Protection for famous and well-known marks

30-09-2014

Lesly F. Cuadra

The principle of specialty of marks establishes that a trademark registration protects only those goods or services for which specific protection was granted.

Thanks to this principle, it is possible that similar marks, owned by diverse owners and protecting different goods or services, can coexist as there is no possibility of confusion among consumers. However, this principle does not apply to famous or well-known marks.

It is evident that in a globalised world with so many social networks and media, trademarks increasingly have a greater impact. For this reason, it is important to protect famous or well-known marks properly to prevent and avoid third parties trying to register them to protect different products or services, leading to confusion among consumers about the commercial origin of the goods or services, as the consumer will often believe that they originate from the true creators of the famous or well-known marks.

The Mexican Industrial Property Law (MIPL) ensures that it is possible to obtain a declaration from the Mexican Institute of Industrial Property (IMPI) for well-known and famous marks.

Under the MIPL, it is understood that a mark is ‘well-known’ in Mexico when a particular section of the public knows the mark as a consequence of commercial activity in Mexico or overseas, or as a consequence of the promotion or advertising of the relevant products or services. These marks only have to be known by people specialising in the sector of commerce of the brand and not by the public in general or large-scale consumers. 

On the other hand, the MIPL defines a ‘famous’ mark as one known by most consumers. Unlike well-known marks, that have to be known in a specific commercial sector, famous marks have to be known by the public in general, which includes any commercial sector, ie, brands that are known by people generally, notwithstanding their age, sex, religion, social or economic status.

That means that within the Mexican legal framework, the scope of a trademark considered as a famous mark is larger than the scope of a trademark considered to be a well-known mark, as the latter refers only to a particular sector while the former must be known by a majority of consumers.

The main advantage of a trademark being declared ‘famous’ is that the trademark office will be obliged to block any identical or confusingly similar trademarks to any declared famous in any of the 45 existing classes. Therefore, it will provide protection for the trademark in all classes, blocking any third party that tries to use the fame of the marks declared.

"once this declaration is granted, it provides certainty that the distinctive sign is considered well-known or famous by the IMPI, having in consequence the special protection granted by the MIPL." 

It is not mandatory for the owner of a well-known or famous mark to apply for the declaration of well-known and famous mark, but it is important to consider that, once this declaration is granted, it provides certainty that the distinctive sign is considered well-known or famous by the IMPI, having in consequence the special protection granted by the MIPL for these type of marks.

Nonetheless, it is also important to emphasise that the provisions established in Articles 90 Section XV and XVbis and 98bis-1 of the MIPL do not replace the discretionary powers of the IMPI in regard to its evaluation of whether a mark is well-known or famous.

However, once the holder of these types of distinctive signs obtains such a declaration, it prevents the judgement of notoriety or fame of the mark from being subject to the discretion of the examiners of the IMPI who, frequently, due to ignorance, grant registrations of well-known or famous marks to third parties. Until these records are cancelled, they allow third parties to commercially exploit them to the disadvantage of the legitimate creators and owners.

In order to obtain a declaration of well-known or famous mark, the owner of the trademark can submit all the evidence showing the reputation of its mark but, before starting this procedure, the applicant must register the trademark in Mexico by protecting the goods or services that the well-known or famous character of the distinctive sign are based on.

Currently the IMPI has issued 13 declarations of well-known mark and 33 declarations of famous mark. Because of the advantages conferred by these declarations, it is just a matter of time before the number of declarations obtained increases.

Lesly F. Cuadra is trademark attorney at Becerril, Coca & Becerril, SC. She can be contacted at: lcuadra@bcb.com.mx

MIPL; IMPI; trademark; trademark registration

WIPR