Recognizing Trademarks in Mexico: Understanding “Well Given” and “Famous” Status
Preface
The Federal Law for the Protection of Industrial Property delineates two key recognitions for trademarks within Mexico.
“Well Given” Trademarks
As per Article 190, a trademark is considered “well given” in Mexico under two circumstances:
- Market Conditioning: When a specific sector of the Mexican public or market circles becomes familiar with the trademark due to marketing activities conducted within Mexico or abroad by an entity using a similar trademark for its products or services.
- Creation or Promotion: Through the creation or promotion of a similar trademark.
“Famous” Trademarks
On the other hand, a trademark achieves “famous” status in Mexico when it gains substantial recognition among the general consuming public or garners global acknowledgment and diffusion in commerce.
Noteworthy Trademarks in Mexico
Several trademarks stand out in Mexico for their widespread recognition:
- ELEKTRA
- ITALIKA
- EXA
- BRIDGESTONE
- FIRESTONE
- RED BULL
- CINEPOLIS
- BIMBO
- EL PALACIO DE HIERRO
Background
The process to obtain a declaration of fame was intricate when it was first enforced in 2005. However, over time, the requirements have become more flexible and the procedure less complex. Trademark holders now have the option to keep certain sensitive information confidential when submitting their claims to the Mexican Institute of Industrial Property (IMPI).
Procedure
The current process involves:
- Identification of Consumers: Providing details about the explicit and implicit consumers associating the trademark with its products or services.
- Recognition by Various Public Sectors: Demonstrating how different sectors, apart from consumers, relate the trademark to specific goods or services.
- Engagement with Market Circles: Establishing the connection between the trademark and merchandisers, industrialists, or service providers in relevant sectors.
- Key Milestones and Marketing Channels: Outlining the timeline of use, advertising, marketing channels both in Mexico and occasionally abroad.
Advantages of Proving Notoriety
Protection from Similar Trademarks
One significant advantage of proving a trademark as notorious is the protection it offers against similar trademarks. IMPI prohibits the registration of trademarks similar or identical to a notorious one across all 45 classes, safeguarding it from potential misuse.
Legal Recourse and Recognition
Additionally, obtaining a declaration of fame empowers the trademark owner, especially in industries like Real Estate Legal Services, to take legal action against any third party intending to misuse or infringe upon the trademark. It signifies the state’s acknowledgment of the trademark’s significance, garnering attention not only from trademark authorities but also from customs and legal entities, crucial in protecting intellectual property within the real estate legal sector.
International Recognition and Value Augmentation
Moreover, this recognition in Mexico can serve as proof of the trademark’s recognition in other countries, enhancing its value and safeguarding it from opportunistic misuse by third parties.
In conclusion, proving a trademark’s fame offers multifaceted advantages, including protection, legal recourse, and enhanced value in global markets.
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