Basham, Ringe y Correa, S.C.
  May 17, 2005 - Mexico

The Protection Scope of Well-known Trademarks Under Mexican Law

In the majority of countries, the rights obtained over a trademark are created by its use and/or its registration. Mexican law follows a mixed or exception system. In effect, the right to the exclusive use of a trademark is obtained by means of its registration, which protects certain products or services (the principle of specificity of products or services); however, its use also produces legal effects before and after the registration.

Article 87 of (Ley de la Propiedad Industrial) the Intellectual Property Law (“IPL”) establishes the general law. Such provision provides that the right to the exclusive use of a trademark is established by means of its registration. Notwithstanding the existence of such a provision, the IPL and existing jurisprudence have established in general terms two exceptions which include: a) well-known trademarks and b) in terms of the action or the exception to the prior use of the trademark in Mexico or in foreign countries (Articles 92 and 151, Section II, IPL). This article refers only to the first exception in relation to well-known trademarks.

In Mexico as well as in the United States, well-known trademarks (also known as famous trademarks in US) enjoy special protection, distinct from the protection given to conventional trademarks, which in Mexico are governed by territoriality and specialty principles. The protection which is offered by US and Mexican legislation for such distinctive signs varies; however, the end result of providing greater protection to those trademarks that have achieved greater popularity through time is found in both legal systems and is reflected in the North American Free Trade Agreement (“NAFTA”).

Section XV of article 90 of the IPL established the prohibition regarding the registration of nominative, figurative or three dimensional trademarks, which are similar or the same as a trademark that the Instituto Mexicano de la Propiedad Industrial (the Mexican Intellectual Property Institute or “IMPI”) considers to be well-known and recognized in Mexico in order to be applied to any product or service. For effects of the IPL, a well-known trademark recognized in Mexico is understood as “… when a determined sector of the public or of the commercial circles of the country recognize the trademark as a consequence of the commercial activities carried out in Mexico or abroad by a person who employs such a trademark in relation to its products or services, as well as the recognition that the trademark has in the territory as a consequence of the promotion or publicity of the same” (Article 90, Section XV, IPL). Furthermore, the NAFTA applies these same concepts and uses article 6 bis of the Paris Convention (the Convention) as a basis. Chapter XVII, article 1708, item 6 of the NAFTA extends the protection of service trademarks and determines if a trademark is well-known and recognized by taking into account the recognition of the trademark in the public sector which is affected by the commercial activity to which the trademark is applied, as well as the recognition resulting from the promotion of the trademark in the territory in question. However, it is not defined whether the existence of the registration of a trademark is required to enforce well-known trademarks.

In terms of said principles, a well-known trademark may not require the corresponding registration as a basis of an action against third parties because it is enough that the IMPI regard it as well-known and recognized in order to prevent third parties from registering trademarks which are similar to or the same as the well-known trademark.

The IPL and US legislation do not contain ad hoc proceedings to determine the degree of recognition of a trademark such as a Registry of Well-known trademarks. In Mexico, this determination is provided only in two situations: a) when a trademark is cited in a trademark application procedure and the IMPI recognizes the degree of recognition of the same, or b) within the nullity or infringement proceedings when evidence is provided which precisely proves the degree of recognition of the trademark subject of the procedure (Article 151, Section I, Article 213, Section VII, IPL). In both cases, the fact that the trademarks involved are the same or very similar is necessary.

US trademark dilution functions similarly in some aspects from the nullity or infringement proceeding followed in Mexico. The Mexican Law does not require evidence of the similarity of the two trademarks; however, the plaintiff must establish that the mark used by defendant lessens the distinctive quality of the plaintiff’s mark. In addition, the Mexican Law provides the requirement of proving the notoriety of the mark in an administrative proceeding before the IMPI, unlike the US judicial proceeding.

In this respect, it should be noted that currently in Mexico a project is underway to redraft the IPL. The intention of creating a Registry of Well-known Trademarks by means of a special procedure before the IMPI is being considered within the modifications. Without a doubt, this procedure shall benefit the holders of well-known trademarks, because by means of this declaration the IMPI shall avoid the registration of a trademark that is the same or similar to the trademarks declared as well-known. Said declaration shall also serve in the nullity or infringement proceedings which may be brought and which shall prove the degree of recognition of the trademarks. Furthermore, the holder of the well-known trademarks may limit the filing of “trademarks of protection” (these types of trademarks have the end of providing a greater protection. This concept is used in Mexico to protect a trademark in several products or services even when the mark is not used in those products or services for which it was protected) as the well-known trademark has protective reach, recognized by law, above and beyond the products or services for which it was registered.

Mexican Federal Courts have sustained the criteria that the well-known trademark does not necessarily require a registration for its protection, as is the case for GUCCI[i]. In such case, the Trademark Office denied a third party the registration of a design which consisted of the monogram used on GUCCI products, although the design and the term GUCCI were not registered at the moment at which the respective registration was denied. This criteria is supported in the Convention[ii] which has been adopted as Mexican law. The Convention recognizes protection to well-known trademarks, not only in national but also in international circles. In effect, article 6 bis of the Convention cited establishes certain principles of well-known trademarks which were taken into consideration in the GUCCI case and which purport to avoid the use and registration of trademarks which may be confused with well-known trademarks by consumers, even when they are not registered in Mexico.

Depending on the case, the holder of a well-known trademark has several legal recourses to prevent the non-authorized use of its trademark by third parties. Said recourses are based primarily on a nullity proceeding when a registration already exists; or in an administrative infringement action when a third party has no registration, and additionally in the infringement action a civil action is available for the payment of the damages caused by the use of the unauthorized trademark without the respective authorization of its holder, as also happens in US legislation, as long as the bad faith of the infringer is proved. In this last case, according to Mexican legislation, proof of the bad faith of the infringer is not necessary in order to request the indemnification the affected party may be entitled to by law.

The holder of the rights of a well-known trademark may initiate a nullity proceeding when a third party has obtained the registration of a trademark which is the same or is similar to the well-known trademark, independently of the products or the services for which it was registered. This ground for nullity (Article 151, Section I, in relation to Article 90, Section XV IPL) may be exercised at any time. The holder of the well-known trademark has the burden of proof to provide evidence that in fact its trademark is well-known.

The means suitable to prove the degree of recognition of a trademark include product sales or services invoices, as applicable; the invoices which prove the contracting of various means of publicity such as television, radio, magazines, etc. as well as studies from agencies dedicated to market studies; the magazine advertisements and television commercials constitute evidence that may also prove the degree of recognition of a trademark; the trademark registrations issued in foreign countries serve as an additional measure to prove the degree of recognition; however, the registration certificates do not prove the prior use of the trademark.

It should be noted that the evidence to prove the degree of recognition of a trademark should be dated before the date on which the registry subject to challenge, as if found to the contrary, the opposing party may allege that the trademark was not well-known at the moment on which the registration was obtained.

On the other hand, in cases where trademark registration does not exist, the titleholder of a well-known trademark may commence an action against a third party which uses the well-known trademark without the permission of the titleholder before the IMPI. Notwithstanding the fact that the IPL contains a specific ground for the infringement of well-known trademarks (Article 213, Section VII, IPL), the Law also contains an unfair competition clause which may be used if there is proof of the existence of deception aimed at the public to believe that the origin and/or the quality of the products or services that apply to the trademark are related to the holder of the well-known and recognized trademark.

Furthermore, the IPL contains a preliminary injunction consisting in the seizure of merchandise which is presumably infringing which temporarily suspends the commercialization of the product or services which contain the well-known trademark. For the exercise of this measure, a bond must be posted to guarantee the possible damages which may be caused to the alleged infringer due to the provisional measure. In this same sense, it should be noted that the presumed infringer enjoys the benefit of a counter guarantee to free the merchandise which has been seized; however, in the event that the IMPI declares the existence of an infringement on the well-known trademark, the counter guarantee posted may be executed in favor of the holder of the trademark once the resolution in question has been resolved.

The project for the amendments of the IPL has referred to the establishment of a system of fines which shall directly benefit the holder of the infringed right. In effect, according to the current IPL, the resolutions of the IMPI that impose fines as a consequence of the violation of an intellectual property right are executable by the Secretaría de Hacienda y Crédito Público (Ministry of Revenue and Public Credit, or “SHCP”). The proposed reforms look to benefit the holder of the infringed right, assigning in its favor the fine imposed by the IMPI and not in favor of the SHCP.

Finally, the holder of a well-known trademark may not only report the administrative infringement of the trademark before the IMPI, but may also commence a civil action for the damages caused by the non-authorized use of the well-known trademark before a civil court. The indemnification sought may not be less than 40% of the sale price to the public for each product or the service which implies the violation of any of the intellectual property rights established by the IPL (Article 221 bis, IPL).

The holders of the well-known trademarks currently enjoy broad protection under Mexican legislation and jurisprudence. Furthermore, the project of the amendments to the IPL are still underway, and they incorporate new concepts which permit the holders of intellectual property rights to file a claim regarding the violation of their rights with greater efficiency in the nullity or infringement procedures which they may invoke because of the violation of their rights, as well as to obtain a quick indemnification that will compensate the violation suffered by the non-authorized use of their rights.


Comments: [email protected] or the lawyers of the area.

[i]. Séptima Época, Semanario Judicial de la Federación; Tribunales Colegiados de Circuito; 193-198 Sexta Parte; p. 109. There are other resolutions which mention this criteria, as is the case for CARTIER, CHANEL, SPRITE, etc.

[ii]. Mexico signed on to the Paris Convention of March 20th, 1883 on September 7th, 1903 and signed on to the last Stockholm revision published in the Diario Oficial de la Federación on July 27th, 1976.