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At-a-glance: Instituto Mexicano de la Propiedad Industrial Periférico Sur #3106, Col Jardines del Pedregal CP 01900, Álvaro Obregón, México, DF Tel: +52 5334 0700 Email: buzon@impi.gob.mx Website: www.impi.gob.mx Many Mexican business owners are... [more]

Many Mexican business owners are unprepared for a sweeping new data protection law, according to IP lawyers – and their ignorance could cost millions. The new legislation (which was passed by the Senate in April 2010 and titled the Law on the Protection of Personal Data Held by Private Parties), regulates the ways in which personal data held by the private sector can be collected, processed and disclosed. Penalties of up to $1.5 million can be imposed for violations of the law. The bill also expanded the oversight of Mexico's Federal Institute of Access to Public Information and Data Protection (IFAI) to the private sector. "Imagine the problems it could cause in a country that's not used to keeping such information confidential," said one practitioner. "This is a huge step, and we did not start with baby steps but with a quantum leap."

The broad implications of the new law have presented fresh opportunities for IP firms, particularly those with copyright work. "It's going to be big," said one attorney. "The law relates to trade secrets, it relates to copyright and it relates to other rights that derive from your public image, which is regulated by the copyright statute. People are turning to IP lawyers to deal with these matters."

The explosion in internet access over the past two decades has also increased demand for copyright specialists. With anyone now able to publish a web page, the unauthorised use of text and images has soared, and privacy issues have come to the fore of public debate. To reflect the growing market, the IP Handbook has introduced copyright as a separate new category in this year's rankings. Since copyright is a niche area, small boutiques have stacked up surprisingly well against their much larger counterparts.

Another recent development is a revision of the anti-counterfeiting laws, which make it possible for the attorney general to prosecute those selling counterfeit goods in public places without a claim by the trade mark owner. Infringers now face a hefty fine and two to six years in prison under the Article 223 amendment, which was passed by the Senate in April 2010. While some lawyers welcomed the change, others were disappointed by the wording of the bill. "I was expecting all trade mark counterfeiting to be ex officio, but our House of Representatives only focused on people on the streets," said one practitioner. "The way the article was written is not convincing to either a judge or a prosecutor – it's very easy for the defence to argue that certain technical legal requirements were not complied with."

Counterfeiting continues to be a major issue in Mexico. In a recent survey of over 1,000 consumers by the World Intellectual Property Organization (WIPO), 76% of interviewees reported buying at least one illegitimate product. The country remains on the 2010 watch list of the Office of the United States Trade Representative (USTR), which lists countries considered by the US to have inadequate safeguards for intellectual property. Enforcement is difficult because counterfeiting operations are often run by gangs of organised criminals, whose other transgressions make piracy pale in comparison. Mexico's war on drugs has taken over 34,000 lives since December 2006, when newly-appointed president Felipe Calderón brought in the military to battle the country's leading cartels. Some attorneys reported that foreign clients were cautious about doing business in Mexico as a result of the instability.

The Mexican patent and trade mark office (IMPI) was considered by many lawyers to be of little help in combating infringement. Lawyers complained of long delays, increasingly tight registration criteria and a lack of effective action against infringers. "A few days ago I saw a fine and it was for less than $1,000," said one partner. "If you are infringing a patent and you're selling generics for $100,000 or $1 million, then it's nothing."

However, since January 2009 IP owners have been able to appeal IMPI's decisions to Mexico's first specialist IP court. The court is overseen by magistrates Maria de Los Angeles Garrido Bello, Maria Teresa Olmos Jasso and Luz Maria Anaya Dominguez. Overall, attorneys feel the new court is an improvement over the old system. However, several complained about the backlog of cases and the inconsistency of the rulings.

Slow and unpredictable litigation was identified by partners as a consistent feature of the legal system in Mexico. Since rulings are not determined by precedent, results can be difficult to forecast. Also, IP owners must pursue compensation in a separate action once a judgment is made in their favour. "Not many people have the budget to withstand eight-year litigation and then go to a civil court to collect damages," said one practitioner. "Also, that civil court is not necessarily knowledgeable about IP issues."

But 2010 did bring some positive changes. Many firms reported that the economy has begun to pick up in the aftermath of the US and European recessions. And following an amendment to the law, it is now possible to file oppositions to patent applications – a change which was met with cautious optimism by attorneys. "It's a good thing," said one partner. "The issue, as with many things in Mexico, is how well it will be implemented."