Uhthoff, Gómez Vega & Uhthoff
Innovation, notoriety, protective registration and counterfeiting are key challenges for fashion and luxury brands. Fortunately, Mexico has a complex system of enforcement in place.
Fashion and luxury brands are defined by brand owners, which invest significant time and effort to produce high-quality and exclusive goods or services. Consumers also define such brands based on how they make them feel – fashion and luxury brands have become symbols of the social status of the rich and famous.
The key challenges for fashion and luxury brands in Mexico include innovation, notoriety, protective registration and counterfeiting.
Innovation represents a challenge for fashion and luxury brands. While it may not be directly related to jurisdictional matters, it is a feature that characterises these brands and helps authorities to recognise their status.
As a result of globalisation and the continuous evolution of technology, brand owners must innovate continuously. Clients within the luxury market have teams of experts always looking to the future – at least 10 years ahead. This means that technology used by luxury and fashion brands today was actually conceived and developed in the early 2000s. Consequently, innovation represents the difference between simple consumer recognition of sales or service quality, and consideration of a brand as luxurious. Innovation sets the pace for competitors and consumers establishing state-of-the-art technologies, goods and services. Such was the case for the telecoms industry, where one company developed the technology, devices and infrastructure for mobile communication that eventually led to smartphones, applications and social media, forcing competitors and consumers to adapt to these new ways of communication.
Innovation may represent a challenge for fashion and luxury brand owners with regard to enforcement and adequate protection of their rights. Rights holders must implement an effective system to protect their rights by registering their inventions and trademarks, and taking all necessary safety measures to protect their commercial or trade secrets, including non- disclosure and confidential agreements.
Fashion and luxury trademarks are by definition well-known or famous. Well- known or famous status may be claimed in Mexico, but it is still advisable to take the necessary steps to enforce it. Mexican law provides some prohibitions against the registration and infringement of notorious or famous marks and establishes a procedure for obtaining a declaration from the Institute of Industrial Property of this. While registration may not be a requirement for claiming notoriety as grounds for a cancellation action, national registration may be necessary as a basis for requesting provisional measures.
Fashion and luxury brand owners face a term of registration being cut short in certain classes of interest if they fail to secure national registration. Having to file a cancellation action against a valid registration can involve a considerable investment of time and money.
Proving the notorious status of a luxury brand is a challenge, considering that such brands are directed to an exclusive segment of the market and are advertised and commercialised via specialised channels to which general consumers may have no access (eg, magazines available only on first-class flights or in golf clubs).
A trademark is deemed famous in relation to knowledge of the brand’s existence – this is unrelated to whether consumers can afford the branded products in question. Thus, in practice, producing evidence that a mark is famous may be complicated.
For clients within the luxury market, it is advisable to obtain defensive registrations in classes that are directly related to their main business, since even where Mexican law prohibits the registration of identical or confusingly similar marks intended to be applied to similar goods or services, in practice, registration helps to enforce a client’s rights beyond claims of notoriety.
Defensive protection becomes more important in light of recent amendments to Mexican IP law (which will enter into force from 10 August 2018). The new law will make it mandatory to file a declaration of use within three months following the third anniversary of the publication of registration. Failure to do so will result in the immediate abandonment of registration without further formalities.
Counterfeiting is a burning issue for many owners of high-end brands, given the damage that it can inflict on brand owners, the industry and consumers, as well as the difficulties that enforcement implies. It is relatively easy to define counterfeit goods, but counterfeit services sit in a grey area. Nonetheless, the possibility of fake services being marketed under confusingly similar brands, trade dress or the unauthorised use of brands should not be disregarded.
Unfortunately, counterfeiting is a global phenomenon. The more famous and aspirational a luxury brand becomes, the greater its appeal to counterfeiters.
In Mexico there is a complex system of enforcement, with offences including:
- unauthorised use of a trademark or selling goods using a trademark for which use has not been authorised;
- unfair competition; and
- criminal offences for forging protected marks and for producing, commercialising or distributing fake goods.
For fashion and luxury brands that are deemed notorious or famous – even when it may be arguable that registration is unnecessary in practice – having the corresponding certification clearly demonstrates the legitimacy of a complaint and opens the possibility of requesting provisional measures and the prosecution of criminal actions. Brand owners should therefore secure registrations for inventions and their trademarks in the main classes of interest and obtain a declaration regarding a famous or notorious status.
The appropriate authorities may then deny registration to applications filed for identical or confusingly similar distinctive signs without further formalities. WTR
“The more famous and aspirational a luxury brand becomes, the greater its appeal to counterfeiters.”
Luxury brands are often advertised via specialised channels to which general consumers may have no access, such as magazines available only on first-class flights.
Gabriela Armas has more than 10 years’ IP experience and has been an associate at Uhthoff Gómez Vega & Uhthoff since June 2015. Ms Armas has a law degree with a diploma in intellectual and industrial property from the Panamericana University Law School and is studying for a master’s degree in intellectual property and new technologies at Panamericana University. She is a member of the Mexican Association for the Protection of Industrial Property and is fluent in Spanish, English and Italian.