BY VÍCTOR RAMÍREZ, MANAGING INTELLECTUAL PROPERTY, INTERNATIONAL BRIEFINGS, FEBRUARY 2010.
Although grey goods, also known as parallel imports, are regulated under the Mexican Industrial Property Law (IPL), the IPL treats grey goods bearing trade marks very differently from those involving patents.
In the case of trade marks, the law is very similar to that of the US, defining grey goods as products bearing a Mexican registered trade mark diverted from foreign markets, where their distribution is authorised, to the domestic market, where their distribution is not authorised.
As in the US, in the case of trade marks, grey goods are beyond the reach of any local trade mark actions, provided that they fulfil certain requirements set forth in the Regulations for the IPL.
However, in the case of patents there is no express exemption for products bearing a Mexican patent or design patent registration that have been diverted from foreign markets. Moreover, unlike trade marked grey goods, there is no provision establishing the requirements that must be fulfilled in order for the products to be considered grey goods.
There is only one article in the IPL (article 22) that provides that a patent shall produce no effect against any person that markets, acquires or uses the patented product after such product has been legitimately introduced in commerce.
The fact that Mexico adheres to a Romanist legal system were the cases are decided according to what is strictly and literally provided by the enacted law is very important. While the law mentions how to treat this issue in the case of trade marks, there is no similar guidance with respect to patents.
Therefore, the Mexican Trademark Office and the Mexican courts would likely rule that as if there is no exemption in the case of products falling into the scope of a Mexican patent or design patent that have been diverted from foreign markets.