First declaration of fame is issued

Mexico
The Mexican Institute of Industrial Property (IMPI) has issued the first declaration that a trademark is famous in Mexico in the February 2010 edition of the Industrial Property Gazette. The trademark in question was RED BULL.

Following the amendments to the Industrial Property Law, published in the Official Gazette of the Federation on June 16 2005, IMPI has the authority to grant a declaration that a trademark is famous or notorious. The amendments added a chapter on well-known and famous marks to the law.
 
According to Article 98bis of the law, a trademark will be considered to be famous in Mexico when the majority of consumers are aware of it. The provision also states that all forms of proof permitted under the law may be used for the purpose of demonstrating that a mark is famous.
 
In addition, Article 98bis(1) establishes that the declaration, or any updates issued by IMPI, shall constitute an administrative act by means of which IMPI declares, based on the evidence provided, that the conditions under which a mark is deemed to be famous are met at the time the declaration is issued. However, in order to obtain such a declaration, the owner of the mark must have registered it in Mexico for the goods and/or services for which the mark has become famous.

For the purpose of obtaining a declaration of fame, Red Bull GmbH had to provide the following information, among other things:
  • market survey or study (or any other method permitted by law) indicating the section of the public - actual or potential consumers - that identify the mark with the goods and/or services for which it is registered;
  • market survey or study (or any other method permitted by law) indicating other sections of the public - excluding actual or potential consumers - that identify the mark with the goods and/or services for which it is registered;
  • market survey or study (or any other method permitted by law) indicating the commercial circles (tradesmen, industrialists or service providers) dealing with the type of goods and/or services for which the mark is registered that identify the mark with those goods and/or services;
  • the date of first use of the mark in Mexico and, where applicable, abroad;
  • periods of continued use of the mark in Mexico and, where applicable, abroad;
  • the marketing channels used in Mexico and, where applicable, abroad;
  • the means of promoting the mark in Mexico and, where applicable, abroad;
  • the period during which the mark has been advertised in Mexico and, where applicable, abroad;
  • investment in advertising and promotion of the mark during the past three years in Mexico and, where applicable, abroad;
  • the actual geographical area in which the mark is known;
  • sales figures for the goods and/or services covered by the mark during the past three years in Mexico and, where applicable, abroad;
  • the economic value of the mark in the equity of the company that owns it;
  • registrations for the mark in Mexico and, where applicable, abroad;
  • franchises and licences that have been granted to third parties with respect to the mark; and
  • the share of the mark in the relevant market sector or segment.
According to Article 98bis(3), IMPI shall assume that the conditions which gave rise to the declaration are met for a period of five years from the date of issue. Consequently, during that period, Articles 90(XV) and 90(XV)bis (signs that may not be registered as trademarks) shall apply to the benefit of the owner of the famous mark - in the present case, Red Bull.
 
The declaration that the RED BULL mark is famous was published in the Industrial Property Gazette pursuant to Article 98bis(7).
 
Roberto Arochi, Arochi Marroquín & Lindner SC, México

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