Famous trademarks in Mexico: what they are and how to obtain them

Introduction
Background
Procedure
Advantages

Introduction

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

According to article 190, a trademark will be understood to be "well known" in Mexico when a certain sector of the Mexican public or Mexican commercial circles is aware of the trademark:

• due to commercial activities carried out 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 is diffused or recognised in global commerce.

A famous trademark thus 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.

Some famous trademarks in Mexico include:

• ELEKTRA;
• ITALIKA;
• EXA;
• BRIDGESTONE;
• FIRESTONE;
• RED BULL;
• CINEPOLIS;
• BIMBO; and
• EL PALACIO DE HIERRO.

Background

When the procedure to obtain a declaration of fame was implemented in 2005, it was very complex and required the presentation of a lot of information and documentation that, in many cases, was very difficult to obtain. Trademark owners were sometimes reluctant to submit sensitive and confidential information, such as financial statements or sales reports, considering that the information submitted is considered public.

Recently, the procedure has become less complex and the requirements for proving fame or notoriety have become more flexible. Trademark owners may even request that the Mexican Institute of Industrial Property (IMPI) keeps certain information confidential and, therefore, that such information is not included in the official file.

Procedure

According to recent professional practice, in order to obtain a declaration of fame, it is necessary to provide details of:

• the actual or potential consumers who identify the trademark with the products or services it covers, based on a survey, market study or any other means permitted by law;
• other sectors of the public (ie, not actual or potential consumers) who identify the trademark with the products or services it covers, based on a survey, market study or any other means permitted by law;
• the commercial circles – made up of merchants, industrialists or service providers relating to the genre of goods or services – who identify the trademark with the goods or services it covers, based on a survey, market study or any other means permitted by law;
• 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 marketing channels in Mexico and, in certain cases, abroad;
• how the trademark has been broadcast in Mexico and, in certain cases, abroad;
• the licences or franchises that have been granted in connection with the trademark; and
• the percentage of participation of the trademark in the corresponding sector or segment of the market.

In order to obtain a declaration of fame, it is advisable to seek the advice of an expert in the matter.

Advantages

The main advantage of obtaining a declaration that a trademark is famous is that the IMPI will not permit the registration of trademarks applied for by third parties that are similar or identical to the famous trademark in any of the 45 classes (ie, for any product or service, regardless of whether it is related to the main business activity). With a 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 a declaration of fame is that it will enable its owner to initiate legal actions against any third party that intends 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, 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 a 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 IP 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.

For further information on this topic please contact Víctor Adames at Becerril, Coca & Becerril SC by telephone (+52 55 5263 8730) or email ([email protected]). The Becerril, Coca & Becerril SC website can be accessed at www.bcb.com.mx.