Concept of 'secondary meaning' recognized for the first time

In one of a series of landmark rulings, the Fourth Federal Collegiate Circuit Court for Administrative Matters has recognized the concept of secondary meaning for the first time.

In January and February 2008 the court issued seven precedent-setting decisions in the Arturo Feldman Case. These decisions, which represent milestones in the development of Mexican trademark law, concerned the following matters:

• the definition of a 'trademark';
  
  
• the function of a trademark;
  
  
• trademark classification;
  
  
• the concept of the likelihood of confusion and the criteria of assessment;
  
  
• the definition of the 'average consumer'; and
  
  
• the definition of 'trade dress'.

According to one decision published in January 2008 in Semanario Judicial de la Federación y su Gaceta (Novena época, XXVII, 2008, p 2793, I4oA609 A), a trademark is a sign - either nominative, figurative or a mixture of the two - that must be materialized in a product, service or commercial advertisement in order to create a link with the concept or idea of the product or service in the mind of consumers.

Under the decision, the functions of a trademark are to:

• indicate the source or origin of the goods;
  
  
• indicate that the goods bearing the mark are of a certain quality; and
  
  
• publicize the potential reputation of the mark.
  
  

In addition, a trademark must possess an inherent or acquired distinctiveness (ie, a secondary meaning). This decision represents a turning point for Mexican trademark law, as it is the first time that the concept of secondary meaning has been recognized by a court. It illustrates the fact that Mexican federal courts are taking important steps towards the development of a modern trademark law.

Roberto Arochi, Arochi Marroquín & Lindner SC, Mexico City