Preliminary injunctions in unfair competition action

July 12, 2010

BY DANIEL SANCHEZ

MANAGING INTELLECTUAL PROPERTY, INTERNATIONAL BRIEFINGS, DECEMBER 2006/JANUARY 2007

Article 229 of Mexico’s Industrial Property Law says:
To take civil or criminal actions as a consequence of the infringements of an industrial property right, as well as to adopt the measures set forth in article 199 bis of this law, it shall be necessary that the holder of the right has applied to the products, packaging or wrapping of the products protected by an industrial property right the indications or writings referred to in articles 26 and 131 of this law, or by some other means has manifested or that it be a fact of public knowledge that the products or services are protected by an industrial property right.

This requisite may not be required in cases of administrative infringements, which do not imply a violation of an industrial property right.

Lately, the Mexican Institute of Industrial Property (IMPI) has interpreted this Article in the sense of not granting preliminary injunctions in unfair competition actions. Its reasoning is rather absurd and simple: according to IMPI, Article 229 obliges the plaintiff to prove marking (for example, MR in cases of trade mark registration infringement) in order to obtain the implementation of preliminary injunctions, therefore in cases when no registrations or granted IP rights are enforced, the plaintiff is not allowed to obtain preliminary injunctions as there is no possible way to prove the marking.

For instance, when an infringement action is filed based in the unauthorized use of trade dress, the plaintiff will not be able to prove any marking over the trade dress, as its rights are derived from the adoption and use of it. Thus, in this scenario, the plaintiff will not have the right to obtain preliminary injunctions.

In our view the last paragraph of Article 229 should be interpreted in the sense that the marking obligation should not be applied in unfair competition cases and the plaintiff should be entitled to obtain preliminary injunctions, as in this case there is always a direct or indirect violation of an intellectual property right that cannot be enforced through any of the typical infringement violation specifically provided by the law (such as patent infringement or trade mark infringement).