Infringement Actions

• Published date: 25 November 2020
• Subject Matter: Intellectual Property, Trade Secrets
• Law Firm: OLIVARES
• Author: OLIVARES

The new Federal Law for the Protection of Industrial Property includes several changes regarding administrative infringements, with the following being the most relevant:

• In the infringement actions related to the commercialization of products or services, the "knowingly" requirement has been deleted. Traditionally there has been a distinction between the infringements that could be brought against the manufacturers of products that violate an industrial property right and the merchants that sell them, with an additional requirement, consisting of having to demonstrate that the merchant's infringing activity was being carried out knowingly. However, the new Law has eliminated this requirement thus giving the same treatment to manufacturers and merchants which may cause some concern for retailers.
• The new Law introduces a wider definition of what is understood as "use" of any of the figures protected by the Law. The chapter of administrative infringements establishes that the term "use" includes, among others: "manufacturing, producing, imitating storing, distributing, importing, exporting, offering for sale, selling, transporting or putting into circulation".
• In the infringement action related to industrial designs, the conduct of "reproducing or imitating" has been replaced by the term "use", which includes the manufacturing, producing, imitating, storing, distributing, importing, exporting, offering for sale, selling, transporting or putting into circulation, as mentioned above.
• Two new infringement actions related to industrial and commercial secrets have been introduced. The first one is for the misappropriation of information that is considered to be an industrial secret, and the second one is for the production, offering for sale, selling, importing, exporting or storing products or services, which use a trade secret.

Currently, violations involving industrial secrets can only be pursued and sanctioned through criminal actions. However, the introduction of these new infringement causes opens the door for the legal holders of trade secrets to pursue the violations thereof, either through criminal...