, The following

shall be considered to have a legal interest:

I. Individuals or companies directly involved in the extraction, production

or manufacture of the product or products to be covered by the appellation

of origin;

II. Chambers or associations of manufacturers or producers; and

III. Agencies or entities of the Federal Government and the governments

of the states of the Federation.

ARTICLE 159.

The application for a declaration of protection of an appellation of origin

shall be made in writing and be accompanied by the evidence on which the

application relies, and shall specify the following:

I. Name, address and nationality of the applicant; if a company is involved,

its nature and the activities in which it is engaged shall also be mentioned;

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II. Legal interest of the applicant;

III. Name constituting the appellation of origin;

IV. Detailed description of the finished product(s) that will be covered

by the appellation, including its characteristics, components, method

of extraction and production or manufacturing processes. The official

standards laid down by the Ministry of Trade and Industrial Development

to which the product, its method of extraction, its manufacturing or

production processes and its forms of packing or packaging are subject

shall be stated when they determine the relation to be established between

the appellation and the product;

V. Place or places of extraction, production or manufacture of the product

to be protected by the appellation of origin, and boundaries of the territory

of origin, due account being taken of geographical features and political

divisions;

VI. Detailed mention of the links between the appellation, product and

territory; and

VII. Any other information considered necessary or relevant by the

applicant.

ARTICLE 160.

Once the request has been received by the Institute and payment of the

relevant fees has been made, the information and documents submitted shall

be examined.

If, in the opinion of the Institute, the documents filed do not meet the

legal requirements or are insufficient for the understanding and analysis

of any of the elements of the application, the applicant shall be required

to make the necessary clarifications or additions, for which purpose he

shall be granted a period of two months.

If the applicant does not meet the requirement within the time allowed,

the application shall be considered abandoned, but the Institute may ex

officiocontinuetheprocessingthereofundertheprovisionsofthisChapter

if it considers such action as appropriate.

ARTICLE 161.

When the documents filed meet the legal requirements, the Institute shall

publish an extract from the application in the Official Journal.

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If the procedure is initiated ex officio, the Institute shall publish

in the Official Journal an extract from the submissions and particulars

required under Article 159, subparagraphs III to VII inclusive, of this

Law.

In both cases the Institute shall allow a period of two months from the

date of publication for any third party who justifies his legal interest

to make observations or objections and provide such proof as he considers

relevant.

ARTICLE 162.

For the purposes of this Chapter, All types of evidence shall be acceptable

with the exception of personal statements and testimonials. Expert

testimony shall be the responsibility of the Institute or of such other

person as the latter may designate. The Institute may at any time prior

to the declaration make such investigations as it considers appropriate

and gather such elements as it considers necessary.

ARTICLE 163.

Once the period referred to in Article 161 of this Law has expired and

once the investigations have been made and the evidence exhibited, the

Institute shall hand down the appropriate ruling.

ARTICLE 164.

If the ruling referred to in the previous Article grants protection to

an appellation of origin, the Institute shall make the declaration and

proceed to publish it in the Official Journal. The declaration by the

Institute granting protection to the appellation of origin shall determine

finally the elements and requirements provided for in Article 159 of this

Law.

ARTICLE 165.

The duration of the declaration of protection for an appellation of origin

shall be determined by the subsistence of the grounds on which it was

made,anditshallceasetobeeffectiveonlybyvirtueofanotherdeclaration

by the Institute.

ARTICLE 166.

The terms of the declaration of protection for an appellation of origin

may be amended at any time, either ex officio or at the request of an

interested party, in accordance with the procedure laid down in this Chapter.

The relevant request shall state what is required by Article 159,

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subparagraphs I to III of this Law and give a detailed account of the

amendments requested and the grounds on which those amendments are based.

ARTICLE 167.

The Mexican State shall be the owner of the appellation of origin. It

may only be used by virtue of authorization issued by the Institute.

ARTICLE 168.

TheInstitute,actingthroughtheMinistryofForeignAffairs,shallprocess

the registration of appellations of origin in respect of which a declaration

of protection has been made under this Law with a view to securing their

recognition abroad in accordance with international treaties.

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Chapter II Authorization of Use

ARTICLE 169.

Applications for authorization to use an appellation of origin shall be

filed with the Institute, and authorization shall be granted to any

individual or company meeting the following requirements:

I. Being directly engaged in the extraction, production or manufacture

of the products protected by the appellation of origin;

II. Engaging in such activity within the territory specified in the

declaration;

III. Complying with the official standards set by the Ministry of Trade

and Industrial Development in accordance with the relevant laws as applied

to the products involved; and

IV. any other person specified in the declaration.

ARTICLE 170.

The application for authorization to use an appellation of origin shall

contain the particulars and be accompanied by the documents specified

in the regulations under this Law.

ARTICLE 171.

On receiving the application for authorization to use an appellation of

origin, the Institute shall proceed as provided for in Article 160 of

this Law and, if the legal requirements are met, it shall proceed to grant

the authorization.

ARTICLE 172.

The effects of the authorization to use an appellation of origin shall

have a duration of ten years, starting from the date on which the application

is filed with the Institute, and may be renewed for equal periods.

ARTICLE 173.

The user of an appellation of origin shall be under the obligation to

use it in the form in which it is protected according to the declaration.

If it is not used in the form specified, there shall be grounds for

cancellation of the authorization.

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ARTICLE 174.

Therighttouseanappellationoforiginmaybetransferredbytheauthorized

user in compliance with the provisions of ordinary legislation. Any such

transfer shall be effective only from the time of its registration with

the Institute, after proof has been given of the new user meeting the

conditions and requirements laid down in this Law for the grant of the

right to use the appellation of origin.

ARTICLE 175.

The authorized user of an appellation of origin may in turn, by agreement,

allow the use of the appellation, but only by those persons who distribute

or sell products bearing his trademarks. The agreement shall be sanctioned

by the Institute and shall become effective upon its registration by it.

The agreement shall contain a clause placing the distributor or trader

under the obligation to comply with the requirements laid down in Article

169, subparagraphs III and IV of this Law and those in the regulations

thereunder. Should the distributor or trader fail to meet this obligation,

there shall be grounds for cancellation of the registration.

ARTICLE 176.

The authorization granted to the user of an appellation of origin shall

cease to be effective under the following circumstances:

I. invalidity, in any of the following cases:

(a) When it has been granted in violation of the provisions of this Law;

(b) When it has been granted on the basis of false information and documents;

II. Cancellation, when the authorized user uses the appellation of origin

in a manner different from that specified in the declaration of protection;

III. Expiry of its term.

ARTICLE 177.

Administrative actions for invalidity and cancellation shall be made by

the Institute either ex officio or at the request of a party or the Federal

Public Prosecutor.

ARTICLE 178.

In addition to the publications provided for in this Chapter, declarations

issued and authorizations granted by the Institute, and also any act that

puts an end to the effects of the rights granted in connection with an

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appellation of origin, shall be published in the Gazette.

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TITLE V bis Layout Designs of Integrated Circuits

ARTICLE 178 bis.

The layout designs of integrated circuits shall be registered and protected

in accordance with this Title. To that end, the Institute shall have the

following powers:

I. To process and, where appropriate, to grant the registration of layout

designs of integrated circuits, and also the registration of transfers

and licenses for the use and exploitation thereof, in compliance with

this Law and the regulations thereunder;

II. To substantiate the proceedings for the administrative action for

infringement, invalidity or lapse in connection with the registration

of layout designs of integrated circuits, to issue the rulings to which

said proceedings give rise and to impose such sanctions as may be

appropriate; and

III. Where not agreed between the parties, to set the amount of the royalties

referred to in the second paragraph of Article 178 bis5,subparagraphV

of this Title.

ARTICLE 178 bis.1.

For the purposes of this Title:

I. “Integrated circuit” refers to a product, in its final or an intermediate

form, in which the elements, at least one of them being an active element,

and some or all of the interconnections form an integral part of the body

or surface of a piece of semiconductor material, and which is intended

to perform an electronic function;

II. “Layout design” or “topography” refers to the three-dimensional

arrangement, expressed in any form, of the elements, at least one of which

isanactiveelement,andsomeoralloftheinterconnectionsofanintegrated

circuit, or such a three-dimensional arrangement designed for an integrated

circuit intended for manufacture;

III. “Protected layout design” refers to a layout design of integrated

circuits in relation to which the requirements of protection referred

to in this Title are satisfied; and

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IV. “Original layout design” refers to a layout design of integrated

circuits that is the result of intellectual effort on the part of its

creator and is not usual or commonplace to the creators of layout designs

or manufacturers of integrated circuits at the time of its creation.

Article 178 bis.2.

An original layout design may be eligible to be registered, whether

incorporated in an integrated circuit or not, where it has not been

commercially used anywhere in the world. It may also be registered, even

where it has been commercially used in the ordinary way, in Mexico or

abroad, provided that the application for registration is filed with the

Institute within two years following the date on which the applicant first

commercially used it in the ordinary way anywhere in the world.

A layout design consisting of a combination of elements or interconnections

that are usual or commonplace to creators of layout designs or manufacturers

of integrated circuits at the time of its creation may be registered only

if the combination as a whole is considered original within the meaning

of subparagraph IV of Article 178 bis 1 of this Title, and if meets the

other conditions laid down in the previous paragraph.

Article 178 bis.3.

The registration of a layout design shall have a non-renewable term of

ten years, starting from the filing date of the application for registration,

and shall be subject to payment of the applicable fee.

Article 178 bis.4.

The registration of a layout design shall confer on its owner the right

to prevent others from doing the following without his authorization:

I. Reproducing the protected layout design in its entirety, or any part

thereof that is considered original in itself within the meaning of

subparagraph IV of Article 178 bis l of this Law, by incorporation in

an integrated circuit or otherwise; and

II. Importing, selling or distributing in any form for commercial purposes

any of the following:

a) A protected layout design;

b) An integrated circuit incorporating a protected layout design; or

c) A product incorporating an integrated circuit that itself incorporates

an unlawfully reproduced protected layout design.

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ARTICLE 178 bis 5.

The right conferred by the registration of a layout design shall have

no effect on any third party who:

I. reproduces a protected layout design without the owner’s authorization

for private purposes or for the sole purpose of evaluation, analysis,

research or teaching;

II. creates a layout design that meets the originality requirement based

on the evaluation or analysis of a protected layout design referred to

in subparagraph I of this Article;

The creator of the second layout design may perform any of the acts referred

to in the previous Article in relation to the layout design created by

him, without the authorization of the owner of the first protected layout

design.

III. has independently created an original layout design identical to

the protected layout design prior to the publication of the registration

in the Gazette;

Anyone who seeks to avail himself of this exception in an administrative

action shall bear the burden of proof.

IV. performs any of the acts referred to in subparagraph II of the previous

Article in relation to the following. without the owner’s authorization

and after they have been lawfully placed on the market in Mexico or in

any part of the world by the owner or with his consent:

a) a protected layout design;

b) an integrated circuit incorporating a protected layout design; or

c) a product incorporating an integrated circuit that itself incorporates

a protected layout design;

V. sells or distributes, in any form without the owner’s authorization,

an integrated circuit incorporating an unlawfully reproduced protected

layout design, insofar as the person who performs or orders those acts

did not know and had no reasonable means of knowing, on acquiring such

an integrated circuit, that it incorporates an unlawfully reproduced

protected layout design.

Asofthemomentwhenthethirdpartyactingingoodfaithreceivessufficient

notice that the protected layout design has been unlawfully reproduced,

he shall be obliged to pay a reasonable royalty such as would be payable

under a freely negotiated license for such a layout design,with a view

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to exhausting current stocks or fulfilling orders made prior to the

notification.

The performance of any activity provided for in this Article shall not

constitute an administrative infringement or offense within the meaning

of this Law.

ARTICLE 178 bis.6.

In addition to the particulars specified in Article 38 of this Law, the

application for registration shall be accompanied by the following:

I. a sworn declaration stating the date and place of first ordinary

commercial use anywhere in the world, or stating that there has been no

exploitation;

II. a graphic or photographic reproduction of the layout design; and

III. a mention of the electronic function performed by the integrated

circuit in which the layout design is incorporated.

The applicant may exclude the parts of the graphic or photographic

reproduction that relate to the method of manufacture of the integrated

circuit, provided that the parts shown are sufficient for the layout design

to be identified.

ARTICLE 178 bis.7.

The registration of a layout design shall be effected in compliance with

the applicable provisions of Articles 34, 35, 38, 38 bis, 39, 50 and 55

bis to 60 of this Law.

The provisions contained in Articles 62 to 69 of this Law shall be applicable

to the transfer or licensing of the rights conferred by the registration

of a protected layout design. There shall be no grant of compulsory licenses.

ARTICLE 178 bis.8.

The registration of a protected layout design shall be null and void where

it has been granted in violation of the provisions of Article 178 bis.2

ofthisTitle,theprovisionsofArticles78to81ofthisLawbeingapplicable

as appropriate.

ARTICLE 178 bis.9.

For the purposes of Article 229 of this Law, protected layout designs

or the integrated circuits in which they are incorporated shall display

a circled or otherwise enclosed letter “M” or “T” , accompanied by the

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name of the owner, in either the full or the abbreviated form by which

he is generally known.

The owner of the registration of a layout design may seek damages from

third parties who, before the grant of said registration, have used the

layout design without his consent, provided that said use took place after

the filing date of the application for registration and the layout design

concerned complies with the provisions of the previous paragraph.

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Title VI Administrative Procedures

Chapter I General Rules of Procedure

ARTICLE 179.

Any application or submission filed with the Institute that relies on

the provisions of this Law and other provisions derived from this Law

shall be filed in writing and be written in Spanish.

Documents filed in a different language shall be accompanied by a Spanish

translation.

ARTICLE 180.

The applications and submissions must be signed by the applicant or his

representative and be accompanied by proof of payment of the prescribed

fee, if applicable. The lack of signature in the application or submission

will render it incomplete, and in the case of non-payment of the fees,

the Institute will notify the applicant or his representative to remedy

the omission within a period of five consecutive working days, and if

he does not follow the notice, the Institute will reject the applications

or submission.

ARTICLE 181.

When applications and submissions are filed through an agent, the agent

shall prove his status:

I. in a simple power of attorney signed before two witnesses if the principal

is an individual;

II. in a simple power of attorney signed before two witnesses if, in the

case of legal entities, the case involves applications for patents or

registrations or the registration of licenses or transfers of licenses.

In the latter case the power of attorney shall specify that the person

granting is invested with the power to do so, and shall quote the instrument

by which that power is conferred;

III. in cases not covered by the previous subparagraph, in a public document

or power of attorney with authentication of signatures before a notary

or intermediary when a Mexican company is involved, the legal existence

of the latter and the powers of the grantor having also to be verified;

and

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IV. in cases not covered by subparagraph II, in a power of attorney granted

under the applicable legislation of the place in which it is granted or

in accordance with international treaties where the principal is a foreign

company. When in such a power of attorney proof is given of the legal

existence of the company in the name of which the power is granted, and

of the grantor’s right to confer said power, the validity of the power

shall be presumed in the absence of proof to the contrary.

To substantiate the status of the agent, in the application for registration,

subsequent renewals, and registration of relevant licenses or transfers

of trademark, collective mark, trade announcement and publication of trade

names, it is sufficient that the president simply states in the application

that the agent has powers to carry out the necessary formalities, as long

as the same agent handles it from start to completion of the procedure.

If after the filing of the application a new agent involves, he shall

prove his status according to this article.

ARTICLE 182.

When an application or submission is filed by several individuals, the

relevant document shall specify which of them is the common representative ,

failing which it shall be understood that the first person mentioned is

the common representative.

ARTICLE 183.

In any application the applicant shall give an address for the service

and receipt of notifications on the national territory, and he shall

communicate any change in that address to the Institute. If no notice

of a change of address is given, notifications shall be considered to

have been legally served at the address appearing in the file.

ARTICLE 184.

Where this Law expresses periods in a given number of days, only working

days shall be counted; in the case of terms expressed in months or years,

the calculation shall be from date to corresponding date, with non-working

days included.

Periods shall start on the day following the relevant notification.

Publications in the Gazette shall have the effect of notifications on

the date specified in the Gazette itself or, if none is specified, on

the day following that on which the Gazette was brought into circulation.

Article 185.

The files of patents and registrations in force, and also those relating

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to published commercial names and appellations of origin, shall always

be available for all types of consultation and for use in filing submissions.

Article 186.

Pending patent, utility model and industrial design files may be consulted

only by the applicant or his representative, or persons authorized by

the same, except when said files are cited as anticipations to another

applicant, or where they are submitted as proof in an administrative action

procedure, in which case the measures necessary for the preservation of

confidentiality shall be observed.

The staff of the Institute who intervene in the various procedures to

be conducted pursuant to this Law and the regulations thereunder shall

be bound to observe absolute secrecy regarding the contents of pending

files, failing which they shall be punished in accordance with the Federal

Law on Accountability of Public Servants, regardless of whatever sanctions

may be appropriate in such cases. The staff of public or private bodies

that may be privy to said contents in dealings with the Institute in the

course of their duties shall be bound by the same obligation.

Information with official nature or required by the judicial authority

is excluded from the foregoing.

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Chapter II Administrative Action Procedure

Article 187.

Statements of administrative action for invalidity, lapse, cancellation

and administrative infringement under this Law shall be examined and ruled

upon according to the procedure specified in this Chapter and the

formalities laid down in this Law, and the Federal Code of Civil Procedure

shall be subsidiarily applicable insofar as it does not contravene this

Law.

ARTICLE 188.

The Institute may initiate the administrative action procedure ex officio

or upon request by anyone with a legal interest and grounds for his claim.

Similarly, any person may state in writing to the Institute the existence

of grounds for initiating administrative action procedure ex officio,

in which case the Institute may consider such information as evidence

to determine the start of the procedure, if deemed appropriate.

ARTICLE 189.

Any statement of administrative action shall contain the following

particulars:

I. name of the requestor and of his representative if any;

II. address for the service and receipt of notifications;

III. name and address of the other party or of his representative;

IV. the subject of the request, expressed in clear and precise terms;

V. an account of the facts; and

VI. the underlying legal grounds.

ARTICLE 190.

Originals or duly certified copies of the documents and statements on

which the action relies shall be submitted with the request for an

administrative action, and the corresponding proof shall be offered. Proof

submitted later shall not be allowed unless it materializes later. The

requestor shall also submit the number of simple copies of the application

and accompanying documents as is necessary to pass on to the other party.

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Where any document that is available in the archives of the Institute

is offered as proof, it shall be sufficient for the requestor to specify

the file in which it is to be found and to request the issue of the appropriate

certified copy or, where applicable, the certification of the plain copy

that is submitted, and request that the Institute summon the owner concerned

using the plain copy of said proof.

ARTICLE 191.

If the requestor fails to comply with the requirements referred to in

Article 189 of this Law or fails to submit the copies of the application

and accompanying documents as referred to in Article 190 of this Law,

the Institute shall call upon him once, and only once, to remedy the omission

or to provide the appropriate clarifications; to that end he shall be

allowed a period of eight days, and, if the requirement is not complied

with in the time allowed, the request shall be rejected.

The request shall also be rejected for failure to submit a document attesting

the requestor’s status, or if the registration, patent, authorization

or publication on which the action relies is invalid.

ARTICLE 192.

All types of evidence shall be allowed in the administrative action

procedures, with the exception of testimonials and personal statements,

unless the testimonial or personal statement is in documentary form, and

evidence that is contrary to morality and the law.

Without prejudice to the provisions of the previous paragraph, evidentiary

value shall be accorded, for the purposes of this Law, to invoices issued

and inventories drawn up by the owner or his licensee.

ARTICLE 192 bis.

For the substantiation of facts liable to constitute an infringement of

any one or more of the rights protected by this Law, or in administrative

action procedures, the Institute may avail itself of such elements of

proof as it considers necessary.

Where the affected owner or alleged infringer has submitted a sufficient

amount of proof to which he could reasonably have access in support of

his claims and has specified the relevant proof to substantiate those

claims that is in the possession of the opposing party, the Institute

may order the latter to submit said proof, subject, where appropriate,

to such conditions as will guarantee the protection of confidential

information.

Where the affected owner or alleged infringer refuses access to proof

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or fails to provide relevant proof in his possession in a reasonable time,

or significantly obstructs the procedure, the Institute may hand down

preliminary and final rulings, either favorable or adverse, on the basis

of the proof submitted, including the arguments put forward by the person

adversely affected by the denial of access to the proof, on condition

that the parties concerned are given the opportunity to be heard in relation

to the arguments and to the proof submitted.

ARTICLE 192 bis.1.

Where the subject matter of the patent is a process for the manufacture

of a product, the alleged infringer shall, in the procedure for the

administrative action for infringement, prove that said product has been

manufactured according to a process different from the patented process

where:

I. the product obtained using the patented process is new; and

II. there is a significant probability that the product has been

manufactured using the patented process and the owner of the patent has

not succeeded, in spite of having tried, in establishing the process

actually used.

ARTICLE 193.

On accepting the statement of administrative action for invalidity, lapse

and cancellation, with the plain copy of the application and accompanying

documents, the Institute shall notify the owner concerned of such, allowing

himaperiodofonemonthwithinwhichtomake,inwriting,whateverstatement

best serves his interests. Procedures for the administrative action for

infringement shall conform to the provisions of Articles 209, subparagraph

IX, and 216 of this Law. The notification shall be made to the address

given by the party requesting the administrative action.

ARTICLE 194.

Where it has not been possible to make the notification referred to in

the previous Article on account of a change of address, whether that

specified by the requestor or that found in the relevant file, and the

new address is not known, the notice shall be served at the expense of

the person requesting the measure by publication, once and only once,

in the Official Journal and in a major national newspaper. The publication

shall disclose an extract from the statement of administrative action

and a period of one month shall be specified for the owner concerned to

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make whatever statement best serves his interests.

ARTICLE 195.

In the administrative action procedure issues specially ruled upon

previously shall not be examined, but will be settled when the appropriate

finding is handed down.

ARTICLE 196.

When the Institute initiates the administrative action procedure ex officio,

notice shall be served on the owner concerned or, where applicable, on

the alleged infringer, at the address specified in the relevant file and,

if any change has occurred without the Institute being notified, by

publication as provided for in Article 194 of this Law.

ARTICLE 197.

The document in which the owner concerned or, where applicable, the alleged

infringer, makes his statements shall contain:

I. name of the owner concerned or alleged infringer and that of his

representative if any;

II. address for the service and receipt of notifications;

III. exceptions and defenses;

IV. statements on or rebuttals of each of the points in the request for

an administrative action; and

V. legal grounds.

The provisions of Article 190 of this Law shall apply to the filing of

the aforementioned document and the submission of evidence.

ARTICLE 198.

When the owner concerned, or where applicable, the alleged infringer,

is unable to submit all or part of the evidence within the period allowed,

owing to the evidence being abroad, he may be granted a further period

of 15 days for its submission, provided that he proposes it in his document

and makes a statement to that effect.

ARTICLE 199.

Once the period for the affected owner or the alleged infringer, to make

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his statements and, where applicable, the further period referred to in

the previous Article, have expired, following a study of applicable

precedents and the consideration of all the evidence, the appropriate

administrative ruling shall be handed down and the parties concerned shall

be notified accordingly at the addresses mentioned in the file or, where

necessary, By means of publication as provided for in Article 194 of this

Law.

In the case of procedures for the administrative action for infringement,

the same ruling shall likewise impose the sanction where one is appropriate.

ARTICLE 199 bis.

In administrative action procedures relating to the infringement of any

of the rights protected by this Law, the Institute may adopt the following

measures:

I. order the withdrawal from circulation or ban the distribution of

merchandise that infringes such rights as are protected by this Law;

II. order the withdrawal from circulation of:

a) objects manufactured or used illegally,

b) objects, wrappers, containers, packaging, paperwork, advertising

material and similar Articles that infringe any of the rights protected

by this Law,

c) signs, labels, tags, paperwork and similar Articles that infringe any

of the rights protected by this Law, and

d) implements or instruments intended or used for the manufacture,

preparation or production of any of the Articles specified in items a,band

c, above;

III. prohibit with immediate effect the marketing or use of the goods

by which one of the rights protected by this Law is infringed;

IV. order the seizure of goods, which shall take place in accordance with

the provisions of Articles 211 to 212 bis.2;

V. order the alleged infringer or third parties to suspend or discontinue

the acts constituting a violation of the provisions of this Law; and

VI. order the suspension of the rendering of the service or the closure

of the establishment where the measures provided for in the previous

subparagraphs are not sufficient to prevent or avoid the infringement

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of the rights protected by this Law.

If the product or service is on the market, the traders or service providers

shall be under the obligation to abstain from disposing of the product

or rendering the service as from the date on which the ruling is notified

to them.

Producers, manufacturers and importers shall be under the same obligation,

as shall their distributors, who shall be responsible for immediately

recovering any goods that are already on the market.

ARTICLE 199 bis.1.

Before ordering the implementation of the measures referred to in the

previous Article, the Institute shall call upon the requestor to:

I. prove his ownership of the rights and any of the following circumstances:

a) the existence of an infringement of his rights,

b) the imminence of the infringement of his rights,

c) the existence of the possibility of irreparable damage being sustained,

and

d) the existence of a justified fear that evidence might be destroyed,

concealed, lost or altered;

II. provide sufficient security to cover any damages that might be caused

to the person against whom the measure is sought; and

III. provide the necessary information for the identification of the goods,

services or establishments with which or in which the infringement of

industrial property rights has been committed.

A person against whom the measure has been granted may provide

counter-security to cover any damages that might be caused to the party

seeking it, with a view to having it lifted.

The Institute shall take into consideration the seriousness of the

infringement and the nature of the measure sought.

To determine the amount of the security, the Institute shall consider

the elements that the right holder brings as well as those arising from

the actions. The amount of the counter-security shall include the amount

of the security provided by the applicant and a forty percent of that.

The Institute may require the applicant to increase the security, when

the practice of action is clear that the initially granted security is

insufficient to cover any damages that may cause the person against whom

action is sought. Similarly, the Institute may order an increase in

counter-security.

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ARTICLE 199 bis.2.

A person against whom any of the measures referred to in Article 199 bis

of this Law has been ordered shall have a period of ten days within which

to submit to the Institute any observations that he might have regarding

said measure.

The Institute may amend the terms of the measure that has been adopted

in the light of any observations made to it.

ARTICLE 199 bis.3.

The party requesting the provisional measures referred to in Article 199

bis shall be liable for the payment of damages caused to the person against

whom they have been carried out when:

I. the final ruling handed down on the merits of the dispute finds that

there has been no infringement or threat of infringement of the rights

of the party seeking the measure; and,

II. precautionary measures have been requested, and the petition or

statement of administrative action for infringement has not been filed

with the competent authority or the Institute on the substance of the

dispute within a period of 20 days beginning with the implementation of

the measure.

ARTICLE 199 bis.4.

The Institute shall hand over to the person concerned any security or

counter-security that may have been deposited when the procedure for

administrative action for an infringement is settled.

ARTICLE 199 bis.5.

The Institute shall, in the final ruling on the administrative action

for infringement procedure, decide on the lifting or confirmation of the

measures adopted.

Article 199 bis.6.

It shall be ensured, in any provisional measures ordered, that they do

not serve as the means of violating trade secrets or engaging in acts

that constitute unfair competition.

ARTICLE 199 bis 7.

The requesting party may only use the documentation relating to the

application of provisional measures to institute the appropriate

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proceedings or for inclusion in files pertaining to pending procedures,

and shall be prohibited from using it, disclosing it or communicating

it to third parties.

ARTICLE 199 bis.8.

In the procedures for the administrative action for infringement, the

Institute shall at all times seek to reconcile the interests of those

involved.

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Chapter III Appeal for Reconsideration

ARTICLE 200.

An appeal for reconsideration may be made against a decision refusing

a patent or utility model or industrial design registration; it shall

be filed with the Institute in writing within a period of 30 days from

the date on which notice is given of the relevant ruling. The appeal shall

be accompanied by the documentation attesting its legal basis.

ARTICLE 201.

Once the arguments presented in the appeal and the documents provided

have been examined, the Institute shall issue the appropriate ruling,

which shall be communicated to the appellant in writing.

ARTICLE 202.

If the ruling issued by the Institute rejects the appeal, that fact shall

be communicated to the appellant in writing and published in the Gazette.

When the ruling is in the appellant’s favor, the procedure specified in

Article 57 of this Law shall apply.

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Title VII Inspection, Administrative Infringements and Sanctions, and

Offenses

Chapter I Inspection

ARTICLE 203.

In order to verify compliance with the provisions of this Law and other

provisions derived therefrom the Institute shall carry out inspections

and monitoring in accordance with the following procedures:

I. requests for reports and information; and,

II. inspections.

ARTICLE 204.

All persons shall be under the obligation to provide the Institute, within

a period of 15 days, with such reports and information as are requested

of them in writing in connection with their observance of the provisions

of this Law and other provisions derived therefrom.

ARTICLE 205.

Inspections shall be carried out on working days and during working hours,

only by staff authorized by the Institute, and on presentation of

identification and the appropriate warrant.

The Institute may also authorize the conduct of inspections on non-working

days and outside working hours in order to prevent infringements from

beingcommitted,inwhichcasethewarrantshallspecifysuchauthorization.

ARTICLE 206.

The proprietors or those in charge of establishments that manufacture,

store, distribute or sell products, or offer products for sale or render

services shall be under the obligation to admit the staff holding the

warrant to carry out the inspections, provided that they comply with the

requirements laid down in the previous Article.

ARTICLE 207.

Inspections shall be understood as being those conducted at locations

where products are manufactured, stored, shipped, delivered or marketed,

or where services are rendered, for the purpose of examination of the

products or the conditions under which the services are rendered, and

the documents relating to the activity in question.

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ARTICLE 208.

Every inspection shall give rise to the production of a detailed record

in the presence of two witnesses proposed by the person with whom the

inspection has been arranged, or by the inspector who carried it out if

the latter has refused to propose such witnesses.

ARTICLE 209.

The record shall contain:

I. the hour, day, month and year when the inspection was carried out;

II. the street, number, locality and state in which the site where the

inspection was carried out is located;

III. the number and date of the warrant authorizing the inspection,

including the identity of the inspector;

IV.thenameandpositionofthepersonwithwhomtheinspectionwasarranged;

V. the names and addresses of the persons acting as witnesses, whether

designated by the party visited or, failing that, by the inspector;

VI. a mention of the opportunity given to the party visited to exercise

his right to make observations to the inspector in the course of the

inspection;

VII. information on the conduct of the inspection;

VIII. a statement by the party visited, if he wished to make one;

IX. a mention of the opportunity given to the party visited to exercise

his right to confirm in writing the observations that he made at the time

of the inspection, and to make additional observations on the production

of the record within a period of ten days; and

X. the names and signatures of the persons who took part in the inspection,

including the inspector, and, where applicable, a mention that the party

visited refused to sign the record.

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ARTICLE 210.

When making observations either during the inspection or in writing, the

parties visited may offer proof relating to the facts contained in the

record.

ARTICLE 211.

If in the course of the inspection irrefutable proof is provided of any

of the acts having been committed or the events having occurred that are

provided for in Articles 213 and 223, the inspector shall, as a precautionary

measure, confiscate the products with which such infringements or offenses

were presumably committed, and shall make an inventory of the goods

confiscated, which shall be mentioned in the record of the inspection,

the person in charge or the proprietor of the establishment in which they

were found being designated as depositary if said establishment has fixed

premises, failing which the products shall be consigned to the Institute.

If acts are involved that could possibly constitute offenses, the Institute

shall state that fact in the ruling that it issues on the subject.

ARTICLE 212.

A copy of the inspection record shall be left with the person with whom

the inspection was arranged, even where that person has refused to sign

it, its validity being unaffected thereby.

ARTICLE 212 bis.

The confiscation referred to in Article 211 of this Law may be practiced

on:

I. equipment, instruments, machinery, devices, designs, specifications,

plans, manuals, molds, printing blocks, plates and, in general, any other

means used in the performance or perpetration of the acts regarded in

this Law as infringements or offenses;

II. Books, registries, documents, models, samples, labels, paperwork,

advertising material, invoices and, in general, any other material from

which elements of proof may be inferred; and

III. merchandise, products and any other goods in relation to which the

infringement of the rights protected by this Law takes place.

ARTICLE 212 bis 1.

In the confiscation of goods referred to in the previous Article, the

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person or institution whom or which the party applying for the measure

appoints under his own responsibility shall be the preferred depositary.

ARTICLE 212 bis 2.

In the event of the final ruling on the substance of the dispute finding

that an administrative infringement has indeed been committed, the

Institute shall decide on the fate of the confiscated goods, after hearing

the parties, and in doing so shall abide by the following rules:

I. it shall make available to the competent judicial authority the goods

that have been confiscated as soon as it receives notice that the judicial

action seeking compensation for material damages or payment of damages

has been initiated;

II. it shall place them at the disposal of any persons specified by the

award where an arbitration procedure has been chosen;

III. it shall where appropriate proceed according to the terms laid down

in the agreement that the owner concerned and the presumed infringer have

entered into regarding the fate of the goods;

IV. in the cases not included in the previous subparagraphs, each of the

parties concerned shall submit in writing, within the five days following

that on which they are given sight thereof, his proposal regarding the

fate of the confiscated goods that have been withdrawn from circulation

or whose marketing has been prohibited;

V. it shall give the parties sight of the proposals submitted in order

that they, by common consent, may decide on the fate of said goods, which

decision they shall communicate to the Institute in writing within the

five days following that on which they were given sight; and

VI. if the parties fail to announce in writing their agreement on the

fate of the goods within the period allowed, or if none of the situations

referred to in subparagraphs I to III above has arisen within a period

of 90 days from the issue of the final decision, the board of Directors

of the Institute may decide on:

a) the donation of the goods to departments and agencies of the Federal

Public Administration, states, municipal councils or public, charity or

social security institutions, provided that the public interest is not

affected thereby; or

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b) the destruction thereof.

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Chapter II Administrative Infringements and Sanctions

ARTICLE 213.

The following shall constitute administrative infringements:

I. engaging in acts contrary to proper practice and custom in industry,

commerce and services, which amount to unfair competition and which relate

to the subject matter regulated by this Law;

II. causing to appear as patented products goods that are not. If the

patent has expired or been declared invalid there shall be infringement

after one year following the date of lapse or, where applicable, the date

on which the action for invalidity became effective;

III. Distributing or placing products on sale or offering services with

the indication that they are protected by a registered trademark when

they are not; if the registration of the trademark has expired or been

declared invalid or cancelled, there shall be infringement one year after

the date of lapse or, where applicable, the date on which the relevant

action became effective;

IV. using a trademark confusingly similar to another registered trademark

to protect products or services identical or similar to those protected

by the registered trademark;

V. using a registered trademark or one confusingly similar thereto without

the consent of its owner as an element of a commercial name or business

name, or vice versa, provided that said commercial names or business names

are related to establishments working with the products or services

protected by the trademark;

VI. using, within the geographical area of the actual clients or in any

part of the Republic in the case provided for in Article 105 of this Law,

a commercial name that is identical or confusingly similar to another

already being used by a third party to protect an industrial, commercial

or service establishment in the same or a similar field;

VII.usingastrademarksthenames,signs,symbols,abbreviationsoremblems

referred to in Articles 4 and 90, subparagraphs VII, VIII, IX, XII, XIII,

XIV and XV of this Law;

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VIII. using a trademark previously registered or confusingly similar

thereto as a commercial name or business name or part of such a name by

an individual or company whose activity is the production, import or

marketing of goods or services identical or similar to those to which

the registered trademark is applied without the written consent of the

owner of the trademark registration or of the person empowered to give

such consent;

IX. performing, in the course of industrial activities or trade, acts

that confuse, mislead or deceive the public by causing it wrongly to believe

or assume:

a) that a relation or association exists between a given establishment

and that of a third party,

b) that products are manufactured according to specifications, licenses

or authorizations from a third party,

c) that services are rendered or products sold according to authorizations,

licenses or specifications from a third party,

d) that the product concerned comes from a territory, region or locality

different from the true place of origin, in such a way as to mislead the

public as to the geographical origin of the product;

X. pursuing or achieving the aim of denigrating the products or services,

the industrial or commercial activity or the establishment of another

party. This provision shall not apply to the comparison of products or

services protected by the trademark for the purpose of informing the public,

provided that the comparison is not biased, false or exaggerated within

the meaning of the Federal Consumer Protection Law;

XI. manufacturing or developing goods protected by a patent or by a utility

model or industrial design registration without the consent of the owner

thereof or without the appropriate license;

XII. offering for sale or distributing goods protected by a patent or

by a utility model or industrial design registration in the knowledge

that they have been manufactured or developed without the consent of the

owner of the patent or registration or without the appropriate license;

XIII. using patented processes without the consent of the owner of the

patent or without the appropriate license;

XIV. offering for sale or distributing goods that are the result of the

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use of patented processes, in the knowledge that they have been used without

the consent of the owner of the patent or of the person who holds a licenseof

use thereof;

XV. reproducing or imitating industrial designs protected by registration

without the consent of the owner thereof or without an appropriate license;

XVI. using registered advertisements or advertisements confusingly

similar thereto without the consent of the owner thereof or without the

appropriate license for the purpose of advertising goods, services or

establishments identical or similar to those to which the announcement

applies;

XVII. using a commercial name or a name confusingly similar thereto without

the consent of the owner thereof or without the appropriate license to

protect an industrial, commercial or service establishment in the same

or a similar branch;

XVIII. using a registered trademark without the consent of the owner thereof

or without the appropriate license on goods or services identical or similar

to those to which the trademark is applied;

XIX. offering for sale or distributing goods identical or similar to those

to which a registered trademark is applied in the knowledge that said

trademark has been used on those goods without the consent of the owner

thereof;

XX. offering for sale or distributing goods to which a registered trademark

is applied and which have been altered;

XXI. offering for sale or distributing goods to which a registered trademark

is applied after having partially or totally altered, replaced or deleted

said trademark;

XXII. using an appellation of origin without the appropriate authorization

or license;

XXIII. reproducing a protected layout design without the authorization

of the owner of the registration in its entirety, or any part that is

considered original in itself, by incorporation in an integrated circuit

or in another way;

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XXIV. importing, selling or distributing any of the following in violation

of the provisions of this Law, without the authorization of the owner

of the registration, in any form for commercial purposes:

a) a protected layout design;

b) an integrated circuit incorporating a protected layout design; or

c) a product incorporating an integrated circuit that itself incorporates

an unlawfully reproduced protected layout design;

XXV. not providing the franchisee with the information referred to in

Article 142 of this Law, provided that the relevant period has expired

and that the information has been requested;

XXVI. Using a combination of distinctive signs, and operating elements

andimage,toidentifyproductsorservicesidenticalorconfusinglysimilar

to others protected by this Act and, through their use, to induce the

public to cause confusion, mistake or deception, to believe or assume

the existence of a relationship between the owner of the rights protected

and the unauthorized user. Use of such operating elements and image in

the manner indicated is unfair competition in terms of Section I of this

article;

XXVII. When the patentee or his licensee, user or distributor, start

infringement proceedings against one or more third parties, once the

Institute has been determined in a procedure that caused previous

administrative enforcement, the lack of the same offense, and

XXVIII. The other violations of the provisions of this Act do not constitute

crimes.

ARTICLE 214.

Administrative infringements of this Law or other provisions derived

therefrom shall be sanctioned as follows:

I. a fine of up to 20,000 days of the general minimum salary payable in

Mexico City;

II. an additional fine of up to 500 days of the general minimum salary

payable in Mexico City for each day that the infringement persists;

III. temporary closure for up to 90 days;

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IV. permanent closure;

V. administrative detention for up to 36 hours.

ARTICLE 215.

The investigation of administrative infringements shall be carried out

by the Institute either ex officio or at the request of the interested

party.

ARTICLE 216.

Should the nature of the administrative infringement not warrant an

inspection, the Institute shall serve notice on the presumed infringer,

with the elements and proof on which the alleged infringement relies,

allowing him a period of ten days within which to make whatever statement

best serves his interests and submit the corresponding proof.

ARTICLE 217.

Once the term referred to in Articles 209, subparagraph IX and 216 of

this Law has expired, the Institute shall hand down the appropriate ruling

on the basis of the inspection record issued and, where no record was

warranted by the nature of the infringement, on the basis of the elements

appearing in the file, taking due account of the statements and evidence

submitted by the interested party.

ARTICLE 218.

In the event of a second or subsequent offense the fines previously imposed

shall be doubled, but the amount thereof shall not exceed three times

the applicable maximum set in Article 214 of this Law.

For the purposes of this Law and the other provisions deriving therefrom,

second or subsequent offense refers to every subsequent infringement of

one and the same provision, committed within the two years following the

date on which the ruling on the infringement was handed down.

ARTICLE 219.

Closures may be ordered in the decision that rules on the infringement

in addition to a fine or without a fine having been imposed. There shall

begroundsforpermanentclosurewhentheestablishmenthasbeentemporarily

closed twice within a period of two years if, during said period, the

infringement is repeated regardless of whether the location thereof has

changed.

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ARTICLE 220.

For determining sanctions the following shall be taken into account:

I. the intentional nature of the act or omission constituting the

infringement;

II. the economic circumstances of the infringer; and

III. the seriousness of the infringement in relation to the trading of

products or the rendering of services, and also the harm done to those

directly affected.

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ARTICLE 221.

The sanctions provided for in this Law and other provisions deriving

therefrom shall be imposed in addition to appropriate indemnification

for damages of the parties affected under ordinary legislation and without

prejudice to the provisions of the following Article.

ARTICLE 221 bis.

Compensation for material damages or indemnification for damages due to

violation of the rights conferred by this Law shall in no case be less

than 40 percent of the public sale price of each product or the price

of the rendering of services where infringement of any one or more of

the industrial property rights provided for in this Law is involved.

ARTICLE 222.

If, on examining the file relating to the investigation of an administrative

infringement, the Institute notes that acts have been committed that might

constitute any of the offenses provided for in this Law, it shall state

that fact in the decision that it issues.

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Chapter III Offenses

ARTICLE 223.

The following shall constitute offenses:

I. repeating the conduct provided for in Article 213, subparagraphs II

to XXII of this Law once the first administrative sanction imposed on

that account has been enforced;

II. falsifying trademarks, protected by this Law, on a commercial scale

and with ill intent;

III. producing, storing, transporting, introducing into the country,

distributing or selling, on a commercial scale and with ill intent, items

which display falsifications of trademarks protected by this Law, as well

as knowingly providing or supplying in any form raw or other materials

intended for the production of objects which display falsifications of

trademarks protected by this Law;

IV. revealing to a third party a trade secret that was known by virtue

of employment, position, responsibility, the practice of a profession

or business relations, or as a result of the grant of a license for its

use, without the consent of the person keeping the trade secret, having

been advised of its confidentiality, for the purpose of procuring an

economic benefit for oneself or for the third party, or for the purpose

of doing harm to the person keeping the secret;

V. appropriating a trade secret without the right to do so and without

the consent of the person who keeps it or its authorized user, in order

to use it or reveal it to a third party for the purpose of procuring an

economic benefit for oneself or for the third party, or for the purpose

of doing harm to the person keeping the trade secret or to the authorized

user thereof; and

VI. using information constituting a trade secret that is known by virtue

of employment, responsibility or position, the practice of a profession

or business relations, without the consent of the person keeping it or

the authorized user thereof, or that has been revealed to one by a third

party, in the knowledge that said third party was so acting without the

consent of the person keeping the trade secret or the authorized user

thereof, for the purpose of procuring an economic benefit or doing harm

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to the person keeping the trade secret or the authorized user thereof.

The offenses provided for in this Article shall be prosecuted at the

instigation of the aggrieved party.

ARTICLE 223 bis.

Imprisonment ranging from two to six years in length and a fine of 100

to l0,000 days of the general minimum salary payable in Mexico City shall

be imposed on persons selling to any end consumer on highways or in public

places, on a commercial scale and with ill intent, items displaying

falsifications of marks protected by this Law. If the sale is made in

commercial establishments, either in an organized or permanent fashion,

it shall be done in accordance with the provisions of Articles 223 and

224 of this Law. This crime is subject to prosecution ex officio.

ARTICLE 224.

Imprisonment ranging from 2 to 6 years in length and a fine of 100 to

10,000 days of the general minimum salary payable in Mexico City shall

be imposed on persons who commit the offenses specified in Article 223,

subparagraphs I, IV, V or VI of this Law. In the case of the offenses

provided for in subparagraphs II or III of Article 223, imprisonment ranging

from 3 to 10 years in length and a fine of 2,000 to 20,000 days of the

general minimum salary in force in Mexico City shall be imposed.

ARTICLE 225.

For the institution of the criminal action in the circumstances provided

for in Article 223, subparagraphs I and II, the Institute shall be requested

to issue a technical ruling which shall not prejudge such civil or criminal

action as may be appropriate.

ARTICLE 226.

Regardless of the institution of criminal proceedings, the aggrieved party

in any of the offenses referred to in this Law may demand from the perpetrator

orperpetratorsthereofcompensationandthepaymentofdamages,asprovided

for in Article 221 bis of this Law, for the harm sustained as a result

of said offenses.

ARTICLE 227.

The Federal courts shall have jurisdiction over the offenses referred

to in this Chapter, and also over commercial and civil disputes and the

precautionary measures arising out of the implementation of this Law.

When such disputes affect only private interests, they may be heard by

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the ordinary courts if the plaintiff so chooses, without prejudice to

the right of the parties to submit the proceeding to arbitration.

ARTICLE 228.

In the judicial proceedings referred to in the previous Article, the

judicial authority may adopt the measures provided for in this Law and

in international treaties to which Mexico is party.

ARTICLE 229.

For the exercise of the civil and criminal actions arising from the

infringement of industrial property rights, and also for the adoption

of the measures provided for in Article 199 bis of this Law, it shall

be necessary for the owner of the rights to have affixed to the goods,

containers or packaging of goods covered by an industrial property right

the indications and notices referred to in Articles 26 and 131 of this

Law, or by any other means to have stated or brought to the notice of

the public that the goods or services are protected by industrial property

rights.

This requirement need not be met in cases of administrative infringements

that do not involve violation of industrial property rights.

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Transitional Provisions (Omitted)


Legislación Reemplaza (3 texto(s)) Reemplaza (3 texto(s)) Es reemplazado por (2 texto(s)) Es reemplazado por (2 texto(s))
Tratados Relacionado con (1 registro) Relacionado con (1 registro)
Datos no disponibles.

N° WIPO Lex MX113