Famous and Notably Recognized Marks

July 8, 2011
Famous and Notably Recognized Marks

Mexico’s Intellectual Property Law (Ley Industrial de Propiedad) provides for many cases in which a trademarkmay not be registered. In this note we highlight those names, three-dimensional figures and forms that are thesame or similar to a mark that the Mexican Institute of Intellectual Property (Instituto Mexicano de la PropiedadIntelectual (IMPI)) considers as, or has declared to be, “notably recognized” or “famous,” with respect toproducts or services. A mark is considered “notably recognized” in Mexico when a certain populace or businesssector of the country recognizes that mark as a result of economic activities conducted in Mexico or abroad by aperson or entity who uses this mark with respect to its products or services through promotional efforts orpublicity of such. This implies that in order to achieve this status or level of recognition, a mark should at least behighly recognized in a specific sector. For example, a mark may be “notably recognized” in the world of aquaticsports, but unknown in other areas. For example, the names “Swatch” or “Lacoste” are highly recognized in theirspecific market segments, but not necessarily in all markets. It is understood that a mark is famous provided that it is recognized by the majority of consumers. Clearly, far fewer marks meet this characteristic of beingrecognized by the majority of the population, as is the case, for example with the names “Coca-Cola” or“McDonalds.” It is noteworthy that in 2005 the Intellectual Property Law introduced a process through which theauthorities may declare the fame or notoriety of a mark by allowing the interested party to employ all evidencethat is necessary to prove such status. The fact that the owner of a brand does not try to follow the establishedprocess to obtain a declaration of fame or notoriety does not rule out that the authorities may independentlyattempt to determine such status; however, obtaining a declaration offers a sense of legal protection for theowner. Many companies with globally recognized marks have slowly obtained declarations of fame or notorietyfor their marks, to the effect that subsequent studies are not necessary (at least during the active period of thedeclaration, which is ten years), which precludes others from registering identical or similar marks. In the case ofmarks that are “notably recognized” this means securing exclusive rights on products or services that belong to arelated market. For “famous” marks, this means securing exclusive rights on any type of product or service.

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