By Marcela Bolland
Uhthoff, Gomez Vega & Uhthoff, S.C.
As readers may know, in light of an amendment enacted to the Mexican Law of Industrial Property on June 2005 a specific proceeding to obtain declarations of notorious and famous or trademarks was established.
Moreover, on September 2007 the Mexican Institute of Industrial Property published the official tariff including the fees to be paid for these declarations, and therefore the amendment that was enacted on June 2005 actually became into effect.
In light of the aforementioned amendment, we may summarize that the notorious and famous marks constitute:
1) A bar for the registration of a third party’s application for an identical or confusingly similar mark.
2) A right to be enforced against those registrations granted despite the aforementioned prohibition, and
3) A right to be enforced against third parties using an identical or confusingly similar mark without the brand owner’s consent.
All of the above, regardless of the involved products or services.
The proceeding to obtain a declaration of notoriety or fame consists of certain steps and formalities tending to demonstrate that the mark has been known by a determined commercial circle or by the majority of the population, depending on whether the declaration is requested for a notorious or for a famous mark.
We may say this is the first moment in which our Law has made a distinction between notorious and famous marks.
Still, it would initially seem that such differentiation only refers to the extent in which the mark is known, unlike other jurisdictions in which the main difference between notorious and famous marks derives from the extent of their effects against third parties.
Under Mexican current Law such difference comes from whether the mark is known by a determined industrial or commercial sector, in which case we are before a notorious mark, or by the majority of the population, being then before a famous mark.
Thus, origin of consumers’ awareness may be regarded as the first difference between the notorious or famous mark.
In what concerns the effects of these marks we could say that same is initially identical for both the famous and notorious mark.
The above since the Mexican Law of Industrial grants the owners of notorious and famous marks the exact same rights to have a third party’s application rejected in case the authority considers that the proposed mark is identical or confusingly similar to the notorious or famous mark and to file for cancellation of those registrations that may have been granted into registration despite the aforementioned prohibition.
Likewise, both the notorious and the famous mark allow their owners to take legal actions to refrain unauthorized use of their brand.
In this regard, it is important to bear in mind that those Mexican provisions in force even before the amendment enacted on June 2005 granted a wider protection to those marks that due to the commercial or advertising activities related to them had redounded in their knowledge among a determined industrial or commercial sector.
Thus, the then referred to as well-known marks in general terms were protected regardless of the products or services they had become known for or those covered by conflicting applications and registrations, or to which the identical or confusingly similar mark was applied.
This broaden protection was adopted in Mexico on 1991, when the Law of Development and Protection of Industrial Property was enacted. The corresponding provisions established the protection of well-known marks, regardless of the goods or services that could be involved.
Under the described circumstances, we may say that protection in Mexico of those marks known by a determined industrial or commercial has been even wider that the protection provided even by Paris Convention for more than 25 years, since the provisions applicable as from 1991 have granted such protections regardless of the involved products or services.
Thus, it could seem that under current Mexican Law the effects or extent of protection do not constitute a difference between notorious and famous marks.
However, when reading article 90, sections XV and XV bis of the Mexican Law of Industrial Property a slight difference between the effects of the notorious and famous may be established.
While section XV bis, which refers to famous marks, i.e. those know by the general public, provides that three-dimensional names, figures or shapes should not be registered if they are identical or similar to a mark that the authority considers famous, regardless of the products or services for which protection is sought, section XV of article 90 has a different drafting.
Initially in section XV it is also provided that three-dimensional names, figures or shapes should not be registered if they are identical or similar to a mark that the authority considers well-known, regardless of the products or services for which protection is sought for.
However, it the second part of section XVI it is established that the prohibition for registration contained therein shall become into effect provided that the use of the proposed mark:
a) May cause confusion or likelihood or association with the owner of the notorious mark, or
b) May constitute a non-authorized benefit of the owner of the notorious mark, or
c) May tarnish the notorious mark, or
d) May dilute the distinctive character of the notorious mark.
In light of the above, we may say that, although slight, there is a difference not actually in the extent of protection of a notorious or famous mark, but on the facts that should be demonstrated either to consider notorious marks as a bar for registration or as a ground for cancellation.
We would not say that the effects of the notorious mark are more limited than those deriving from the famous mark, but only that in the first case, aside from having to demonstrate the knowledge of the mark by a determined industrial or commercial sector, existence of likelihood of confusion, unauthorized benefit, tarnish or dilution should also be proved.
Leaving aside the fact that both the notorious and famous marks constitute an impediment for registration of a later mark, ground for cancellation of those registrations granted regardless of the commented prohibition and a ground for infringement, the truth is that when dealing with notorious marks at least one additional circumstance should concur.
While the famous mark constitutes an absolute bar for an identical or confusingly similar mark, or may be enforced as a ground of cancellation for a registration granted to cover an identical or confusingly similar mark or be the ground for requesting the declaration of an administrative infringement, that is not the case for the notorious mark.
As section XV of article 90 of the Mexican Law of Industrial Property is drafted, particularly in light of its second part we consider that likelihood of confusion, unauthorized benefit, tarnish or dilution should concur.
Moreover, the aforementioned hypothesis do not only need to be demonstrated, but also due to their subjective nature would somehow depend of the criterion of the officer in charge.
Now, in what concerns existence of likelihood of confusion, unauthorized benefit or dilution we consider the aforementioned circumstances would somehow oblige the brand owner to demonstrate that applicant of the trademark that is identical or confusingly similar to the notorious mark, the owner of a registration for such mark or the third party using without authorization the notorious mark is to some extent involved in the commercial or industrial sector in which the mark is known.
As for the existence of likelihood of tarnish of the notorious mark we consider that the owner of the notorious mark would have to demonstrate that the registration of conflicting mark, due to the goods or services to which same is applied to, may cause a degradation or adverse image of the notorious mark.
Consequently, although we repeat the extent of the protection of the notorious mark is not expressly restricted or determined by the involved products or services, when dealing with notorious marks–in light of the additional subjective circumstances we have referred to–, enforcing the rights derived from these marks may involve an additional probative task.
On the other hand, the difference in what concerns the steps to obtain a declaration of notoriety or fame resides not on the evidence to be submitted but on the extent of knowledge demonstrated by such evidence.
In article 98 bis of the Mexican Law of Industrial Property the documents that should be exhibited along with the petition for a declaration or notoriety or fame are listed, all of them tending to demonstrate knowledge of the mark among consumers, general public and its owners commercial and advertising activities.
As it may be noted the nature of the evidence is the same for both declarations; still if we bear in mind the cause upon which a mark should be regarded as notorious or famous it shall be clear the essence or extent of each proof will differ. While the evidence regarding the petition for a declaration or notoriety should tend to demonstrate that the mark is known to a determined industrial or commercial sector, when asking for a declaration of fame the evidence should be suitable and sufficient to demonstrate that the general public is acquainted with the brand.
Obviously, in some cases it shall be an easy task to demonstrate that the general public knows the mark and thus request the declaration of fame, while in others the brand owner will only be able to demonstrate awareness among their potential consumers and competitors.
Taking into account all of the above, and particularly the subjective hypothesis we have referred to when dealing with notorious marks, gathering appropriate and sufficient probative material becomes of the essence, an issue that is even more important when dealing with Mexican procedural legislation.
Under the described circumstances, we could say that in order to obtain the most of the current recognition and protection provided in our Law for notorious and famous marks, it is imperative for the brand owners and their advisors to carefully analyze the mark, the owners’ history and activities in our country, but most important to consider the obtaintion of a declaration of notoriety or fame as part of a plan to better protect and enforce their IP rights.