By Saul Santoyo Orozco
Uhthoff, Gomez Vega & Uhthoff, S.C.
On June 16, 2005, amendments to the Mexican Industrial Property Law (IPL) incorporating an administrative procedure to declare “well-known” and “famous” trade marks were published in the Federal Official Gazette [D.O.F. June 16, 2005], and came into effect on June 17, 2005.
Importance of the amendments
In Mexico, trade mark protection is supported in two main principles:
- Principle of territoriality of marks, according to which trade mark protection is limited to the borders of the country where it was registered.
- Principle of specialty of marks, which refers to the nature of the products or services covered by the mark, since the exclusive right over the mark, granted by the registration, is limited to the services or products identical or similar to those covered by the registration.
The strict application of these principles could cause several problems, such as misappropriation of well-known or famous marks, thus, they are not absolute and operate under the exception of well-known trade marks which benefit from a privileged treatment.
For this reason, the issue of how well-known and famous trade marks theme is regulated in Mexico’s local law and regulations is of extreme importance, since it provides a privileged treatment, extended protection and supplemental benefits to trade mark owners by directly disputing the principle of specialty of trade marks.
Accordingly, this change will have a significant impact on intellectual property practice in Mexico, since it includes an administrative procedure to declare “well-known” and “famous” trade marks, granting the Mexican Institute of Industrial Property (IMPI) express faculties to issue such declarations.
Historical Background
In Mexico well-known or notorious trade marks have been regulated for some time through the IPL and International Treaties, such as the Paris Convention, the Agreement on Trade- Related Aspects of Intellectual Property Rights (TRIPS) and the North American Free Trade Agreement (NAFTA). Nevertheless, these regulations in practice have been insufficient to protect well-known and famous trade marks, since IMPI had been reluctant to reject trade mark applications on grounds of prior existence of well-known trade marks.
- International Treaties
The protection of well-known trademarks was not included in the original version of the Paris Convention of March 20, 1883. It was until the Convention was revised at the Hague on November 6, 1925, that Article 6 bis was incorporated to the Paris Convention containing provisions concerning well-known marks. Such legal provision was subsequently modified through the revisions at London on June 2, 1934, at Lisbon on October 31, 1958, and at Stockholm on July 14, 1967, text currently in force. According with current Article 6 bis of the Paris Convention, the contracting parties undertake to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well-known in that country as being already the mark of a person entitled to the benefits of the Convention and used for identical or similar goods.
The Paris Convention as revised at Stockholm, was published in the D.O.F. on July 27, 1976, and went into effect in Mexico afterwards, being for a long time the only source of international law contracted by Mexico that included special protection for well-known marks, however in the last years, Mexico executed International Treaties with several countries, that incorporated provisions concerning special protection for well-known trade marks, for instance, Article 16 of the TRIPS Agreement and Article 1708 of NAFTA, are legal provisions on well-known marks that incorporated by reference Article 6 bis of the Paris Convention into their bodies, however, enlarged its scope by adding supplementary concepts that have raised the level of protection for this category of marks.
- Evolution of National Law
The Inventions and Trademarks Law, which came into effect on February 11, 1976, made allusion to the well-known marks, without explicitly including provisions on the subject matter, then it experienced amendments that came into effect on January 17, 1987, and for the first time, it expressly incorporated a provision relating to well-known marks. The subsequent Law of Development and Protection of the Industrial Property, which came into effect on June 28, 1991, also contained legal provisions concerning special protection for well-known trade marks, nevertheless it was until October 1st, 1994, when the IPL came into effect, that legal provisions specifically granted a exceptional protection for well-known trade marks, which definitely exceeded the protection requirements comprised by Article 6bis of the Paris Convention.
Article 90 section XV of the IPL, established that denominations, figures or three-dimensional shapes identical or similar to a mark that IMPI considered to be well-known in Mexico, to be applied to any product or service, could not be registrable as marks. Moreover, such legal provision established that a mark was considered to be well-known in Mexico when a specific sector of the public or commercial circles of Mexico knew the mark as a consequence of the commercial activities developed in Mexico or abroad by the person using such trade mark in relation with its products or services, as well as when the mark was known in Mexico, as a consequence of the advertisement or promotion of same. Moreover, it mentioned that all forms of evidence allowed by the IPL could be used for the purpose of demonstrating the notoriety of the mark, and that this impediment should proceed in any case where the use of the mark by the person applying for the registration, could possibly create confusion or a risk of association with the owner of the well-known mark, or could constitute a use that could cause discredit to the mark.
In litigation, if an owner of well-known trade marks detected that IMPI granted a registration covering its trade mark to a third party, it was entitled to file a cancellation action against such registration, pursuant to Article 151 section I of the IPL, arguing that such registration was granted contravening the legal provision established in Article 90 section XV of the IPL.
Likewise, if the owner of a well-known trade mark noticed that a third party was using its mark, it had the right to file an infringement action against said third party, pursuant Article 213 section VII of the IPL. Nonetheless, IMPI was been very inconsistent to declare a trade mark as “well-known“ even in litigation cases where a large amount of evidence was offered to demonstrate the notoriety of the mark, thus these regulations in practice had proven inadequate to protect well-known trade marks.
Trying to fix the problem
Since previous regulations unsatisfactorily tried to protect well-known marks, these recent amendments should have a huge impact on trade mark matters, including related litigation, given that they now establish clear rules for the acknowledgment of trade mark notoriety through prior accreditation, which IMPI is empowered to issue. Even more, these changes now expressly allow IMPI to deny the registration if the applied mark is identical or confusingly similar to a famous trade mark, even if the latter has not been registered in Mexico. Still, it is unclear at this time if IMPI is willing to act under this premise.
By including explicit faculties to IMPI, adding clear definitions and a special administrative proceeding to obtain administrative declarations of notoriety, it is intended to resolve the numerous difficulties commonly raised when dealing with this subject in Mexico.
Degrees of Notoriety
The commented amendments incorporate two degrees of notoriety.
- The first refers to the “well-known” trade mark, which is a mark known by a determined sector of the public or by the commercial circles in Mexico as a consequence of the commercial activities developed in Mexico or abroad by a person that uses such trade mark in relation with its products or services.
- The second is the “famous” mark, which is a mark known by the majority of consumers.
The newly amended Article 90 section XV of the IPL, refers exclusively to well-known trade marks and it establishes that denominations, figures or three-dimensional shapes identical or similar to a mark that IMPI considers or has been declared as well-known in Mexico, to be applied to any product or service, shall not be registrable. It also mentions that this impediment shall proceed in any case in which the use of the trade mark that has been applied for registration;
(I) could create confusion or a risk of association with the owner of the well-known trade mark;
(II).- could constitute a non-authorized utilization by the owner of the well-known trade demark;
(III).- could cause discredit of the well-known trade mark; or
(IV).- could dilute the distinctive character of the well-known trade demark.
At the end, this legal provisions establish that this impediment will not be applicable when the applicant for the registration may be the owner of the well-known trade mark.
Regarding famous marks, added Article 90 section XV bis of the IPL, which establishes that denominations, figures or three-dimensional shapes identical or confusingly similar to a mark that IMPI considers or has declared as famous in Mexico, to be applied to any product or service, shall not be registrable as marks. This new Article also clarifies at the end thereof, that this impediment will not be applicable when the applicant for the registration may be the owner of the famous trade mark.
Required Information
In order to obtain a “well-known” or “famous” mark declaration, the applicant must submit, among other, the following information:
I.- The Sector of the population conformed by the real or potential consumers that identify the mark with the products or services that it covers, based on a survey or market study or any other means allowed by the Law.
II.- Other sector of the population diverse to the real or potential consumers that identify the mark with the products or services that it covers, based on a survey or market study or any other means allowed by the Law.
III.- The commercial circles conformed by the merchants, industrials or service providers related to the type of products or services, that identify the mark with the products or services that it covers, based on a survey or market study or any other means allowed by the Law.
IV.- The date of first use of the mark in Mexico or abroad.
V.- The time of the continuous use of the mark in Mexico or abroad. VI.- The commercialization channels in Mexico or abroad.
VII.- The means of diffusion of the mark in Mexico or abroad.
VIII.- The time of effective advisement of the mark in Mexico or abroad.
IX.- The investment effected during the last three years in advertisements or promotion of the mark in Mexico or abroad.
X.- The geographic area of effective influence of the mark.
XI.- The sales volume of the products or the incomes perceived for rendering services covered by the mark, during the last three years.
XII.- The economic value that the mark represents, in the net worth of the company that owns it or according to a valuation effected of the same.
XIII.- The registrations of the mark in Mexico or abroad.
XIV.- The franchises and licenses that have been granted concerning the mark.
XV.- The percent of participation of the mark in the sector or segment corresponding to the market.
It is important to mention that the declaration will be published in the Mexican Official Gazette of Industrial Property.
IMPI will presume, unless proved otherwise, that the conditions that originated the declaratory or its actualizations, subsist for five years counted as from the date in which the declaration was issued; consequently, during said period it should apply as it corresponds, rejecting illegitimate trade mark applications on grounds of prior existence of famous or well- known trade marks.
The declaration may be actualized in any time, as long as the owner demonstrates that the conditions that originated the same subsist at the time of the application.