The Mexican statute provides explicit protection for well-known trademarks since the Law of Patents and Trademarks of 1976. Before the 1976 statute, there is evidence of direct application of the stipulations stated in Paris Convention to fill the gaps in the Mexican statute, but none of the published decisions refer to well-known trademarks.

On June 16, 2005, the Federal Congress amended the Industrial Property Law to introduce important modifications to the provisions regarding the protection of well-known trademarks.

Before the amendment, there were two ways a trademark could be acknowledged as well-known in Mexico:

a) If the Instituto Mexicano de la Propiedad Industrial or Mexican Patent and Trademark Office (MPTO) rejected a trademark application, arguing that it was identical or confusingly similar to a well-known trademark, and it could cause confusion among the consumers about the origin of the products or services covered by the trademark application.

Given the lack of opposition procedure in Mexico against trademark applications, in this sort of case, the holder of the well-known trademark has little (if any) involvement in the acknowledgement of its trademark as well-known, and sometimes it may not even been aware that the trademark was acknowledged as well-known in Mexico.

b) If the MPTO cancelled a trademark registration, or issued a trademark infringement decision, as a consequence of a cancellation action or administrative infringement action filed by the owner of the well-known trademark, in which the fact that the trademark was well-known was claimed by the owners as the cause of cancellation or infringement.

The decisions issued by the MPTO were not binding (the MPTO could change its mind in a future case), and there was no list or special publication showing what trademarks have been acknowledged as well known.

Nevertheless, the only way a trademark owner could proactively seek the acknowledgement of a trademark as well-known in Mexico was starting a cancellation or infringement action with the MPTO. The trademark owner had the burden of proving that its trademark was well-known every time it started a trial.

The amendments to the Industrial Property Law enacted in 2005 intended to enhance and clarify the protection of well-known trademarks:

(1) Well-known and Famous Trademarks.

The statute now stipulates a distinction between “well-known” and “famous” trademarks.

The main difference is that a “well-known” trademark may bar future applicants from registering an identical or confusingly similar trademark, no matter the class, if such applied trademark may create confusion among the consumers about the source or characteristics of the product or service, or may be regarded as an unfair use of the goodwill associated to the well-known trademark, or may jeopardize the reputation of the well-known trademark.

The “famous” trademark would bar future applicants from registering an identical or confusingly similar trademark for any class of product or service, without having to justify that there would be a risk of confusing or misleading the consumers, or that there would be a risk of unfair use of the famous mark’s goodwill or of harming the reputation of the famous mark.

If the MPTO incorrectly issues the registration of a trademark identical or confusingly similar to a well-known or famous trademark, the owner of the well-known of famous trademark may file a cancellation action.

However, the lawmakers failed to amend the provisions regarding trademark infringement. Odd enough, only the imitation of a well-known trademark is explicitly regarded as a cause if infringement.

(2) Ad-hoc acknowledgement of Well-known and Famous Trademarks

As explained above, before the 2005 amendment, the only way a trademark owner could actively get the acknowledgement of a trademark as well-known was by filing a trademark infringement or cancellation action, and claiming the illegal imitation of a well-known trademark as cause of cancellation or infringement.

Now, in addition to the recognition that a trademark is well-known or famous as a result of a cancellation or infringement action, the law stipulates an ad-hoc procedure and publication to acknowledge a trademark as well-known of famous.

The ad-hoc acknowledgement is valid for five years, and may be renewed (the statute uses the word “update”) for additional five-year terms if the owner proves that the trademark continues being famous or well-known.

The statute provides a quite exhaustive list of evidence that the applicant must file with the MPTO to obtain the well-known of famous acknowledgment.

If a third party believes that the acknowledgement of a trademark as well-known or famous was incorrect or illegal, it may challenge its validity by filing an invalidation action with the MPTO.

Three years later

Three years later, the first acknowledgement of a trademark as well-known or famous as a result of the ad-hoc procedure has no been issued yet.

Actually, during a conference that took place on March 2008, the MPTO accepted that it has received less than five applications for the ad-hoc acknowledgement of a trademark as well-known or famous since the amendment was enacted in 2005.

It is important to say that although the law was amended in 2005, the MPTO published the government fee for the ad-hoc acknowledgement of trademarks as well-known and famous on September 13, 2007; all the applications filed between June 17, 2005 and September 13, 2007, were put on hold, pending of the publication of the government fee.

It does not mean that there have not been decisions acknowledging trademarks as well-known or famous in Mexico in the last three years, but all those decisions have been related to cancellation or infringement actions, not to the ad-hoc procedure.

The main reasons for the lack of success of the ad-hoc procedure for the acknowledgement of a trademark as well-known or famous in Mexico are the following:

a. Burden of proof.

In spite of the opinion of some trademark lawyers, who argue that if a trademark is well-known or famous, it should not require much evidence to prove it, the practice in Mexico has been that it requires a considerable amount of evidence proving that a trademark is well-known (or famous).

In the case of the ad-hoc procedure, the statute provides an exhaustive, non-limitative, checklist of required evidence to prove that a trademark is well-known or famous in Mexico:

i. Identification of the sector of the market integrated by the actual or potential consumers that are familiar with the applicant’s trademark and the products or services it identifies, supported by surveys, market studies or any other source of information not prohibited by the law.

ii. Identification of other sectors different from the potential or actual consumers that would be familiar with the applicant’s trademark and the products or services it identifies, supported by surveys, market studies or any other source of information not prohibited by the law.

iii. Information about the commercial circles integrated by merchants, manufacturers or service providers related with the goods or products identified with the applicant’s mark that would be familiar with the products and services it identifies, supported by surveys, market studies or any other source of information not prohibited by the law.

iv. Information about the date of commencement of use of the applicant’s trademark in Mexico and abroad.

v. Information about the time the applicant has continuously used the trademark in Mexico and abroad, if applicable.

vi. Information about the commercialization channels of the goods/services identified wit the applicant’s trademark in Mexico and abroad, if applicable.

vii. Information about the media used to promote the applicant’s trademark in Mexico and abroad, if applicable.

viii. Information about the time the applicant has actually advertised the trademark in Mexico and abroad, if applicable.

ix. Reports about the advertising and promotion investment associated with the mark in the three years prior to the filing date of the application for acknowledgment that the trademark is well-known of famous in Mexico.

x. Information about the geographic area of actual influence of the applicant’s trademark.

xi. Reports about the income associated to the services identified with the applicant’s trademark at least in the last three years.

xii. Information about the economic value of the mark, as stated in the assets statement of the applicant or according to a valuation of the mark.

xiii. The Mexican and foreign trademark registrations for the applicant’s mark.

xiv. The franchises and licenses executed involving the applicant’s trademark, if any.

xv. The market share of the applicant’s trademark.

The MPTO has decided, so far, that the applicant must file all the above-stated documents in order to allow the MPTO reviewing the merits of the ad-hoc application.

As a consequence, most trademark owners have found that it is impossible, or unpractical, gathering all the above data and documents, resulting in an extremely low number of applications for the well-known or famous ad-hoc acknowledgement.

b. Limited benefits

There is some uncertainty about the actual benefits from obtaining the ad-hoc acknowledgement of a trademark as well-known or famous.

There is no doubt that a trademark acknowledged as well-known through the ad-hoc procedure would block third party’s trademark applications for certain classes stated in the ad-hoc publication and the famous ad-hoc acknowledgement would block future trademark applicants in all International Classes.

On he other hand, the use without authorization of a well-known trademark, by itself, is a cause of administrative infringement. However, the imitation of a famous trademark, by itself, does not give an explicit cause of administrative infringement; the trademark owner may claim benefit from the provisions against unfair competition, but that does not seem good enough, considering how burdensome was to get the ad-hoc acknowledgement of the trademark as famous.

It is also unclear whether, in an infringement case due unauthorized use of a well-known trademark, if the prior ad-hoc acknowledgement would be enough or if it would be necessary to prove that the trademark is well-known in trademark all over again.

c. Costs

The preparation of the application and evidence for the ad-hoc acknowledgement of a trademark as well-known or famous is very expensive.

The government fee for the acknowledgement of a trademark as well-known is relatively low (about $300.00 USD for the application plus $125.00 USD per International Class where the trademark is regarded as well-known).

However, for the famous trademark ad-hoc acknowledgment, and the renewal or “update”, the government fee is very high (about $300.00 USD for the application plus $5,000.00 USD for the ad-hoc acknowledgment and $5,600.00 USD for the renewal or “update”).

Given the lack of success, and confidence, in the ad-hoc procedure for the acknowledgement of trademarks as well-known and famous in Mexico, litigation continues being the only actual option to obtain the official recognition of a trademark as well-known or famous.

Update September 2010: The MPTO have acknowledged some trademarks as well-known or famous through the ad-hoc procedure explained in this post. The list is available here.

Update March 2013: An updated list of trademarks acknowledged as well-known or famous, through the ad-hoc procedure, until January 2013 is available here.