Notorious Marks - Uhthoff

Notorious Marks

By Marcela Bolland

Uhthoff, Gomez Vega & Uhthoff.

Notorious marks or the declaration thereof, has always been an issue widely discussed in Mexico by the IP legal community. This is so because provisions of the Paris Convention dealing with this topic have for a long time been used as an effort to cancel or nullify trademarks registered by Mexican authorities without really making an extensive evaluation of proposed denominations and without examining in depth if such marks may be potentially affecting rights acquired by third parties elsewhere. So, a specific regulation and legal frame that at least tries to resolve this issue is always a good start in the right direction.

While this recognition and protection is not new in the Mexican legal system, during the past four years certain amendments to our Law of Industrial Property and its Administrative Regulations have put notorious and famous marks on the spot.

Before said amendments 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 were identified by the Mexican Law of Industrial Property in general terms as well-known marks.

These marks constituted an obstacle for third parties trying to secure registration of an identical or confusingly similar mark, regardless of the products or services for which the mark was well-known or those which applicant intended to cover.

Likewise, the so called well-known marks enabled their owners to cancel any registration for an identical or confusingly similar mark that for some reason had been granted despite the aforementioned provision.

On June 2005 the Mexican Law of Industrial Property was amended making and incorporating a distinction between notorious and famous marks.

According to the Law, the notorious marks are those marks that are known by a determined sector of consumers or certain commercial circles of the country, as a consequence of the commercial activities developed either in Mexico or abroad, or as a consequence of its promotion or advertising.

On the other hand, a mark is regarded as famous when it is known by the majority of consumers.

Moreover, the amendment incorporated a specific proceeding to obtain declarations of notorious and famous marks.

In essence, the Law provides that the owner of a notorious or famous mark may obtain a certificate in which such status are recognized, for which purposes substantial and specific evidence has to be exhibited before the authority, all 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.

Although this amendment was enacted on 2005, it did not come into effect but until September 2007, when 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 terms of protection, we may say that the amendment did not substantially vary the one that had been granted by the then identified as well-known marks, since notorious and famous marks still 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.

Initially, all of the above, regardless of the involved products or services, which actually corresponds to the principle that has ruled Mexican Law since at least 1991, when the Law of Development and Protection of Industrial Property was enacted.

It was from that moment, that Mexican provisions established the protection of the then referred to as well-known marks, now identified as notorious or famous marks, regardless of the goods or services that could be involved, i.e. providing a protection that actually went beyond that provided by Paris Convention.

While it may seem that the difference between notorious and famous marks only refers to the extent in which the mark is known a careful reading of article 90, sections XV and XV bis, of the Mexican Law of Industrial Property allows us to perceive a slight difference between the effects of the notorious and famous marks.

While section XV bis, which refers to famous marks, i.e. those know by the general public, provides that words, figures or three-dimensional shapes should not be registered if they are identical or confusingly 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 words, figures or three-dimensional 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, in 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.

The aforementioned hypothesis, show a slight difference not in regards to 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.

While this difference does not restrict or limit the effects of the notorious mark it puts an additional burden of proof to the owner of the notorious mark, since it will be compelled to demonstrate that registration of an identical or confusingly similar mark may originate confusion, constitute an unauthorized benefit, tarnishment or dilution of the notorious mark.

In view of the above, we may say that 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.

Differently, in order for a notorious mark to be considered as a bar for registration of junior marks, or provide a ground for cancellation of an already registered mark, it is imperative that likelihood of confusion, unauthorized benefit or dilution are demonstrated, being necessary to demonstrate that applicant of the mark 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 are to some extent involved in the commercial or industrial sector in which the mark is known.

Taking the above into account, we may say that 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.

Thus, the broad protection of notorious, famous or well known marks has existed in Mexico since 1991, when the Law of Development and Protection of Industrial Property was enacted, since the corresponding provisions established the protection of well-known marks, regardless of the goods or services that could be involved.

Under the described circumstances, it is fair to conclude that protection in Mexico of those marks known by a determined industrial or commercial has been even wider than the protection provided even by Paris Convention for more than 25 years, since the provisions applicable as from 1991 have granted such protections without the involved products or services to make a difference or constitute a limitation for brand owners.

Regardless of the above, what should be specially recognized of the amendment of the Mexican Law of Industrial Property enacted on 2005 is the fact that it did not affect the availability of protection of notorious and famous marks, even without having the corresponding declaration from the Mexican authority.

The above since the Law of Industrial Property provides the possibility of obtaining the declarations of notorious and famous marks, but does not establish such declarations as a requirement in order to grant notorious and famous marks the corresponding recognition and protection.

Indeed, a brand owner that considers its mark to be notorious or famous does not need to obtain a declaration in such sense in order to challenge, for instance, the registration of an identical or confusingly mark.

Moreover, leaving this possibility open did not also seem reasonable but also solved a potential doubt that could have raised if the Law provided that only by exhibiting a declaration of notoriety or fame could a cancellation action on such ground be instituted.

If that had happen, it could have been thought that owners of notorious and famous marks could not have challenged any registration granted by the Mexican Institute of Industrial Property before the declaration had been obtained.

The above in view of the contents of article 98 bis-1 which provides that the declaration constitutes an administrative act by means of which the Institute, in light of the evidence furnished declares a determined mark as notorious or famous at the time the declaration is made, and therefore may produce legal effects as from the date in which they are rendered.

From our point of view, any doubt would have been solved in light of the provision contained in section I of article 151, according to which a registration shall be cancelled if granted against the provisions of the Law that was in force by the time it was granted.

Consequently, if conflicting registrations were granted before the commented amendment a brand owner could support a cancellation action against an identical or confusingly similar mark on the provisions that were in force before June 2005, which we reiterate recognized and protected the then referred to as well-known mark.

Now, even when the declarations of notoriety and fame do not constitute a procedural requirement we consider them to be an important alternative if we take into account that the Law of Industrial Property establishes a number of requirements and evidence that should be produced in order to obtain the corresponding declaration.

In essence such requirements refer to the necessity of demonstrating that the mark has been known by a determined commercial circle or by the majority of the population. The extend to which the mark is known results on whether the marks should be regarded as notorious or famous, a mark becomes notorious due to the knowledge a determined circle of consumers while a mark should be regarded as famous when the majority of the population is acquainted with the mark.

Despite of the difference we have commented in regards to notorious and famous marks, the nature of the evidence required by the Law may be regarded as the same. In article 98 bis-2 the Law provides the following list of the material that must be submitted before the Mexican Institute of Industrial Property when requesting a declaration of notoriety or fame:

  • Market research indicating the actual or potential consumers who recognize the notorious or famous mark.
  • Market research indicating a sector of the public, other than actual or potential consumers, who recognize the notorious or famous mark.
  • Market research indicating business circles dealing with the type of goods and /or services to which the mark is applied.
  • The date of first use in Mexico and abroad.
  • The extend of continuous use of the mark in Mexico and abroad.
  • The channels of commercialization in Mexico and abroad.
  • The means by which the mark is promoted in Mexico and abroad.
  • The investment in advertising and promotion of the mark during the last three consecutive years (Mexico and abroad).
  • The geographic area in which the mark is known.
  • Sales figure for products or the income earned for rendering the services covered by the mark during the lat three consecutive years (Mexico and abroad)
  • The economic value of the mark.
  • Certificates of registrations in Mexico and abroad.
  • Franchises and licenses granted to third parties.
  • The market share of the goods or services protected by the mark.

Probably, after reviewing the number and nature of documents that should be gathered and submitted before the Mexican authorities someone may wonder whether it is compulsory, convenient or even worthwhile to obtain a declaration of notoriety or fame, specially if we take into account that the extent and protection of notorious and famous marks is not conditioned to obtaining said declaration.

We would have to say that the answers to these questions depend on the brand owner, the mark, the counterfeit problems they have been faced in Mexico and prior experiences regarding attempts of third parties to overtake the mark.

Once again, obtaining the declaration of notoriety or fame is not compulsory although brand owners could definitively find this alternative as an investment and a time and cost saver resource.

As explained the notorious and famous marks may constitute an impediment for later applications or the right upon which cancellation and infringement actions may be instituted.

However, every time a brand owner decides to enforce its notorious or famous mark it is compelled to demonstrate before the authority the notorious or famous status of the mark, for which purpose substantial probative material should be exhibited.

Given that notoriety and fame derive from the awareness of the mark, either in an industrial or commercial sector, or by the majority of the population, in order to demonstrate such status substantial invoicing and advertising materials should be submitted, as to conclude that said activities have placed the mark in the mind of consumers.

Additionally, in view of our legal system the commented evidence should comply with certain formalities in order to have its probative value recognized. Among these requirements, we could mention that the documents should be exhibited either in original or certified copies, being necessary to translate those documents drafted in languages different from Spanish.

Although materials offered as evidence are kept on the official files and it is possible to obtain certified copies of same, obtaining certified copies before the authority is subject to the payment of the corresponding official fees.

In view of the above, it turns out that every time the owner of a notorious or famous mark tries to enforce its rights against a third party time and resources should be invested in order to gather, prepare and offer supporting evidence.

If on the contrary, the brand owners take the time to prepare the evidence required by the Law in order to obtain a declaration of notoriety or fame and follows the corresponding procedure at the end they will have a document that would be principal evidence required to support a cancellation or infringement action: a document demonstrating that the competent authority has already recognized the notorious or famous status of the mark.

Although at this point there are not administrative or judicial precedents involving declarations of notoriety and fame and whether they are the ultimate evidence in cancellation or infringement proceedings, from a procedural point of view these declarations constitute public documents that according to our Laws have absolute probative value, which we consider may provide brand owners an alternative to expedite the enforcement of their marks in Mexico and bring awareness to the authority in charge of granting registrations of the existence of marks that due to their impact on the consumers require a particular recognition.

 

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