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How to prevent frivolous actions

 by Abraham Díaz

Having spent years litigating IP matters, I have shared the frustration of clients who have been forced to intervene in administrative litigation because they are being frivolously accused of having committed an administrative infringement; their trademarks have been misappropriated; or their IP rights are being attacked in an ungrounded manner, through counterclaims that are filed in response to infringement actions previously filed by the owner of the IP right.

The same situation occurs in copyright litigation, where you find opponents threatening absolutely ungrounded actions, and arguments contrary to the most basic principles of copyright and logic itself. It gets worse if you consider that any ruling coming from the Mexican Trademark Office or from the Mexican Copyright Office can be appealed through three or even more stages, which leads to scenarios of litigating one matter for seven or eight years. All this shows the urgent need for changes in Mexican Law in order to avoid the abuse of the judicial system, as well as to establish sanctions against attorneys who file notoriously ungrounded appeals, with the intention of merely extending litigious matters in an unjustified manner.

A good start would be mandatory admittance to a Bar for Mexican attorneys, which would improve the control over lawyers litigating IP matters. A second step would consist of establishing sanctions in the law for parties who file notoriously frivolous appeals, which should help to reduce the time litigating ungrounded matters. This sanction would consist mainly in the possibility for the affected party to get the attorney’s fees, as already happens in civil cases. A final step would be establishing sanctions against attorneys who file notoriously frivolous actions. These sanctions could vary from a mere warning or reprimand, fines, and in case of recidivism, the loss of the attorney’s licence. These simple measures would reduce the time for litigating IP matters, as well as reducing expenses for trade mark owners, which should lead to a more efficient protection and enforcement of IP rights in Mexico.

Source Managing Intellectual Property Magazine, June 2012