In Mexico, industrial property rights holders which suffer damages for the violation of their rights, need to file before the Mexican Institute of Industrial Property (IMPI for its name in Spanish), an administrative infringement action against infringers in order to obtain from said Institute a favorable and firm decision that declares the infringement, and exhibit it in a trial followed before a Civil Court with the proofs that demonstrates the link between the infringing act and the damage suffered, and the damage itself, so that, this competent Court could quantify the damages based on a mathematical formula stablished on the Industrial Property Law (LPI for its name in Spanish) to repair them.
Now a day, this claim for indemnity process take so many years so that the holders of the affected rights are demotivated and chooses not to claim their corresponding compensation for the damages caused by a violation of an industrial property right.
In light of the above, there have been several initiatives of reform to modify the compensatory system for recovery damages caused by a violation to an industrial property right, one of them, is the Initiative of reform published in the Gazette of the Upper House of Mexico, on April 2019 which proposes the change of several provisions of the LPI, one of them, section V of Article 6.
Section V of Article 6 of the LPI consists of the list of faculties of IMPI. The reform proposes to provide IMPI with the power to impose appropriate administrative penalties in order to make infringers compensate or assume liability for damages caused by the violation of the rights conferred by the LPI to its holders in the decision that they issued in an infringement action proceeding.
As a result of the statement of reasons and recitals of the initiative of reform, such inclusion apparently seems to provide a better reparatory system and appears to be intended to benefit IP rights holders, as it seeks that in the same decision the IMPI declares the infringement of an industrial property right and determine the damages that must be paid for said infringement.
Even though the Mexican laws already provides for a compensatory system for damage to industrial property rights holders, and its jurisdiction falls to a judicial court such as the Judges of the Civil Courts, it must be questioned whether this system guarantees an adequate compensation.
It should be noted that the Agreement on Trade-Related Aspects of Intellectual...