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APRIL 2013IP Law Series 67Mexicont and Complianceprincipal of national treatment, whichstates that the rights afforded to a foreignnational should be identical to thoseafforded to a home national.In many ways, trademark law is quitedifferent from copyright protection.However, under Mexican law, the ownerof a copyright or a trademark couldinitiate an infringement action against anentity that is violating his/her intellectualproperty rights. If the owner of the rightobtains a final and favorable resolution,the authority will request the infringer tostop the illegal conduct and will impose afine. Moreover, a copyright/trademarkowner may seek monetary awardsconsisting of actual damages and profitsthrough a civil action.To prevail under an infringement action,the trademark holder must prove i) that itpossesses a mark; iI) that the opposingparty used the mark; iii) that the opposingparty’s use of the mark occurred “incommerce”; iv) that the opposing partyused the mark in connection with thesale, offering the sale, distribution, oradvertising of goods or services; and v)that the opposing party used the mark ina manner likely to confuse consumers.Copyright infringement is establishedwhen the owner of a valid copyrightdemonstrates unauthorized copying.A prima facie case of copyrightinfringement is typically stated asconsisting of two elements: i) ownership ofa valid copyright; and ii) an unauthorizedexercise of the affected rights (dependingon the right allegedly violated).If someone has been accused ofviolating a copyright/trademark,how do they defend themselvesagainst the accusations?If someone is using a trademark notregistered, he/she could be infringing theintellectual property rightsregistered/owned by a third party. In suchcase, what one register for protectiondetermines the scope of the registeredmark? Likelihood of confusion is akey concept in trademark law as afundamental test of infringement. Thus theuse of a competitor’s mark that doesnot cause confusion as to source ispermissible. When a trademark ownersues based upon a registered mark thedefendant must prove the absence oflikelihood of confusion i) as to affiliation,connection, or association of the owner ofthe right and a third party; and confusionii) as to the origin, sponsorship, orapproval of his/her goods, services, orcommercial activity by another person.On the other hand, copyright protectionhas many different limits to the rightsgranted to copyright owners, includingthe doctrine of fair use, which is anaffirmative defense. It represents alimitation that applies to all of the rights ofa copyright owner. Fair use takes onmany different appearances dependingon the right at issue and the activities ofthe alleged infringer. The factors thatshould be considering determiningwhether the use made of a work is a fairuse are i) the nature of the copyrightedwork; ii) the purpose and character of theuse, including whether such use is of acommercial nature or is for non-profiteducational purposes; iii) the amountand substantiality of the portion used inrelation to the copyright work as a whole;and iv) the effect of the use upon thepotential market for or value of thecopyright work. LMContact:Margarita Garate TuranzasOf CounselVon Wobeser y Sierra, S.C.Email: mgarate@vwys.com.mxTel: 52(55)52581049www.lawyer-monthly.com