One of the fundamental requirements to register a trade or service mark in most countries around the world is distinctiveness, being this one equivalent to novelty for patent rights and originality for copyrights. Thus, initially descriptive terms are not subject of registration.
Nevertheless, some terms that are considered as descriptive may acquire unique significance over time through the trademark owner’s usage, and also, by the association of the consumers with a particular manufacturer or producer, in Mexico and The United States.
In Mexico, generally speaking, “acquired distinctiveness” arises when trademarks that are constituted by descriptive or generic signs that may inform consumers through its structural elements the characteristics of products or services has been used and — to a point in which consumers associate it with a specific or unique business origin.
This legal figure also implies the possible existence and registration of signs that being initially not distinctive, have acquired said distinctiveness due to their use as trade or service marks within the market.
In the United States, if a proposed trade or service mark is not inherently distinctive, it may be registered on Principal Register, but only upon proof of “acquired distinctiveness”, or “secondary meaning” that is, evidence that it has become distinctive as applied to the applicant’s goods or services in commerce.
2.- LEGAL FRAMEWORK.
In Mexico, on August 10, 2018, several modifications to the Mexican Industrial Property Law entered into force, resulting in some new legal figures that have been recognized. One of the principal new legal concepts that was included in the law was “acquired distinctiveness”.
After the above referred Law, it came into force The Federal Law for the Protection of Industrial Property, from now on referred to as (FIPL), which abrogated the previous one, and keep between its principal concepts “acquired distinctiveness”.
FIPL contains a specific chapter dealing with absolute and relative grounds for refusal, among such grounds in Section I of Article 173, it establishes several dispositions which refer to cases where a trademark is not registrable based on descriptiveness.
In general terms, the above disposition establishes that it shall not be registrable as trademarks, signs that considering their characteristics as a whole, are descriptive of the goods or services that they intended to distinguish, such as signs that commerce serves to designate species, quality, quantity, composition, destination, value, place of origin or time of production.
It can be technical names or names of a common use of the goods or services that are intended to be distinguished with the trademark, three-dimensional shapes or industrial designs of the public domain, letters, digits, as well, as isolated colors, between others.
FIPL, also refers that those dispositions shall not be applicable when, as a result of the use made in commerce of the goods or services for which the trademark has been filed, it has acquired a “distinctive character” in the national territory.
In the United States, the judicially developed concept of “secondary meaning”, is codified in the disposition 1052 Section 2 of the Lanham Act, named “Trademarks registrable on the principal register; concurrent registration”, which mentions that no trademark by which the goods of the applicant may be distinguished from the goods of others, shall be refused registration on the principal register on account of its nature unless it consists of a mark: when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.
Nevertheless, the above disposition also refers that nothing in that Chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce.
In Mexico, FIPL does not refer to the specific type of evidence that should be admitted to probe “acquired distinctiveness”, since there are no clear guidelines to determine the proofs required to support an application for a mark filed based on “acquired distinctiveness”, and it is not clear how The Mexican Institute of Industrial Property examines these applications when filed.
To be able to demonstrate that a trademark has “acquired distinctiveness”, it is necessary to prove that it has been used in the market and that consumers recognize the mark in relation to the goods or services that it distinguishes, to ensure that the mark complies with its main requisite, i.e. that it is sufficiently distinctive to enable its goods or services to be distinguished from others in the market.
Our practical experience has shown that the exhibition of advertising, invoices, market studies, affidavits of consumers or commercial intermediaries, pages of social media or the internet can help demonstrate that consumers associate a mark with a specific or unique business origin precisely because of that trademark.
Now, in the United States, an applicant of a mark might use the following evidence to establish “secondary meaning”.
A claim of ownership of one or more active prior registrations on the Principal register of the same mark for similar goods or services.
Proofs of substantially exclusive and continuous use of the mark by the applicant in the commerce for five years before the date on which the claim of distinctiveness is made.
Other evidence such as affidavits, declarations instead of oaths, depositions, advertising expenditures in connection with such use, letters of statements from the trade, or consuming public.
4.- MAIN DIFFERENCES.
In the United States, if an applicant applies for Principal Register, and it is rejected, then it can apply for the Supplemental Register, on the contrary to Mexico, in which case, if the owner of proposed application does not prove the distinctiveness of the mark, it will be rejected.
In Mexico, it is not determined the time of the continuous use of the mark in the commerce to prove “acquired distinctiveness”, whereas in The United States is five consecutive years before the date on which the claim is made.
In the United States, a claim of “acquired distinctiveness” may apply to a portion of a mark, on the contrary to Mexico where FIPL does not refer anything about it.
In conclusion, although in Mexico and in the United States “acquired distinctiveness” has significant similarities and differences, the main aspect of the same remains intact, since it is one of the most innovative figures of the contemporary trademark law that has shown us that distinctiveness in trademarks can be flexible taking into consideration the use of the trademark in the commerce and the association of consumers of it with a specific or unique business origin.
Author: Marisol Balandra