Declaration of Protection of Well-Known and Famous Trademarks. 

July, 2005 -

In the Official Gazette of the Federation dated June 16, a Decree was published through which several provisions of the Industrial Property Law are amended and added. The object of these modifications is the issuance of a declaration of protection of well-known and famous trademarks in our country.

1.- Well-known trademarks status in Mexico

The protection of well-known trademark is contemplated in international treaties to which Mexico is part, such as the Paris Convention for the Protection of Industrial Property and the Trade-Related Aspects of Intellectual Property Rights (TRIPs), as well as in the Free Trade Agreements. In our country, it is common practice since over 50 years; in the Industrial Property Law this type of trademarks is regulated and it is contemplated that the marks that constitute a reproduction or imitation of trademarks that the Mexican Institute of Industrial Property (IMPI) considers well-known are not registrable.

A trademark can acquire a notorious character if the authority determines its so, once the evidences through which the notoriety of said mark is demonstrated are analyzed and it is thus shown through reiterated use and in some cases through publicity that the mark is well-known among the consumers. The consequence of this circumstance is to grant a wider protection to the products or services for which was originally registered.

The notoriety is a situation of fact and in order that the authority can consider it, it must have the evidences showing it, as it has been done in the administrative procedures of nullity or violation, in which the IMPI can determine or not that the mark is well-known.

This mechanism is still valid and it is in the case of a conflict when the notoriety of the mark can be claimed and the authority can determine it so, being necessary to mention it in the corresponding administrative declaration.

2.- Reform to the Industrial Property Law (LPI)

The object of the reform is to protect the denominated well-known and famous trademarks, and thus it defines both types of trademark and contemplates that the

acknowledgement of a mark with this characteristics shall be done through a declaration of protection that can be issued by the IMPI, upon request from the party and if the evidences that demonstrate said notoriety or fame are presented, according to the administrative authority. As a consequence, the reform contemplates: 1). that signs that are the same or similar to a well-known or famous mark that has been declared so are not registrable; 2). indicates the means of proof that have to be shown to issue the corresponding declaration; 3). the scopes of the declaration that will have a five-year validity period, renewable if and only if the conditions originating said declaration can be updated.

a) IMPI’s capacities to issue declarations of trademark notoriety or fame.

With regard to this reform, capacities were granted to the IMPI to issue said declarations, as well as to publish them in the Gazette of the Industrial Propertyi. Before the reform, the IMPI estimated that a trademark was notorious through the administrative resolution through which nullity or violation procedure was decided, and this is still valid, independently of the issuance of the mentioned declaration. The fact that the law establishes the capacity to issue declarations, but on the other hand the fact that the IMPI can continue determining the notoriety of a trademark, implies the existence of two systems and that the latter can limit the concept of trademark notoriety.

b) Non-Registrable Marks

The reform modifies the previous text of fraction XV of article 90 of the LPI, as follows:

Article 90.- Are not registrable as trademarks:

“XV.- The denominations, figures, three-dimensional shapes, that are the same or similar to a trademark that the Institute estimates or has declared well-known in Mexico to be used on any product or service.”

c) This impediment shall proceed in all the cases in which the use of the trademark the registration of which is requested:

i) Could create confusion or a risk of association with the holder of the well-known trademark; or

ii) Could constitute an exploitation not authorized by the holder of the well-known trademark; or

iii) Could discredit the well-known trademark; or

iv) Could dilute the distinctive character of the well-known trademark.

This impediment shall not be applicable when the registration applicant is the holder of the well-known trademark.

In the same way, fraction XV bis related to famous trademarks is included, said figure was not contemplated before the reform.

3.- Declaration of Protection of well-Known and Famous Trademarks in our Country.

The object of the reform in question is to protect the well-known or famous trademarks through the issuance of a declaration that can be requested before the IMPI and for which the notoriety or fame shall have to be demonstrated, being possible to use all the means of proof allowed by the law.

In order to be estimated or declared by the Institute (Article 98 bis), it will be understood that:

a) A trademark is well-known in Mexico when a determined sector of the public or commercial circles of the country knows the trademark as a consequence of commercial activities conducted in Mexico or abroad by a person using said mark with regard to his products or services or, through the promotion or publicity of the same.

b) A trademark is famous in Mexico when it is known by the majority of the consumers.

4.- Requirements to Obtain the Declaration of Notoriety or Fame

According to the reform, the applicant shall bring, among others, the following evidences:

a) Based on surveys or market studies or on any other means allowed by the law, the applicant shall demonstrate the following aspects:

i) The sector of the consumers integrated by real or potential consumers that identify the mark with the products or services covered by it.

ii) Other sectors of the public different from the real or potential consumers that identify the mark with the products or services covered by it.

iii) The commercial circles integrated by the traders, industrialists or service suppliers related to the class of products or services that identify the mark with the products or services covered by it.

b) The date of first use of the mark in Mexico or, if applicable, abroad.

c) The period of continuous use of the mark in Mexico or, if applicable, abroad.

d) The commercialization channels of the mark in Mexico or, if applicable, abroad.

e) The diffusion media of the mark in Mexico or, if applicable, abroad.

f) The effective publicity period of the mark in Mexico and, if applicable, abroad.

g) The investment made in the last three years in publicity or promotion of the mark in Mexico or, if applicable, abroad.

h) The effective geographical area of influence of the mark.

i) The sales volume of the products or the income received through the rendering of the services covered by the mark during the last three years.

j) The economic value represented by the mark in the net assets of the company, holder of it or according to an appraisal of the same.

k) The trademark registration in Mexico and, if applicable, abroad.

l) The franchises or registrations granted with regard to the mark.

m) The percentage participation of the mark in the corresponding sector or segment of the market.

5.- Effects of the Declaration

a) It is an administrative act through which the IMPI declares that the conditions determining that a mark is well-known or famous are in force at the time when the act is issued. Said declaration, although the reform does not mention it expressly, has declarative effects, not constitutive ones.

b) The impediments for the registrability contemplated in fractions XV and XV bis shall apply without prejudice that the well-known or famous mark is registered or declared.

c) To obtain the declaration, it is mandatory that the mark should be registered in Mexico and should cover the products or services on which the mark originated its notoriety or fame.

d) The IMPI shall consider, unless otherwise demonstrated, that the conditions originating the declaration or their updating, subsist for a period of five years from the date of its issuance, period during which the impediment mentioned in fractions XV and XV bis of article 90 shall apply.

e) The declaration can be updated at any time upon request of whoever has a legal interest in this matter, if he demonstrates that the conditions originating it subsist on the date of the corresponding application.

f) The nullity of the declaration shall proceed, among other suppositions (article 98 bis-1) when: a). It has been granted against the legal provisions; b). The evidences on which the declaration was supported were false; c). If it has been granted based on an incorrect appraisal of the evidences; d). It has been granted to someone that does not have the right to obtain it, e). The administrative declaration of nullity shall be made by the Institute, upon request of whoever has a legal interest in this matter and who demonstrates the suppositions on which his application is based.

g) If the trademark registration(s) that formed the basis to issue the declaration are declared null, the declaration shall loose its probatory value (Article 98 bis-3).

h) Finally, regarding its transfer, the declaration shall be considered linked to the trademark registrations that originated it.

6.- Comments on the Reform.

a) The acknowledgement of the well-known trademark as was conducted till the reform, is through a procedure of nullity or administrative violation before the IMPI, and invoking article 6 bis of the Paris Convention and the provisions of LPI are still applicable.

b) With this reform, the intention is to give a better protection to the well-known trademarks through the declaration; in order to obtain it the requirements mentioned in No. 4 of the present document have to be fulfilled; as one of the conditions to request said declaration, the registration and use of the mark in Mexico are requested, which is against the principle of well-known trademark. If there is already a trademark registration and the trademark is being used, the convenience of applying for the declaration could be evaluated.

c) The distinction between a well-known trademark and a famous trademark can be a cause of confusion and for the authority it will be difficult to determine in which cases a character or the other can be given to a trademark.

d) The declaration will have a period of validity of five years, and thus it will be necessary to renew it for the same periods, if and only if the circumstances supporting the declaration subsist and the fees pending to be established by the IMPI are covered.

e) This situation makes the declaration comparable to a trademark registration and although it is not specified in the reform, it will be necessary to show again evidences demonstrating that the trademark is still well-known or famous.

f) As of today, no fee has been published with regard to the rights, but it is considered that the fees will be high, additional expenses will have to be incurred for example to collect evidences and obtain the appraisal of the trademark the declaration of notoriety of which is desired.

g) In the reform, no publication of the application of well-known trademark declaration in the Official Gazette is contemplated, in order that a third party can declare what is convenient for his rights, and thus the IMPI, with prior analysis of the evidences brought by the interested party shall decide with regard to the granting or not of the declaration of notoriety or fame.

h) Obtaining this declaration could have the positive effect of having the acknowledgement of the authority, however, it has a mere declarative effect and it must be considered that in case of litigation, the defendant could object the declaration arguing that it is not correctly supported.

i) As far as we know, as of today, the IMPI does not have specific area for the study of said matters.

We know that this reform can be reviewed again by the Congress of the Union and eventually modified, because its implementation is not clear, and it is not sure if it can really be made eligible against third parties in the conditions in which it was issued.

Our comments on the topics as follows:

1.- The object of the reform is, conceptually speaking, to protect the well-known and famous trademarks, through a declaration, that has to be requested before the Mexican Institute of Industrial Property (IMPI) and to demonstrate that the requirements mentioned in the declaration are met, among others, that the trademark is registered in Mexico, that it is used in Mexico as well as to show a trademark appraisal.

2.- Traditionally, the protection of well-known trademarks has been through the administrative procedure of nullity or violation and this situation has been invoked, requesting the acknowledgement of this fact by the IMPI, but with this reform, the intention is that, upon obtaining it, said declaration can be used both in these administrative procedures as well as in the case in which a third party tries to assert a right on it and the authority can impede its registration because of the existence of said declaration.

3.- The notoriety of a trademark is a matter of fact, and thus we believe that this declaration moves away from the principles that have ruled the protection of this distinctive sign and although it can be obtained, it can be objected by a third party in a nullity or violation procedure, arguing that the evidences offered were not genuine. Moreover, it must be taken into account that as the reform stands, said declaration is valid for five years, being possible to update it when the notoriety conditions continue and can be demonstrated, and thus it will be necessary to renew said declaration periodically.

4.- On the other hand, although the fee charged by IMPI for the proceeding of said declaration has not been published yet, it is believed that the cost will be high.

5.- Currently, it could be advisable to evaluate if the requirements are met to eventually claim notoriety, although we know that the reform can be reviewed again by the Congress of the Union, among other reasons because it requires the fulfillment of all the means of proof established in article 98 bis-2, as a condition to issue the declaration, which makes it difficult to obtain.

If you would like to receive more information about this reform to the Industrial Property Law or if you wish that we explore the possibility of requesting the mentioned declaration, do not hesitate to contact the lawyers of the area and we will be very pleased to attend your request.


i Article 6, fractions III and X of the LPI


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