Jurisdiction of IP authorities
Recently, the Mexican Trade Mark Office found that a Mexican company had infringed the image of a Mexican actor. However, the use was found in an advertisement for a hairstyling product in a store in Puerto Rico. The authority sustained that since the parties were both Mexican and the related product was made in and exported from Mexico, it has enough authority to sanction an infringement for the non-authorised use of the image for commercial purposes outside Mexico.
Our Supreme Court has established in several cases that the administrative infringements share most of their principles with criminal law, since both constitute the power of the government to punish prohibited conducts. Those principles, with both procedural and substantial implications, are mainly the presumption of innocence, the rule of law and the rules for jurisdiction. As such, the Federal Criminal Law sets forth that the Mexican law will be applied to all the crimes, including those committed abroad, provided that the criminal action produces effects in the Mexican territory; or if the offender is located within the territory, subject to the offender not having been tried for that crime in any other court, and only if the conduct was legislated as an offence in the country where it took place.
When it comes to the unauthorised use of a person’s image for commercial purposes, unlike the strange inclusion in the Mexican Copyright Law, most of the countries in the world, including Puerto Rico, only hold the user of the image liable for an economic compensation. Therefore the MTO lacked jurisdiction to prosecute and rule concerning specific conduct that happened outside Mexico and with no other point of contact with its jurisdiction. The case has been appealed before the head of the IP protection department of the MTO itself, whose decision is expected soon.