The Convenience Of Obtaining Declarations Of Notoriety And Fame In Mexico  - Uhthoff

The Convenience Of Obtaining Declarations Of Notoriety And Fame In Mexico 

By Marcela Bolland

Uhthoff, Gómez Vega & Uhthoff, S.C.

On September 17, 2007 the Mexican Institute of Industrial Property published the official tariff including the official fees to be paid for the declarations of notoriety and fame and therefore the amendment that was enacted on June 16, 2005 has really become into force and effect.

According to our Law, the protection of notorious and famous marks may be translated in:

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.

All of the above, without the legal necessity of having obtained a declaration of notoriety or fame, since the drafting of the applicable provisions expressly establishes that the protection provided to the notorious and famous mark is independent of their formal declaration.

Now, according to the Mexican Law of Industrial Property, there are certain requirements that need to be fulfilled in order to have the competent authority declaring that a mark should be regarded as notorious or famous.

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 know 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.

Regardless of the aforementioned difference the nature of the evidence required by the Law may be regarded as the same. A depicted list of the probative material that should be exhibited before the authority is provided herein in bullets for reader’s reference.

Probably, after reviewing the number and nature of documents that should be gathered and submitted before the Mexican authorities someone may think if it is compulsory, convenient or even worthwhile to obtain a declaration of notoriety or fame.

We would have to say that the answer to this question depends of 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.

Still, 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.

Additionally, according to our legal system 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 recognized the notorious or famous status of the mark.

Although it is early to determine if the declarations of notoriety or fame will be consider as the ultimate evidence in cancellation or infringement proceeding, from a procedural point of view this declarations will constitute public documents that according to our Laws have absolute probative value.

The possibility of obtaining a declaration of notoriety or fame should enable brand owners 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.

List of the probative material:

  • 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.
  • Trademark registrations in Mexico and abroad.
  • Franchises and licenses granted to third parties.
  • The market share of the goods or services protected by the mark.

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