Hogan Lovells

Trademarks - Anti-counterfeiting: Customs watch applications - Mexico

show all | collapse all

-How do you register a customs watch application?

It is registered before the Customs Division of the Tax Administration System.  The request is made by a written petition in which the list of trademark(s) and other relevant information is provided.  


-Is a local agent required? If so, is a power of attorney required?

A local agent is required, and the capacity as attorney-in-fact of the owner, licensee or subsidiary of the IP rights holder must also be substantiated.  If Customs does not have details of the legal representative, they normally review the electronic database of the Mexican Institute of Industrial Property (MIIP) in order to confirm such information and send the corresponding report by e-mail.  


-If filing on behalf of a subsidiary of the IP rights holder what evidence of connection to the parent company is required?

It would be necessary to file a license agreement or a document evidencing the corporate relationship with the IP rights holder.  It is advisable to record such subsidiary as a licensee of the trademark before the MIIP. This ensures that the relationship is acknowledged by the authorities.


-Are there any fees or local procedural requirements?

Filing before Customs is free of charge.

For recording purposes, the following information and documents are necessary:  

  • Trademark and registration numbers before the MIIP;
  • Name and general information of the owner or authorized licensee for Mexico of the trademark registrations;
  • Name and contact information of the legal representatives or attorney-of-record of the owner of the trademark registrations;
  • Formal power of attorney issued in favor of the representatives or attorneys-of-record of the trademark owner. The power of attorney must show that the attorneys can lawfully bring actions and suits.  The power of attorney must be notarized and legalised by the Apostille.
  • Customs identification numbers of the imported products covered by the related trademarks.
  • Detailed description of the related products, including specifications, features and important data that might be relevant to distinguish the original product from counterfeits or lookalikes.  It is important to mention that it is not necessary to disclose confidential information relating to the products.
  • Name and all other relevant information associated with authorized distributors and/or importers of the products in Mexico. With this information, when a shipment arrives from a different company, customs will raise an alert and will contact the attorneys-of-record for the trademark registrations in order to confirm the authenticity of the products.
  • Photographs of the goods and, if applicable, the design of their packing or packing material

 



-How long does it take and what is the term of protection?

The customs watch application may be implemented at any time and will last as long as the trademark registration remains valid and in full force.


-What level of understanding of IP rights is available from Customs? Are additional procedures or training required?

Mexican Customs has a good understanding of IP rights issues, in particular regarding trademarks. However,  it is still not possible to register protected designs  in the customs database.

The provision of additional training is advisable when certain particularities related to the importation of goods, such as packaging, labeling or others, are detected and are relevant for identifying counterfeit products.



-When customs report on a finding how long does the rights holder have to respond and what steps are required to ensure non-release of counterfeit goods?

Customs retain the merchandise for a 3 to 5 day term in which the owner or licensee of the trademark has to file an a request for the enforcement of border precautionary measures, infringement actions before the MIIP or a criminal complaint before the Attorney General’s Office requesting the seizure of the counterfeited goods. Otherwise, the goods will be released.