By Marcela Bolland
Uhthoff, Gomez Vega + Uhthoff, S.C.
The history of protection in Mexico of renowned marks should be referred in the beginning as the protection of the well-known mark. The recognition and protection of the well-known mark was incorporated into the Mexican Legal system on December 31st, 1962, when Mexico adopted the Act of Lisbon of the Paris Convention. The well-known mark would be incorporated into Domestic Law when the Mexican Law of Inventions and Trademarks was amended on January 17, 1987.
According to the Law of Inventions and Trademarks the well-known mark constituted a bar for later registrations for trademarks that were identical or confusingly similar, provided that the involved marks were applied to the same or similar products or services.
It is in light of this restricted protection in Mexican Law that we may consider that the applicable provisions in Mexico protected the well-known mark, as for a mark to be regarded as a bar for registration of another marks it was necessary that the proposed mark was applied to cover the same or similar goods that the mark had become well-known for.
Notwithstanding the above, an extensive interpretation of the applicable provisions made it possible to conclude that registration of any mark that was identical or confusingly similar to a well-known mark was prohibited if it could induct the consumer into confusion or error.
The aforementioned construction seemed reasonable if we take into account the likelihood of leading the consumers into confusion when using a sign that resulted identical or confusingly similar to a well-known mark, regardless the goods it may be applied to, as the consumer could easily related both signs and conclude that the scope of protection and the presence of the well-known mark had broaden. Still, at this point the principle of specialty prevailed as the goods or services for which the mark was known had a great deal of importance.
On the other hand, the Law of Inventions and Trademarks also provided that a well-known mark could be enforced as a ground for infringement if a third party used an identical or confusingly similar mark in connection with the same or similar goods or services that the mark had become known for.
According to the Law of Inventions and Trademarks the determination of which mark was well- known corresponded to the Ministry of Economy.
In 1991, when the Law of Inventions and Trademarks was abrogated and the Law of Development and Protection of Industrial Property was enacted, the protection of the well-known mark became broader as the corresponding provisions considered same as a bar for registration of an identical or confusingly similar mark, regardless of the goods or services that could be involved.
At this point we could say that the famous mark, rather than the well-known mark, became the subject of protection in the Mexican legal system, i.e. a mark that due to the consumers’ awareness is recognized and protected despite the products or services that are characteristically distinguished with same.
Consequently, usage of a famous mark without the corresponding authorization also became a ground for infringement despite the involved goods or services.
The scheme of protection of the famous mark was not affected by the amendment of the Law of Development and Protection of Industrial Property in 1994, year as from which the Mexican Law was named Law of Industrial Property.
Current protection of the famous marks in Mexico
On June 2005 the Law of Industrial Property was amended to establish a specific proceeding to obtain a declaration of notoriety or fame in connection with trademarks, provided that applicant fulfils some requisites tending to demonstrate that the mark has been known by a determined commercial circle or by the majority of the population, respectively.
In this regard, we must say that even when the Mexican Law now makes a distinction between notorious and famous marks, this differentiation only refers to the extent in which the mark is known. While a mark becomes notorious due to the knowledge a determined circle of consumers may have, a mark should be regarded as famous when the majority of the population is acquainted with the mark. Still, the effects of both the notorious and the famous marks may be opposed against third parties regardless of the involved goods or services.
Although a specific proceeding to obtain a declaration of notoriety or fame has been incorporated to the Mexican Law in 2005, its obtention is not compulsory.
Thus, the Mexican Institute of Industrial Property may reject an application for a trademark if it is identical or confusingly similar to a notorious or famous mark without needing to have on records a notoriety or fame declaration.
Likewise, the owner of a notorious or famous brand may enforce legal actions without needing to have a declaration.
Obviously, obtaining the corresponding declaration saves the brand owner the need of demonstrating before the Mexican authorities that the mark should be regarded as notorious or famous on each proceeding.
The protection and effects of a notorious or famous mark currently comprise the possibility of having a third party’s application rejected in case the authority considers that the proposed mark is identical or confusingly similar to a trademark that should be regarded as notorious or famous.
Likewise, if a registration is granted despite the express prohibition provided in the Law, the brand owner may bring a cancellation action against the later registration.
Furthermore, if a third party is using a notorious or famous mark without its owners’ consent an infringement action before the Mexican Institute of Industrial Property may be submitted.
REGISTRATION OF NOTORIOUS AND FAMOUS MARKS IN MEXICO. COMPULSORY? According to the Mexican Law of Industrial Property notorious or famous marks do not need to be registered before the Mexican Institute of Industrial Property in order to be subject of protection.
This circumstance had been expressly recognized since the early 90’s when the Mexican Supreme Court held that a famous mark did not need to be registered in order to be subject of protection by the Mexican Laws and authorities.
However, in order to obtain a declaration of notoriety or fame the Law of Industrial Property provides that applicant must own at least one registration covering the goods or services the trademark became notorious or famous for.
On the other hand, registration of notorious and famous marks becomes a concern when the brand owner intends to file for infringement and seeks the adoption of provisional measures.
According to the Law of Industrial Property there are certain measures, such as seizure of goods that may be adopted by the authority in order to prevent the infringing conducts during the prosecution of the corresponding proceeding.
In order for these provisional measures to be adopted, the Law establishes as requisite, among others, that plaintiff demonstrates usage or the ® symbol, the initials M.R., the legend “registered mark” or that by any other mean the consumer has been alerted of the protection of the involved industrial property right.
On the other end, the Mexican Law of Industrial Property provides that usage or the ® symbol, the initials M.R., the legend “registered mark” without the actual existence of a registered mark should be considered and sanctioned as an administrative infringement.
Although it is valid to question whether this requisite contravenes the Supreme Court’s criteria and those provisions of the Paris Convention by establishing an additional condition for the effective protection of the well-known mark, up to date there is no case law dealing with this situation.
Consequently, at this point we may consider that while an infringement action could be instituted upon unauthorized use of a notorious or famous mark and the corresponding unfair competition such conduct implies without needing the mark to be registered before Mexican authorities, in order to benefit from the provisional measures provided in the Law of Industrial Property it would be necessary to own at least one Mexican registration.
Enforcing notorious and famous marks in Mexico
By all means the most important challenge is to demonstrate with suitable and sufficient evidence that the mark should be regarded as notorious or famous in Mexico.
Some of the material evidence that may be submitted for such purpose are a) certificates of registration for the mark in Mexico or other countries, b) documents showing sales of products or rendering of services distinguished with the notorious or famous mark, c) advertising material in newspapers and/or magazines having circulation in Mexico, showing the notorious or famous mark, d) depositions of clients, suppliers, distributors, or manufacturers stating knowledge of the notorious or famous brand and e) documents tending to demonstrate that Mexican consumers have contact with the country of origin of the goods or services distinguished with the notorious or famous trademark, among others.
The performance of market surveys to establish the awareness that Mexican commercial circles of consumers or the Mexican population has of a determined mark, product, service or advertising campaign may reinforce the probative value of other documentary evidence, such as foreign magazines and newspapers.
Judicial precedents from foreign governments or organizations such as WIPO, although not binding to Mexican authorities, may also be rendered in order to make the Mexican Institute of Industrial Property and the Federal Courts aware of the criteria held by other authorities when ruling upon a similar case.
Likewise, documents and material tending to demonstrate the basis and origin of the notorious and famous mark become of utmost importance in order to make it clear that plaintiff is their rightful owner, and also to expose the conduct of the third party applying for the registration or using an identical or confusingly similar mark. In commercial and industrial activities we can rarely talk about mere coincidences.
Given that chances of prevailing in an action grounded upon a notorious or famous mark greatly depend of the evidence that may be submitted, it is very important to meticulously address certain details and formalities provided in Mexican procedural provisions, which establish peculiarities that at the end result in making the most of the probative value of each document and obtaining of a favorable decision.