In recent years, famous and well-known trademarks have gained worldwide relevance. They don’t just prevent the registration of a third party’s identical or confusingly similar trademark, they also represent the right to stop parties registering a mark similar to a “well-known or famous” trademark without the brand owner’s authorisation.
Article 192 of Mexico’s Federal Law on the Protection of Industrial Property sets out the documents and proofs that need to be complied with in order to obtain the declaration of a well-known or famous trademark. Such evidence, according to our legal system, is required to be assessed and recognised by the authorities of the Mexican Institute of Industrial Property (IMPI).
An example of this evidence could be market research indicating the actual or potential consumers who recognise the notorious or famous mark, the date of first use in Mexico and abroad, etc.
Once the interested party provides this information, the IMPI, after reviewing and analysing the evidence, proceeds to issue in an official communication the declaration of a “well-known or famous trademark”. In Mexico, this classification is in force for five years and can be renewed for the same period of time.
The declaration of a well-known or famous trademark is issued by the IMPI only if the interested party complies with the evidence and formalities established by the law. The Federal Courts have already determined that a trademark achieves fame or notoriety not because the declaration is issued by the IMPI, but because its fame or notoriety is pre-existing.
However, the recent practice of the IMPI is to cite as a bar for an identical or confusingly similar trademark to the one declared as well-known or famous, the official communication that declares the fame or notoriety, even though the declaration is not force as its five years of validity have lapsed. Consequently, it rejects or denies the trademark application. under the existence of a trademark declared famous or well-known.
Issues can arise if the applicant then appeals the IMPI’s rejection or denial before the courts, arguing that the declaration of “well-known or famous” was not in force. The courts could revert the IMPI’s ruling based on this fact.
This practice hinders the rights of trademark owners, as in most cases where rights holders take action against these third parties, they are in the process of applying for the renewal of the declaration of a well-known or famous trademark or are planning to doing so.
Solutions
This problem could be solved in one of two ways:
(i) The IMPI follows the Federal Court’s rulings and considers that the fame or notoriety of a trademark is a pre-existing fact whether or not the declaration of fame or notoriety is in force and, based on this, decides to deny a confusingly similar trademark. We could consider that the current rejections are illegal and that the IMPI is not taking into consideration what is established in article 191 of the law, which is that the impediments related for the protection of well-known or famous trademarks will be applied regardless of whether they are registered or declared.
(ii) The owner of the well-known or famous trademark is prompted to renew the declaration of fame of its trademark so the IMPI can consider this when deciding to accept or deny an identical or confusingly similar trademark to the famous or well-known one.
“A trademark achieves fame or notoriety not because the declaration is issued by the IMPI, but because its fame or notoriety is pre-existing.”
Selene Villafaña Robles, BCB
On the other hand, the law also lays out guidance for well-known or famous trademarks, that can be estimated through a specific procedure. Lately, the IMPI has rejected or denied identical or confusingly similar trademarks citing as an impediment the estimation of notoriety or fame of a trademark.
The IMPI is estimating the notoriety or fame of a trademark, while citing it as a basis on which to reject an identical or confusingly similar trademark. That is to say, the IMPI is estimating the notoriety or fame of a trademark based on evidence such as publicly available information on websites, etc.
This can be considered in most cases an illegal practice, as the websites or publicity assessed by the IMPI are not enough to demonstrate the fame of a trademark, and this can be the basis for the applicant of the copied trademark to appeal the estimation made by the IMPI.
In order that the estimation of fame or notoriety are rightfully issued by the IMPI, and such estimation is legal, it is necessary that:
(i) The IMPI determines such estimation, considering not just this proof, but suitable evidence that could demonstrate that the trademark is well-known or famous. Doing the contrary could leave the owners of the trademark application unprotected.
(ii) The holder of the well-known or famous trademark opposes the applications and offers in opposition relevant evidence that demonstrates that the trademark is well-known or famous, so that the IMPI can analyse said evidence.
In conclusion, the above matters could be resolved if:
i. The IMPI follows the Federal Court’s rulings and denies or rejects an identical or confusingly similar mark taking into consideration the pre-existence of a well-known or famous trademark and at the moment of estimating the notoriety or fame of a trademark, considers the sufficient and suitable evidence established by the law and proceeds to deny.
ii. The trademark holder takes advantage of IMPI’s current practice and renews the declaration of fame or notoriety of its trademarks in a timely fashion, and offers during the opposition procedure the proper evidence, so the IMPI can legally estimate the fame or notoriety.
Following this procedure, well-known or famous trademarks will be duly protected and enforced in Mexico.
Selene Villafaña Robles is Attorney at Law at BCB. She can be contacted at: svillafana@bcb.com.mx
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