Well-known and Famous Marks

Would you like to broaden your trademarks protection in Mexico and (in some cases) abroad? Would you like to be able to stop third parties from registering YOUR mark for different goods and services in Mexico or other country? Recent reforms to the Mexican Industrial Property Law ("IPL"), have made it possible in Mexico.

Even though the concepts of well-known and famous marks are not new in our country, formerly Mexico did not have a specific procedure to establish or declare a trademark as well-known or famous, which made difficult the application of these provisions.

After the reforms of this past June 16 the IPL now includes a new specific procedure to obtain this protection and grants the possibility to these marks' owners to request the declaration of their mark to be well-known and/or famous.

Obtaining such declaration includes among many, the following advantages:

That the authority will automatically reject any application of similar or equal marks to the well-known and/or famous trademarks in Mexico, independently from the goods and services that may be applied for protection.

  • Avoid expenses and administration cost's derived from handling different mark registries, including applicable classes, licenses, and renewals, among others.
  • Reduces the need of start administrative invalidation or cancellation procedures against third party registries using marks similar to your own.
  • Obtain a greater protection in case of unauthorized uses of the well-known and/or famous mark in other countries, even Internet in case of domain names. It is important to indicate that the Paris Agreement as well as NAFTA establishes provisions for the protection of the well-known mark among member countries.

One of the major problems that the owners of these well-known and/or famous marks have had to deal with, up until these reforms, consisted in third parties trying to profit from the prestige these marks by attempting to register similar marks to identify goods and services different from the ones of the well-known and famous marks, causing a confusion in the market place and –sometimes- discrediting their well-known and famous reputation.

There have been several cases in which a mark with worldwide prestige and recognition have been registered in our country by a different person from its owner, among them "Cartier", "Banana Republic", "Gucci", and "LaCoste".

This Reform clarifies the concept of well-known and famous marks (which are not synonyms); different specific rules regarding the procedure of declaration of well-known or famous marks are created, same which are based upon the Mexican Industrial Property Institute (MIPI) faculties to issue said declarations.

What's next?

  1. Find out if your mark is duly registered and currently valid.
  2. Contact us in order to evaluate if your registered mark fulfills the reform's requirements to be considered as famous and/or notorious ( how well is your mark identified by the consumers or a specific group of consumers/industry, how long has it been used within the country, how has it been publicized -and how much has been invested in marketing, significant sales and presence in the Mexican market among others).
  3. If your mark meets these requirements determine whether to apply for a notoriety or famous declaration (or both).
  4. Carry out the established procedure.
  5. Obtain the corresponding declaration.

For further information, please do not hesitate to contact us.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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