Embracing well-known marks

Obtaining a declaration of fame provides the trademark holder with  the certainty that the Mexican authorities will not register an identical or confusingly similar trademark for similar goods and services.

In the past, an in terested party could not request the Mexican Trademark Office to grant a trademark well-known status, unless that mark was the subject of litigation, in which  case the Trademark Office could issue a resol ution declaring the trademark to be well known.

However, the law was amended in 2005 so as to allow for the filing of applica tions for a declaration of well-known status with the Trademark Office, provided th at the applicant fulfilled a ser ies of requirements and that the trademark for w hich the declaration was requested was valid and registered in Mexico.

The amended law established two kinds of well-known trademarks:

• famous trademarks, which are recognised by most Mexican consumers; and
• notorious trademarks, which are recognised by a spec ific sector of the public as a result of commercial activities carried out in Mexico or abroad, by the use of the mark in relation to specific goods or services, or as a result of promotion or ad vertising.

That said, however, no such declarations were issued until recently, as the Trademark Office was unsure about what fees to charge for such declaration. Once the office h ad resolved this issue and published a list of fees, declaration cases began to be hear and the procedure has since become popular and useful for r ights  holders.

In order to obtain a declara tion  of well- known status, the following evidence must be provided to the Trademark Office:

• a survey showing all consumers, whether actual or potential, which can identify the trademark with the goods or services covered by the mark;
• a survey showing other consumers which can identify the trademark with the goods or services covered;
• a survey of all people in the same sphere of commerce (eg, traders, industrialists and service providers) demonstra ting their awareness of the mark;
• the date of first use of the trademark in Mexico and, if applicable, abroad;
• the duration of continuous use of the trademark in Mexico and, if applicable, abroad;
• channels of trade in Mexico and, if applicable, abroad;
• advertising channels in Mexico and, if applicable, abroad;
• the effective duration of advertising in Mexico and, if applicable, abroad;
• investment in advertising and promotions in Mexico and, if applicable, abroad, over the past three years;
• the geographical scope of infl uence of the mark;
• sales volumes for the past three y ears;
• an appraisal showing the economic value that the mark represents in the owner’s capital;
• trademark registrations that have been granted in Mexico and, if applicable, abroad;
• any franchises and licences th at have been  granted in connection with the trademark; and
• the trademark’s market share in the relevant sector of commerce.

According to the law, all documentation should be submitted in or iginal form or as certified copies  only; if the documentation is not written in Spanish, a transla tion should be supplied. If all requisite e vidence is not submitted, the applica tion  will be rejected.

Once all evidence has been  gathered, the application can be filed with the Trademark Office. The applicant need not spec ify whether it is seeking a declara tion  of notorious or famous status; the Trademark Office, upon issuing its final resol ution, will decide  this instead.

The Trademark Office may reject the application if it considers th at the mark is not well known in Mexico. This decision is left to the disc retion of the officer in ch arge of examining the petition.

Nonetheless, a rejection can be challenged through:

• a reconsideration appeal filed with the Trademark Office within 15 da ys of being notified of the rejection; or
• a nullity petition filed with the Federal Court of Tax and Administrative Affairs within 45 days of being notified of the rejection.

If the Trademark Office dec ides that the trademark is either notor ious or famous, it will require the applicant to pay the final fee in order to issue the declaration.

The recommended procedure for obtaining a declaration of well-known status involves a preliminary evaluation of the proposed mark. However, some brands may be well known only in a certain economic sector, and may be unfamiliar to the Trademark Office; in such instances the office will need to consider these mark s further. Consequently, an exhaustive search of the Trademark Office’s records and online browsers should be conducted, to establish a reasonable idea of the prospects of success.

Once all required evidence has been gathered, the necessary surveys and appraisals should be conducted.  These surveys should be outsourced to a company that  specialises in such issues and the appraisal should be conducted through an authorised authority.

A declaration of well-known status remains valid for five years. Once this period has elapsed, the owner can request that the declaration be renewed, provided that it can demonstrate that the conditions giving rise to the or iginal declaration still apply at the time of the request for rene wal.

The Trademark Office has issued various declarations for notorious and famous trademarks, set out in the tables below.

These declarations are important for trademark holders, since the law provides that the following may not be registered as trademarks:

• names, figures or three-dimensional shapes that are identical or similar to a trademark that the Trademark Office has declared to be notor ious, for any goods or services, if registra tion  could:
• create a risk of confusion or association with the owner of the well- known trademark;
• constitute non-authorised use of the well-known trademark;
• discredit the well-known trademark; or
• dilute the distinctiveness of the well- known trademark.

This does not apply where the applicant is the owner of the well-known trademark; and

• names, figures or three-dimensional shapes which are identical or confusingly similar to a trademark which the Trademark Office has declared to be famous, for any goods or services. This does not apply where the applicant is the owner of the famous mark.

Therefore, if an applicant obtains a declaration of well-known status, it can be certain that the Trademark Office will not allow the registration of another identical or confusingly similar trademark used  to commercialise or benefit the same or similar goods or services for notor ious marks, or any goods or services a t all for famous marks. WTR

Notorious trademarks

Famous  trademarks

Carolina Julieta Ponce Gonzalez

Associate

cponce@uhthoff.com.mx

Carolina Julieta Ponce  Gonzalez is an associate with Uhthoff, Gomez Vega & Uhthoff who specialises in trademarks. She obtained her  law degree in 2008 from Universidad Iberoamericana. She is fluent in Spanish, English and  French.

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February/March 2012 World Trademark Review