Declarations of notoriety or fame now available

The Mexican Institute of Industrial Property (IMPI) now has the authority to grant a declaration that a trademark is famous or notorious under the 2005 amendments to the Industrial Property Law.

On September 13 2007 the government fees for the issuance of declarations were published in the Official Gazette. As of September 14 2007 IMPI thus has the power to receive applications for the protection of famous and notorious marks. However, the amendments to the Industrial Property Regulations are still pending.

Article 98(bis) of the Industrial Property Law defines a 'famous mark' as a mark that is "known to a majority of [Mexican] consumers". Under the law, it is forbidden to register a mark that is identical or similar to a famous mark for any kind of products or services. In other words, the protection granted to a famous mark extends to all products and services, regardless of whether there is a likelihood of confusion between the marks. Moreover, the law states that a mark is well known if:

"a given section of the public or of business circles is aware of the mark as a result of business activities conducted in Mexico or abroad by an entity which makes use of the mark in connection with its goods or services."

A declaration that a trademark is famous or notorious is a valuable tool for mark owners for the following reasons:

• In ex parte proceedings, the examiner may take into account the fact that a trademark is famous or notorious during the examination process. Therefore, examiners may refuse to register similar marks for goods in different classes. This benefit is particularly significant for trademark owners, as there is no formal opposition procedure in Mexico.
  
  
• Ordinarily, the plaintiff in trademark cancellation proceedings must demonstrate that its mark is famous or well known. If IMPI has issued a declaration that a trademark is famous and notorious, the plaintiff is relieved of this burden.
  
  
• In infringement proceedings, the trademark owner will not be required to prove that its mark is well known, which is cost and time effective.

Under Article 98(bis)(2) of the law, applicants must provide the following information in order to obtain a declaration that a trademark is famous or notorious:

• market research indicating the section of the public - actual or potential consumers - which recognizes the mark in connection with the products or services covered;
  
  
• market research indicating the section of the public - other than actual or potential consumers - which recognizes the mark in connection with the products or services covered;
  
  
• market research indicating the business associations dealing with the type of goods and/or services covered by the mark which recognize the mark in connection with the products or services in question;
  
  
• date of first use of the mark in Mexico and abroad;
  
  
• periods of continuous use of the mark in Mexico and abroad;
  
  
• channels of trade in Mexico and abroad;
  
  
• means of promoting the mark in Mexico and abroad;
  
  
• investment in advertising and promotion during the past three years in Mexico and abroad;
  
  
• geographic area in which the mark is known;
  
  
• sales figures for products or services covered by the mark during the past three consecutive years in Mexico and abroad;
  
  
• economic value of the mark (through financial statements or valuation study);
  
  
• trademark registrations in Mexico and abroad;
  
  
• franchises and licences granted to third parties; and
  
  
• market share.

In order to file an application for a declaration that a trademark is famous or notorious, the applicant must have at least one trademark registration in Mexico covering the products for which the mark is considered to be well known or famous (Article 98(bis)(1), Paragraph 3 of the law). Such registration will be a key element to support the application.

The application fees are as follows:

• filing fee - $2,500 (plus expenses and taxes);
  
  
• examination fee - $266;
  
  
• declaration fee - $103 per class; and
  
  
• issuance fee - $5,143.

Roberto Arochi, Arochi Marroquín & Lindner SC, Mexico City