1 June 2012Jurisdiction reportsVictor Adames

Mexican declarations of well-known and famous marks

According to the MIPL, it is understood that a trademark is well-known in Mexico when a determined sector of the public, or the commercial circles of the country, know the mark as a consequence of commercial activities by the entity that uses the mark on its products or services, or as a consequence of their promotion or publicity, in Mexico or overseas.

On the other hand, the MIPL defines a famous mark as one being known by most consumers. Unlike well-known marks, that are required to be known by a determined commercial sector, famous marks are those known by the public in general, which includes any commercial sector.

“THE REQUIRED INFORMATION AND/ OR DOCUMENTATION TO REQUEST THE DECLARATION OF A WELL-KNOWN OR FAMOUS MARK IS SOMETIMES CONFIDENTIAL AND, IN OTHER CASES, IT IS INCONGRUENT WITH THE VARIOUS INTERNATIONAL TREATIES.”

In other words, the scope of a trademark considered as a famous mark is larger than the scope of a trademark considered as a well-known mark, since the first refers only to a determined sector while the second one must be known by the majority of consumers. The MIPL has established a procedure for obtaining a declaration of well-known or famous trademark from the Mexican Institute of Industrial Property.

The trademark holder has to file a brief requesting the declaration of well-known or famous mark that includes specific information/evidence that proves that the mark is known by a specific sector or by the consuming public (consumers).

The following information must be enclosed:

  1. The sector of the public (real or potential consumers) that identifies the trademark with the products or services that it protects, based on a survey or market study;
  2. Other sectors of the public, different from the real or potential consumers, that identify the trademark with the products or services that it protects, based on a survey or market study;
  3. The commercial circles (retailers, industrialists or service providers related with the kind of products or services) that identify the trademark with the products or services that it protects, based on a survey or study market;
  4. The duration of effective advertising of the mark in Mexico, and abroad;
  5. The investment made during the last three years in publicity or promotion of the mark in Mexico, and abroad;
  6. The geographic area of effective influence of the mark;
  7. The volume of sales of the products or the income generated by the provision of services protected under the mark, during the last three years;
  8. An estimation of the economic value that the mark represents, in the countable capital of the holder company;
  9. The certificates of registration of the mark in Mexico, and overseas, if any; and
  10. The percentage of participation of the mark in the corresponding sector or segment of the market.

The required information and/or documentation to request the declaration of a well-known or famous mark is sometimes confidential and, in other cases, it is incongruent with the various international Treaties, as well as with the basic principles of well-known trademarks, since it is required that the well-known or famous mark is used and registered in Mexico.

Moreover, the fact that it is difficult and expensive to obtain evidence to prove each and every condition stipulated by the law, and the high official fees applicable for obtaining the declaration, have been the main reasons the system has not had the success expected. In fact, since the registration proceedings came into force, only a few companies have applied for written declarations from the MIIP.

In addition, it is widely known that one of the basic principles of well-known marks established in international Treaties is that they can achieve the status of well-known or famous even if they are not used and/or registered in a specific country. Therefore, in my opinion, it should not be necessary to submit each of the above-mentioned requisites in order to obtain recognition by the Mexican authorities.

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