BRIEF REFLECTION OF FAMOUS AND WELL-KNOWN MARKS AND THE BENEFITS OF THEIR DECLARATION IN MEXICO
As we already know, trademarks in the world are synonymous of certain quality of the products and services that they protect, and they are related to social and cultural values shared by consumers, since they choose their trademarks in accordance to their preferences to be used at their homes.
However, have you ever wondered what specific characteristics share those trademarks that are frequently selected by a determined sector or majority of consumers over others in the market? The answer is simple, these trademarks have a type of “reputation” and “recognition” built by the preference of consumers that has been constructed through the years.
In light to the above, we can find certain trademarks that through the years and the efforts made by their owners become famous or well-known and are identified by a sector or majority of consumers, brief examples of this are Pepsi, Iphone, GM, Boing, and many others.
These trademarks need to count with special and whole protection.
DEFINITION AND SLIGHT DIFFERENCES.
Since the nomenclature and definition of famous and well-known marks varies from jurisdiction to jurisdiction, most countries do recognize some type of protection for marks based on the already known reputation of them between consumers.
In light to the above, Mexico is not the exception, since according to the Mexican Industrial Property Law, “well-known 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 by its promotion or advertising; a mark regarded as “famous” when it is known by the majority of consumers1.
Although it may seem that the difference between well-known and famous marks only refers to the extent in which the mark is known, in the Mexican legal system we can perceive different effects between them.
If we carefully read the article 90 section XVI of the Mexican Industrial Property Law, which last reform was made in 2018, it has an additional burden of proof2 in relation to well-known mark owners that is not mandatory in what refers to famous marks, since it is provided that it will not be registered as trademarks equal or similar signs in grade of confusion to a previous trademark that Mexican Institute of Industrial Property estimates or has declared as well-known in Mexico, regardless of the products of services for which protection is sought for.
Moreover, it is established that the prohibition for registration contained therein shall become into effect provided that the use of the proposed mark:
May cause confusion or likelihood or association with the owner of the well-known mark, or
May produce a non-authorized benefit of the owner of the well-known mark, or
May tarnish the well-known mark, or
May dilute the distinctive character or the well-known mark3.
With the above in mind, we can notice that, while famous marks constitutes full barriers for an identical or confusingly similar marks, 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, in comparison with well-known trademarks, it is imperative that likelihood of confusion, unauthorized benefit of third parties, or dilution, must be proven before authority.
OBTAINING THIS TYPE OF RECOGNITION.
The Mexican Institute of Industrial Property can recognize a trademark as famous or well-known either by declaration or by estimation.
Both a declaration and an estimation can prevent third parties from registering identical or confusingly similar marks in any class. If the mark is well-known, as we previously referred, then the heightened protection applies when use of the third-party mark can cause confusion or a risk of association with the mark, constitute an unauthorized appropriation of the mark, discredit the mark, or dilute the distinctive character of the mark, but if the mark is famous, the protection applies to any identical or similar mark.
Moreover, actual Mexican Industrial Property Law mentions that the owner of a well-know or famous mark may obtain a certificate in which this status is recognized, for which case, specific evidence has to be exhibited before the authority, tending to prove 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 well-known or for a famous mark.
On the other hand, article 90, subsections XVI and XVII of the Mexican Intellectual Property Law4, authorizes Mexican Institute of Industrial Property to provide an estimation that a mark is famous or well-known, based on the examiner’s own subjective criteria and prior knowledge of the mark, since the party that has a legal interest in the mark can ask authority to perform an estimation in any proceeding.
PROCEEDING TO OBTAIN DECLARATIONS.
Mexican Industrial Property Law provides that the owner of a well-known or famous mark may obtain a certificate in which such status is recognized, for which purpose, specific evidence has to be exhibited before authority, all tending to prove 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 well-known or for a famous mark.
In light to the above, the nature of the evidence required to be submitted before Mexican Institute of Industrial Property when requesting a declaration of well-known or fame is the following:
Sector of the public comprising real or potential consumers who identify the mark with the products or services which it protects, based on a market survey or study or any other method permitted by law;
Other sectors of the public excluding real or potential consumers that identify the mark with the products or services which it protects, based on a market survey or study or any other method permitted by law;
Commercial circles comprising tradesmen, industrialists or service providers connected with the type of products or services, who identify the mark with the products or services protected by the mark, based on a market survey or study or any other method permitted by law;
- Date of first use of the mark in Mexico and, where applicable, abroad; the period of continued use of the mark in Mexico and, where applicable, abroad;
- Marketing channels in Mexico and, where applicable, abroad;
- Methods of disseminating the mark in Mexico and, where applicable, abroad;
- Period of actual advertising of the mark in Mexico and, where applicable, abroad;
- Investment made during the previous three years in advertising and promoting the mark in Mexico and, where applicable, abroad;
- Actual geographical area of influence of the mark;
- Sales volume of the products or the revenue received from the provision of the services protected by the mark, during the previous three years;
- Economic value represented by the mark in the shareholders’ equity of the company owning the mark, or in accordance with a valuation of the company;
- Franchises and licenses that have been granted with respect to the mark; and
the percentage of the share of the mark in the relevant market sector or segment.5
As we may notice, Mexican Industrial Property Law has imposed strict requirements in connection with the well-known and famous status of a mark, and also burden so high that it has triggered problems to plaintiffs and companies, specially taken into consideration that certain evidence such as market research is expensive and must be done with specific characteristics, as they would have to undoubtedly demonstrate to the satisfaction of these proofs, that the mark is widely sold and advertised, and that the consumers of at least the sector connected with the products or services to which the mark is applied, has knowledge of the existence of the mark.
In light to the above, the senator of Morena Ernesto Perez Astorga6, has made a legislative proposal of a new Mexican Industrial Property Law, same that we are waiting to be published, in which case, and referring to this type of trademarks, he eliminates some of the referred evidence in relation to famous and well-known marks, specifically, 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 last three consecutive years (Mexico and abroad), and the economic value of the mark.
BENEFITS AND CONCLUSION.
Well-known and famous marks constitute a legal impediment for new applications that are similar in grade of confusion or the right upon which cancellation and infringement actions may be instituted.
Another important benefit for the owners of well-known or famous trademarks in Mexico is that they can choose that the information provided by Mexican Institute of Industrial Property, would be treated as confidential and be market for the study of the examiner attorney only, in order to avoid the publication of sensitive information for the owner, for example, the economic value of the trademark established in their accounting books.
Although declarations of notoriety and fame do not constitute a procedural requirement and the evidence recollection can sometimes be difficult, they are important if we take into consideration that this type of certification that is effective for five years, renewable subject to the same conditions as maintained, gives its owners additional legal effects that will be positive for these trademarks, specifically to act as an obstacle against third parties trying to register a confusingly similar or identical mark in Mexico, as well as for grounds for cancellation or for an administrative declaration of infringement.
In conclusion, it is always advisable to obtain the declaration of well-known or famous marks by Mexican Institute of Industrial Property, in order to have additional elements to preserve the exclusivity of the use of a trademark and the good reputation that owners of famous and well-known trademarks have developed through their consumers and years of market sales.
By Marisol Balandra Perez.
Uhthoff Gomez Vega Uhthoff.
1 Mexican Industrial Property Law, article 98 TER. Last Reform, 2018.
2 SANTOYO OROZCO, SAÚL. “Amendments on well-known and famous trademarks in Mexico”.
3 Op. Cit. Note 1. Article 90 Section XVI.
4 Ibid, Articles 90 Section XVI and XVII.
5 Op. Cit. Note 1. Article 98-TER-2.
6 PEREZ ASTORGA, ERNESTO. “Initiative of the New Mexican Industrial Property Law.” November 07, 2019.