Myths and facts of the protection of famous and well-known marks in Mexico

March 2, 2018

Myth 1: Mexico's Law of Industrial Property grants the same protection to well-known marks as to famous marks.

 

Fact: False. While some jurisdictions consider famous and well-known as synonyms, most jurisdictions, as in Mexico, distinguish between famous and well-known. In Mexico, the difference between a well-known and famous mark is that protection for well-known marks is limited, while a famous mark demands absolute protection. According to the Law of Industrial Property, well-known marks are restricted to a particular sector of the country's public and trade field. Famous marks are those known by most consumers. The main difference is that the well-known mark can block the approval of a registration application for a trademark identical or confusingly similar to the well-known one, regardless of class as long as the requested mark could cause confusion among consumers about the origin of the product or service so identified, or that is an illegitimate use of the prestige of the well-known mark, or that could jeopardize the reputation of the well-known mark. A famous mark, however, blocks the applications of identical or confusingly similar marks, regardless of class and regardless either the existence of the possibility of risk of association between the mark requested and the famous one or its owner or an illicit use of the prestige of the famous mark or a risk of discredit for the famous trademark. The registration application for a well-known mark may be denied if any of the circumstances provided in section XV of Article 90 of the Industrial Property Law arise, to wit: (1) creation of confusion or risk of association; (2) unauthorized use; (3) loss of reputation or (4) dilution." In the case of famous marks, such circumstances are not provided for by law, since due to the great knowledge that people have of them, they are taken for granted.

 

 

Myth 2: The only way to obtain protection in Mexico for marks already declared famous and well-known in other jurisdictions is through the litigation procedure of administrative violation or nullity under the Industrial Property Law.

 

Fact: False. On June 16, 2005, the Official Journal of the Federation published a decree through which several articles were added to regulate the shape of the Declaration of Well-Known Marks and Famous Marks. The reforms came into effect on June 17, 2005, and the tariff went into effect on the September 14, 2007.

 

 

 

Myth 3: Through amendments to the Industrial Property Law of June 2005, an ad hoc procedure was established to allow for a quick, clear and simple recognition of notorious and famous marks in Mexico

 

Fact: False. Despite reforms to the Industrial Property Law of June 2005, most recognitions of well-known and famous marks were pursued over the next three years mainly within the framework of litigation proceedings for infringement or invalidity, and not as a result of the ad-hoc procedure established in the reforms, since the requirements for obtaining them were considered rather demanding. Article 98 Bis-2 of the Industrial Property Law provides a long list by way of example and not limitation, containing information and evidence required to demonstrate that a mark is well known or famous. These requirements are mandatory for the applicant in order for the Mexican Institute of Industrial Property to examine the merits of the application. These are such that:

I. The public sector consisting of real or potential consumers who identify the mark with the products or services it covers, based on a survey or market research or any other method permitted by law.

II. Public sectors other than real or potential consumers who identify the mark with the products or services it covers, based on a survey or market research or any other method permitted by law.

III. Trade circles made up of sellers, industrialists, or service providers affiliated with the class of products or services that identify the mark with the products or services it covers, based on a survey or market research or any other method permitted by law.

IV. The date of first use of the mark in Mexico, and abroad if applicable.

V. The time of continuous use of the mark in Mexico, and abroad if applicable.

VI. Sales distribution channels in Mexico, and abroad if applicable.

VII. Means of dissemination of the mark in Mexico, and abroad if applicable.

VIII. The time of actual advertising of the mark in Mexico, and abroad if applicable.

IX. The investment made during the last 3 years in advertising or promotion of the mark in Mexico, and abroad if applicable.

X. The brand's actual geographic area of influence.

XI. The volume of product sales or income from the provision of services covered under the brand over the past 3 years.

XII. The economic value of the brand in the equity of its proprietary company or pursuant to a valuation made of it.

XIII. Registrations of the mark in Mexico, and abroad if applicable.

XIV. Franchises and licenses granted with respect to the mark.

XV. The percentage of the mark's share in the corresponding segment or sector of the market.

 

 

Myth 4: The Mexican Institute of Industrial Property has recognized a limited number of well-known or famous marks in Mexic, through the 2005 reforms that created an ad-hoc procedure for protection.

 

Fact: True. Although we must clarify that the Mexican Institute of Industrial Property did not publish the Tariff for the items related to the procedure under the declaration of well-known and famous marks until the September 13, 2007, which detained the submission of applications, being that all applications that had been submitted between June 17, 2005, which was when the reforms took effect, and September 13, 2007, the date of publication of the fee for the procedure under the declaration, were hold in suspension. The Mexican Institute of Industrial Property has issued a limited number of recognitions of well-known or famous marks through the procedure installed in the Law of Industrial Property in 2005.

 

 

Certified Famous Trademarks in Mexico:

 

Mark: “CINÉPOLIS

Date of resolution: November 26, 2009

Application number: 1256/2008

Proprietor: Cinemas de la República, S.A. de C.V.

Status: Famous

 

 

 

 

Mark: "RED BULL"

Date of resolution: February 19, 2010

Application number: 2284/2008

Proprietor: Red Bull GmbH

Status: Famous

 

 

 

 

Mark: "GANSITO"

Date of resolution: March 12, 2010

Application number: 101/2009

Proprietor: Grupo Bimbo, S.A.B. de C.V.

Status: Famous

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

Mark: “MARINELA

Date of resolution: March 12, 2010

Application number: 103/2009

Proprietor: Grupo Bimbo, S.A.B. de C.V.

Status: Famous

 

 

 

 

Mark: "BIMBO"

Date of resolution: April 23, 2010

Application number: 100/2009

Proprietor: Grupo Bimbo, S.A.B. de C.V.

Status: Famous

 

 

 

 

Mark: "INTEL"

Date of resolution: August 23, 2010

Application number: 1577/2008

Proprietor: Intel Corporation

Status: Famous

 

 

 

Mark: “HARMON HALL y diseño

Date of resolution: September 3, 2010

Application number: 1766/2009

Proprietor: Harmon Hall Holdings, S. de R.L. de C.V.

Status: Famous

 

 

 

 

 

 

 

 

 

 

Mark: “JOSE CUERVO

Date of resolution: September 10, 2010

Application number: 2107/2009

Proprietor: Tequila Cuervo, S.A. de C.V.

Status: Famous

 

 

Mark: “BMW y diseño

Date of resolution: September 14, 2010

Application number: 1782/2009

Proprietor: Bayerische Motoren Werke Aktiengesellschaft.

Status: Famous

 

 

 

Mark: "MICROSOFT"

Date of resolution: November 10, 2010

Application number: 500/2009

Proprietor: Microsoft Corporation

Status: Famous

 

 

 

Mark: “FLEXI y diseño

Date of resolution: December 7, 2010

Application number: 1794/2009

Proprietor: Grupo Flexi de León, S.A. de C.V.

Status: Famous

 

Mark: "PEPSI"

Date of resolution: March 29, 2011

Application number: 2075/2009

Proprietor: PEPSICO INC.

Status: Famous

 

 

Name: “BARDAHL

Date of resolution: APRIL 2011

Application number: 734/2010

Proprietor: BARDAHL DE MÉXICO, S.A. de C.V.

Status: Famous

 

Name: “PEMEX y diseño

Date of resolution: May 27, 2011

Application number: 2059/2010

Proprietor: Petróleos Mexicanos (PEMEX)

Status: Famous

 

Marks declared well-known in Mexico:

 

Mark: “ANDREA y diseño

Date of resolution: November 4, 2008

Application number: 2197/2007.

Proprietor: Fábricas de Calzado Andrea, S.A de C.V.

Status: Well-known

 

Mark: “BARCEL

Date of decision: March 22, 2010.

Application number: 102/2009

Proprietor: Grupo Bimbo, S.A.B. de C.V.

Status: Well-known

 

Mark: “RICOLINO

Date of decision: April 5, 2010

Application number: 104/2009

Proprietor: Grupo Bimbo, S.A.B. de C.V.

Status: Well-known

 

Mark: “PRITT

Date of decision: June 30, 2010

Application number: 638/2009

Proprietor: Henkel AG & Co. EGAA

Status: Well-known

 

Mark: “RESISTOL

Date of decision: September 28, 2010

Application number: 400/2009

Proprietor: Henkel Capital, S.A. de C.V.

Status: Well-known

 

Mark: “LAS MOMIAS DE GUANAJUATO

Date of decision: December 7, 2010

Application number: 785/2009

Proprietor: Municipio de Guanajuato

Status: Well-known

 

Mark: “HOTELES CITY EXPRESS

Date of decision: December 21, 2010

Application number: 1848/2009

Proprietor: HOTELES CITY EXPRESS, S.A.P.I. de C.V.

Status: Well-known

 

Mark: “ADO

Date of decision: May 31, 2011

Application number: 1429/2010

Proprietor: Autobuses de Oriente ADO, S.A. de C.V.

Status: Well-known

 

Mark: “ELEKTRA

Date of decision: July 29, 2011

Application number: 1355/2010

Proprietor: Elektra Trading & Consulting Group, S.A. de C.V.

Status: Well-known

 

 

 

Myth 5: The declaration of well-known or famous marks in Mexico is an administrative act establishing rights.

 

Fact: False. The declaration of well-known is an administrative act that establishes no rights. Its purpose is to confirm a fact, which is the status of notoriety or fame that a mark already enjoys in Mexico for all legal purposes under the Industrial Property Law. The recognition of notoriety or fame of the trademark is useful to prevent and combat acts of unfair competition. The notoriety or fame of a mark is not a trait that grants exclusive rights whenever the right to exclusive use of any mark does not depend on its being well-known or famous. The source of the right to exclusive use of the trademark has always been and remains its registration with the Mexican Institute of Industrial Property. The use of a well-known mark without authorization is in itself grounds for an administrative offense. However, the unauthorized use of a famous mark is not cause for an administrative offense. Hence, the proprietor of the famous mark may invoke the provisions that sanction acts of unfair competition in general, but the effort and investment of resources involved in getting a mark declared famous seem too significant and costly for the rules sanctioning imitation to be limited to unfair competition.

In the case of a violation for illicit use of marked declared to be well-known, the reform is not clear  with regard to whether the declaration obtained will be sufficient to prove that the mark is well known or whether such circumstances must be demonstrated again in litigation, to which end ad hoc evidence would have to be presented to so demonstrate in both proceedings.

The clearest consequence of the procedure for declaration of a mark's notoriety is that this statement will constitute a barrier to any third party seeking to obtain registration of identical or confusingly similar marks for certain classes of goods or services indicated in the declaration. The declaration regarding famous marks would block trademark applications for any class of goods or services.

 

 

 

 

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Myths and facts of the protection of famous and well-known marks in Mexico

March 2, 2018

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