Intellectual property and its protection are vital, especially in fast paced and ever-evolving industries. To find out how IP can be most effectively protected in emerging markets, Lawyer Monthly speaks to Saul Santoyo, Partner-in-Charge, Litigation and Enforcement and Jose Luis Ramos-Zurita, Senior Associate, Litigation and Enforcement at Uhthoff, Gomez Vega & Uhthoff, S.C. in Mexico City.
How big an issue is IP theft in the emerging markets? Which sectors are most affected by it?
Unfortunately, Mexico is one of the five countries in the world that top the list regarding IP violations and IP theft, thus this is obviously a really big subject here, to the point that according to recent studies, 8 out of 10 people in Mexico are actually consuming some kind of IP-infringing goods.
From our experience, such appalling figures affect a wide variety of industries, from consumer goods to luxury items, electrical and auto parts to pharmaceutical products and all kinds of copyrights violations in software and entertainment industries, which are the most affected ones by these illegal phenomena.
In what ways does IP theft differ from sector to sector? I.e. which areas are more inflicted by trademark infringement, business strategy theft etc?
The biggest prevalence of these phenomena involves copyright infringement (movies, music, software), closely followed by clothing and footwear industries, but recently there is a growing tendency involving pharmaceutical products that are of biggest concern due to the significant dangers that these illegal copycat products cause to Public Health.
What can be done to protect IP rights in such markets?
After a comprehensive assessment of the extent and specific circumstances of the problem has been undertaken, brand owners should be better prepared to determine the most convenient policy for the enforcement of their rights from a cost/ benefit point of view: either attacking the many aspects of the problem (e.g., import, distribution, storage, transport or final sale to the general public) one at a time or designing a comprehensive, tailored anti-counterfeiting programme that may last for several months or years, or even indefinitely.
In this sense, we believe that a comprehensive and well-designed anti-counterfeit programme should include three key elements:
a) Deploying a plan to disrupt the channels through which counterfeits are being distributed;
b) collecting and analysing the evidence needed to identify other sources, distribution schemes and places of final sale of illegal goods, with the aim of triggering future and more precise actions; and
c) Producing public statements aimed at strengthening general awareness about the persistent enforcement of IP rights, based on the two previous
Considering the above, there are several legal mechanisms in Mexico that are available to IP owners to protect their rights, ranging from administrative actions carried out before the Mexican Institute of Industrial Property (IMPI) to criminal complaints overseen by the General Prosecutor’s Office (PGR), either of which have the possibility of serving as the basis of a future civil claim exerted to recover damages and losses.
What are the challenges involved in registering IP rights in these regions?
There are not significant challenges, other than the differences in the local legislations that have broader or shorter latitude concerning what can be registered; for example, in the U.S. it is possible to register audio marks, while in Mexico the only marks allowed for registration are visible signs, either bi or tri-dimensional. Concerning copyrights, they are protected from the moment they are affixed to their material support (Mexico is part of the Bern Treaty), thus there is no need for registration and any Certificate or Title would only serve as a means to better credit the right itself (would facilitate the burden of proof imposed to the party that pretends to exert enforcement actions).
Our patent practice follows the international accepted guidelines for obtaining a patent, thus the challenges are mostly the same of other jurisdictions.
How do the protection strategies differ from those employed in more developed markets?
The enforcement of protection strategies differ in three main aspects: the prevalence (how widespread the infringement phenomenon is), the kind of people/organization behind the infringements and the origin of the infringing goods.
In Mexico we often deal with both the established businesses and the “hard” and somewhat rogue individuals that profit from infringing conducts, thus the plan to tackle them should be appropriately directed to each side of the spectrum of the same problem, especially considering there that IP infringing is widespread and that any IP owner should prioritize the resources available to produce the largest impact in this area; finally, in developed countries most of the infringing products come from foreign sources, but in Mexico we have both the imported (and mostly smuggled) IP-infringing goods and the ones that are being produced locally, which increases the complexity of the problem. LM
Jose Luis Ramos-Zurita