How to demonstrate acquired distinctiveness in Mexico
In most countries, distinctiveness is one of the fundamental requirements of registering a trademark or service mark. However, some descriptive terms acquire significance over time as a result of use in the market and consumers associating it with a particular manufacturer or producer.
Under Mexican legislation, acquired distinctiveness arises when descriptive or generic signs inform consumers of the characteristics of the products or services that they provide, to the point that consumers associate them with a specific or unique origin. In this case, signs that acquire distinctiveness through their use in the market can be registered as a trademark or service mark.
On 10 August 2018 several modifications to the Mexican Industrial Property Law entered into force. One of the main additions was to the rules surrounding acquired distinctiveness. The law now contains a specific chapter dealing with absolute and relative grounds for refusal of a trademark registration. Article 173(I) establishes several grounds with regard to descriptiveness. This covers signs that are descriptive of the goods or services that they intend to distinguish, including signs that designate:
- place of origin; or
- time of production.
It also includes technical names or common names for the goods or services that the mark intends to distinguish, 3D shapes or industrial designs of the public domain, letters, digits and colours, among other things.
The Industrial Property Law also states that the standard requirements for distinctiveness do not apply when a sign has acquired distinctive character as a result of its use with regard to the goods or services for which the trademark was registered.
The Industrial Property Law does not clarify the necessary evidence to prove acquired distinctiveness and it is not clear how the Mexican Institute of Industrial Property examines these applications.
To demonstrate that a mark has acquired distinctiveness, the owner must prove that it has been used in commerce and that consumers recognise it in relation to the goods or services that it distinguishes.
Providing examples of advertising, invoices, market studies, affidavits of consumers or commercial intermediaries, social media content or web pages can help to demonstrate that consumers associate a mark with a specific or unique business origin.
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