In my earlier posts Revisiting the Protection of Well-Known and Famous Trademarks in Mexico and  Registered trademarks acknowledged as well-known or famous in Mexico through the ad-hoc procedure, I explained that there are three ways for a trademark to be acknowledged as well-known or famous in Mexico:

a. The ad hoc procedure provided in section 98 Bis-1 of the Industrial Property Law, as amended in 2005. This procedure is available only for trademarks already registered in Mexico for the goods or services associated to the reputation of the mark.

b. Through an explicit acknowledgement of the Mexican Patent and Trademark Office (MPTO) when deciding the final rejection of a trademark application on the grounds that the applied trademark is identical or confusingly similar to well-known or famous trademark, in opinion of the examiner.

c. When the MPTO decides an infringement or invalidation action where the invalidation or infringement decision was a consequence that the plaintiff’s trademark registration was acknowledged as well-know or famous in Mexico.

In other earlier posts I explained some of the ups and downs of the current system to protect well-known and famous marks in Mexico, with a special focus on the ad hoc system provided in section 98 Bis 1 of the Industrial Property Law.

The following is a list updated to January 31, 2013 of the trademarks acknowledged as well-known and famous in Mexico through the ad hoc procedure stipulated in section 98 Bis 1 of the Industrial Property Law.

I MUST INSIST THAT THIS IS NOT A LIMITATIVE LIST. There are trademarks that have also been declared as well-known (and probably famous too) in Mexico that do not appear in the list because the acknowledgement was not the result of the ad hoc procedure, but of an invalidation or infringement action, so there was not special publication about this circumstance in the Official Gazette.

Any person interested in reviewing the decisions issued by the MPTO acknowledging a trademark by means of the ad hoc procedure and get detailed information may obtain them from the Official Gazette, Section of Protection of the Intellectual Property, downloadable from the SIGA database of the MPTO.

The first trademark acknowledged as well-known through the ad hoc procedure was “ANDREA”. That acknowledgement will expire on 2013. It will be interesting knowing if the owner of the trademark “ANDREA” will be interested in keeping the acknowledgment by filing a renew or “update”, in which the owner would have to demonstrate that the conditions that allowed the acknowledgement of the trademark as well-known continue.

FAMOUS TRADEMARKS (Ad hoc procedure until January 31, 2013)

Trademark: “CINEPOLIS”
Date of decision: November 20, 2009
Decision No.: 25663
Official Gazette issue: December 2009

Trademark: “RED BULL”
Date of decision: February 19, 2010
Decision No.: 3248
Official Gazette issue: April 2010

Trademark: “GANSITO”
Date of decision: March 12, 2010
Decision No.: 5224
Official Gazette issue: March, 2010

Trademark: “MARINELA”
Date of decision: March 12, 2010
Decision No.: 5223
Official Gazette issue: March, 2010

Trademark: “BIMBO”
Date of decision: April 23, 2010
Decision No.: 8830
Official Gazette issue: April, 2010

Trademark: “INTEL”
Date of decision: August 23, 2010
Decision No.: 19407
Official Gazette issue: August, 2010

Trademark: “HARMON HALL” & Design
Date of decision: September 3, 2010
Decision No.: 20422
Official Gazette issue: September, 2010

Trademark: “BMW” & Design
Date of decision: September 14, 2010
Decision No.: 21484
Official Gazette issue: September, 2010

Trademark: “JOSE CUERVO”
Date of decision: September 10, 2010
Decision No.: 21086
Official Gazette issue: September, 2010

Trademark: “MICROSOFT”
Date of decision: November 10, 2010
Decision No.: 26121
Official Gazette issue: November, 2010

Trademark: “FLEXI” & Design
Date of decision: December 7, 2010
Decision No.: 28262
Official Gazette issue: December, 2010

Trademark: “PEPSI”
Date of decision: March 29, 2011
Decision No.: 7154
Official Gazette issue: March, 2011

Trademark: “BARDAHL”
Date of decision: April 15, 2011
Decision No.: 9079
Official Gazette issue: April, 2011

Trademark: “PEMEX”
Date of decision: May 27, 2011
Decision No.: 12540
Official Gazette issue: May, 2011

Trademark: DRAWING (REDBULL bull drawing)
Date of decision: February 28, 2012
Decision No.: 5075
Official Gazette issue: February, 2012

Trademark: “TAKIS”
Date of decision: March 16, 2010
Decision No.: 7297
Official Gazette issue: March, 2012

Trademark: “YAHOO”
Date of decision: May 31, 2012
Decision No.: 14927
Official Gazette issue: May, 2012

Trademark: “COHIBA”
Date of decision: July 20, 2011
Decision No.: 20218
Official Gazette issue: July, 2012

Trademark: “TELEVISA”
Date of decision: August 31, 2012
Decision No.: 26648
Official Gazette issue: August, 2012

Trademark: “SOY TOTALMENTE”
Date of decision: September 28, 2012
Decision No.: 27900
Official Gazette issue: September, 2012

Trademark: “EL PALACIO DE HIERRO” & Design
Date of decision: September 28, 2012
Decision No.: 27901
Official Gazette issue: September, 2012

Trademark: “GANDHI”
Date of decision: October 31, 2012
Decision No.: 31277
Official Gazette issue: October, 2012

Trademark: DRAWING (BATMAN bat drawing)
Date of decision: November 30, 2012
Decision No.: 34417
Official Gazette issue: November, 2012

Trademark: “BATMAN”
Date of decision: November 30, 2012
Decision No.: 34418
Official Gazette issue: November, 2012

Trademark: “SUPERMAN” & Design
Date of decision: December 19, 2012
Decision No.: 37122
Official Gazette issue: December, 2012

Trademark “S” & Design (SUPERMAN S drawing)
Date of decision: 31 de January de 2013
Decision No.: 2665
Official Gazette issue: January 2013

WELL-KNOWN TRADEMARKS (Ad hoc procedure until January 31, 2013)

Trademark: “ANDREA”
Date of decision: November 4, 2008
Decision No.: 22721
Official Gazette issue: May, 2009

Trademark: “PRITT”
Date of decision: June 30, 2010
Decision No.: 14716
Official Gazette issue: June, 2010

Trademark: “BARCEL”
Date of decision: March 22, 2010
Decision No.: 5786
Official Gazette issue: March, 2010

Trademark: “RICOLINO”
Date of decision: April 5, 2010
Decision No.: 6972
Official Gazette issue: April, 2010

Trademark: “RESISTOL”
Date of decision: September 28, 2010
Decision No.: 22372
Official Gazette issue: September, 2010

Trademark: “LAS MOMIAS DE GUANAJUATO”
Date of decision: December, 2010
Decision No.: 28263
Official Gazette issue: December, 2010

Trademark: “HOTELES CITY EXPRESS”
Date of decision: December 21, 2010
Decision No.: 30046
Official Gazette issue: December, 2010

Trademark: “ADO”
Date of decision: May 31, 2011
Decision No.: 12869
Official Gazette issue: May, 2011/

Trademark: “ELEKTRA”
Date of decision: July 29, 2011
Decision No.: 18926
Official Gazette issue: July, 2011

Trademark: “SUPER PRECIO”
Date of decision: November 18, 2011
Decision No.: 29373
Official Gazette issue: November, 2011

Trademark: “PAYASO”
Date of decision: December 16, 2011
Decision No.: 33028
Official Gazette issue: December, 2011

Trademark: “CORONADO”
Date of decision: February 9, 2012
Decision No.: 3277
Official Gazette issue: February, 2012

Trademark: “MELATE”
Date of decision: October 31, 2012
Decision No.: 31280
Official Gazette issue: October, 2012