Famous Marks in Mexico

The Federal Law for the Protection of Industrial Property contemplates two levels of recognition for trademarks.

According to article 190 of the Law in question, a trademark will be understood to be well known in Mexico when a determined sector of the public or of the commercial circles of the country knows the trademark because of commercial activities developed in Mexico or abroad by a person that uses such trademark in connection with its products or services or as a consequence of the promotion or advertising of such trademark.

Secondly: It will be understood that a trademark is famous in Mexico when it is known by most of the consuming public, or when it has a diffusion or recognition in global commerce”. In accordance with the above, it can be concluded that a famous trademark is one that acquires great recognition, to the extent that most of the consuming public can identify it, regardless of race, gender, age, socioeconomic level, or geographic area. When this procedure was implemented in 2005, it was originally very complex and required the presentation of a lot of information and documentation that, in many cases, was very difficult to obtain. Also, in other cases, trademark owners were reluctant to submit sensitive and confidential information, such as financial statements or sales reports, having in mind that the information submitted in the file to obtain the declaration is considered public. Recently, the procedure has become less complex and the requirements for proving fame or notoriety have become more flexible in recent months. There is even the possibility of requesting the IMPI to keep certain information confidential and, therefore, not to include it in the official file.

In this sense, according to the recent professional practice in this type of matters, in order to obtain the declaration, it is necessary to provide the following elements:

I.- The sector of the public of actual or potential consumers who identify the trademark with the products or services it covers, based on a survey or market study or any other means permitted by law.

II.- Other sectors of the public diverse from actual or potential consumers who identify the trademark with the products or services it covers, based on a survey or market study or any other means permitted by law.

III.- The commercial circles made up of merchants, industrialists or service providers  related to the genre of goods or services, who identify the trademark with the goods or services covered by it, based on a survey or market study or any other means permitted by law.

IV.- The date of first use, the time of continuous use and the time of effective advertising of the trademark in Mexico and, in certain cases abroad the country.

V.- The marketing channels in Mexico and, in certain cases abroad the country.

VI.- The broadcast means of the trademark in Mexico and, in certain cases abroad the country.

VII.- The licenses or franchises that have been granted in connection with the trademark; and

VIII.- The percentage of participation of the trademark in the corresponding sector or segment of the market.

Advantages

The main advantage of obtaining a declaration of fame of a trademark is that the IMPI will not grant registrations of trademarks that are applied by third parties, and that are similar or identical to the famous trademark in any of the 45 classes.

In other words, for any product or service regardless of whether it is or not related to the main business activity. With the declaration of fame, the trademark is prevented from becoming generic, since third parties would not be able to obtain the registration of trademarks that are identical or similar.

Another advantage of obtaining the declaration of fame is that the recognition of the famous trademark will allow its owner to initiate legal actions against any third party that pretends to use the trademark to identify any product or service. The declaration of fame is a clear recognition by the State of the importance of the trademark in Mexico, as well as of the rights of its owner, therefore, the trademarks considered as famous will have special attention not only from the trademark authorities, but also from customs authorities and even from the Attorney General’s Office. It is important to note that one of the advantages of the declaration of fame is that it constitutes evidence in administrative litigation proceedings.

An additional advantage is that, with the declaration of fame in Mexico, it is possible to demonstrate in other countries the recognition of the trademark by consumers, and its relevance within the business activities to which it belongs, which increases the value of the trademark. It also promotes the protection of Intellectual Property rights as a proactive solution to prevent third parties acting in bad faith or opportunism from trying to take advantage of the prestige of the trademark to protect other products or services.

Some of the trademarks that have obtained this Declaration are:

ELEKTRA, ITALIKA, EXA, BRIDGESTONE, FIRESTONE, RED BULL, CINEPOLIS, BIMBO, EL PALACIO DE HIERRO, among others.

In order to obtain this Declaration, it is advisable to seek the advice of an expert in the matter.

Victor M. Adames

Partner of BC&B, with more than 17 years of experience in the practice of Intellectual Property in the areas of distinctive signs, copyrights and domain names.