1 February 2012CopyrightMauricio Jalife and Christian Thomae

When fame (or notoriety) is the spur in Mexico

They provide protection for patents, industrial designs, industrial drawings, utility models, trademarks (including word marks, device marks, three-dimensional marks and combined marks), trade names and slogan registrations (Industrial Property Law [IPL]); copyright (Federal Copyright Law); and plant varieties (Federal Plant Varieties Law).

However, there are some anomalies in Mexico that do not match international protection and enforcements trends. These anomalies have arisen because the country has approached the matters from a diff erent standpoint, and include notorious trademarks, three-dimensional trademarks and IP enforcement issues, such as customs border measures.

Declaration of notoriety or fame

In 2005, amendments to the IPL concerning notorious trademarks were introduced. By these amendments, Mexico now defi nes two different forms of well-known trademarks: notorious and famous. The difference between these is that notorious trademarks are known only in the relevant trade; famous trademarks have wider recognition among consumers.

In this specific regard, protection that is granted in Mexico differs in the sense that notorious trademarks are given protection in the specific classes of goods or services for which they are renowned, while famous trademarks are given the widest scope of protection possible, ie, in all classes of goods and services.

There are, however, specific and complex requirements that must be met and a specific procedure that must be followed (in the form of filing an application containing all the required evidence and information), including payment of official fees, in order to obtain a notorious or famous declaration. Also, declarations must be filed at the Mexican Institute of Industrial Property (IMPI).

The amendment to the IPL was intended to provide greater legal certainty for the owners of trademarks that have reached the condition of notorious or famous which, in the past, was attainable only through a judicial court’s determination.

Under these circumstances, an ad hoc proceeding to regulate the recognition and declaration of notoriety or fame was designed with the aim of, among others, reducing the subjectivity with which authorities judged the existence or non-existence of such a quality. Despite criticism that the amended law received during its first months of implementation, many trademark holders have used the system to obtain declarations of notoriety or fame for their trademarks.

It should be understood that a trademark is notorious in Mexico when a certain sector of the public, or the commercial circles of the country, recognise the mark as a consequence of the commercial activities that were developed in Mexico or abroad by a person or company that uses a certain trademark to distinguish its goods or services, or as a consequence of the promotion or advertising of the trademark.

On the other hand, to determine whether a trademark is famous, it will be understood that a trademark is famous when the majority of consumers are familiar with it.

"EVERY fIVE YEARS, ELEMENTS TO PROVE THAT THE TRADEMARk CONTINUES TO bE NOTORIOUS OR fAMOUS MUST bE PROVIDED."

In order for a trademark owner to obtain a declaration of notoriety or fame of its trademark, the trademark must be registered in Mexico and cover the goods or services from which its notoriety or fame derived. To obtain a declaration, a trademark holder must provide a number of elements to prove the promotion, advertising, positioning, value, geographical presence and international protection of the trademark.

An element of the system that has been questioned the most is the need to file a trademark valuation that discloses the monetary value of the trademark. IMPI has accepted that it is not necessary to provide all the elements of evidence described in the IPL, but rather only those that an applicant deems necessary to prove the fame or notoriety of the trademark.

Regarding the valuation requirement, IMPI has accepted that an applicant can state a value without filing a valuation report, which is nothing more than a document that summarises the strength elements that deliver value to the trademark. The average time-frame for obtaining the declaration of notoriety or fame is between four and six months, and every five years elements to prove that the trademark continues to be notorious or famous must be provided.

One of the positive effects of a declaration is that, immediately aft er its recognition, it prevents the registration by third parties of any identical or similar trademarks in all classes of goods or services that are related to those for which a declaration of notoriety has been granted. In the case of famous trademarks, the blocking extends to all classes of goods and services.

Until now, 23 trademarks have been declared as famous or notorious by IMPI. Among them are Mexican trademarks with a long history and presence, as well as international trademarks such as Intel, Bimbo and Microsoft, which have been deemed to be famous.

"Wrappers, packaging, containers, shape or presentation of products are also elements that can be registered as three-dimensional trademarks."

Another positive effect of the system is that authorities at all levels, both judicial and administrative, grant a greater degree of protection to trademarks that achieve this recognition, considering that the damage caused to a trademark and to consumers is greater when trademarks that have acquired this quality are involved. This is underlined by criminal actions. Counterfeit products that imitate notorious or famous trademarks are often seized in raids.

It is clear that notoriety and fame declarations in Mexico are granting significant advantages to trademark holders. They must be considered integral to any real and effective trademark protection strategy in Mexico.

Three-dimensional trademarks

According to Article 89(2) of the IPL, three-dimensional shapes may be registered as trademarks. The express recognition of three-dimensional shapes as elements that can be registered as trademarks was one of the novel aspects of the IPL, as the previous Patent and Trademark Law contained no provisions in this regard. This is a recognition of the fact that product packaging and product shape are also means of distinguishing one product from another.

In order for three-dimensional shapes to be registered, they must be stationary (animated or shifting three-dimensional shapes cannot be registered), and they cannot be the common shape of products, or the shape imposed by the nature or use of the products. Also, three-dimensional shapes that are in the public domain or are commonly used in trade, as well as those that lack originality, are prohibited from registration.

Finally, Article 53 of the regulations to the IPL specifically states that, within the three-dimensional shapes provided for in the IPL, wrappers, packaging, containers, shape or presentation of products are also elements that can be registered as three-dimensional trademarks.

This provision opens an important range of possibilities that clarify any doubts as to the possibility of obtaining registration for the shape of the product itself when it is distinctive. It is even possible to extend this protection to any words and designs that are included within the three-dimensional shape, as a whole, via a combined trademark registration including all three distinctive elements (three-dimensional shape, word mark and device mark).

It is important to point out that, after many years of contradictory criteria at IMPI around three-dimensional trademarks, a series of decisions that were issued by the Federal Fiscal and Administrative Court of Justice’s specialised IP court has fixed a criterion that supports the registration of three-dimensional trademarks after they were initially rejected by IMPI.

Some relevant cases in this area include a reversal of IMPI’s decision to reject several perfume bottles because they had “common cubic shapes”. The court ruled that IMPI did not take into account the colour combinations of the shapes and the visual effects that these produced in the bottles.

Recording of trademarks at Mexican customs

As of January 2, 2012, Mexico began implementing a long-awaited system for recording trademarks at Mexican customs, in order to achieve a greater degree of protection against the importation of counterfeit products. The system, which is similar to the one that is employed in the US, requires a petition to be filed at the Mexican customs.

The petition must include details of the trademark to be watched, the specific goods covered by the trademark registration and a list of authorised importers. Trademark owners will achieve more certain and effective collaborations with Mexican customs if they use this system. They will find that customs will better implement border measures to prevent counterfeits from entering the Mexican market.

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk