WELL-KNOWN AND/OR FAMOUS TRADEMARKS IN MEXICO
HOW TO OBTAIN A DECLARATION OF WELL-KNOWN OR FAMOUS TRADEMARK

COMMENTS

The Mexican Law on Industrial Property has been amended. A Chapter II bis has been added and named: WELL-KNOWN OR FAMOUS TRADEMARKS, Paragraphs III, and X of Article 6 and Paragraph XV of Article 90 have been changed, and paragraph XVbis has been added to Article 90. With these amendments individuals as well as national and international corporations are able to obtain a “Declaration of Well-known or Famous Trademark”.
The Mexican Congress approved the amendments, which came into force and effect on June 17, 2005.

These are my personal comments regarding this situation, and the same have been disclosed in a forum and before the Mexican Institute of Industrial Property when these amendments were still a project. My comments have also been published in MARCASUR.COM (www.marcasur.com/opinion).

My comments are as follows:

I personally believe that leaving in the hands of the authorities the decision of declaring the status of well-known or famous trademark is arbitrary (please note the use of the conjunction “or”). To declare that a trademark is a well-known trademark is not easy, but we may say that such a thing may be declared when the trademark has been advertised at a determined market scope, however, to declare that a trademark is famous is another thing, and it is much more complicated even reckless. In doing so, the authority would require experts in advertisement, marketing, and with knowledge of the international and national markets, etc. Moreover, I cannot say what the advantages of obtaining said declaration of well-known or famous trademark are, at least the applicable law does not show any.

There are many interesting things and cases ahead of us but first let's analyze what the meaning of famous and well-known is, in order to compare and comment on that. It should be noted that anyone is invited to obtain the declaration of well-known or famous trademark, but the advantages and the costs are not clear. The Regulations have not been amended yet, so we will use the current Regulations for this quick exercise, but eventually the Regulations will need to be amended as well, time will tell. For the time being and, in order to start discussing our subject matter, let's analyze a simple definition of what is famous and what is well-known.

FAMOUS: Known about by many people.

WELL-KNOWN: 1. Known about by a lot of people; 2. generally known and accepted.
OXFORD Advanced Learner’s Dictionary, Oxford University Press, 2000.

FAMOUS: 1a. much talked about, well-known. b. honored for achievement, celebrated. c. discreditably renowned, notorious. 2. common, usual (taking the word... in its most famous signification). –John Lewis. 3. excellent, first-rate.

WELL-KNOWN: Fully known: as a: widely known: generally acknowledged: known to many. b: closely intimately, or thoroughly known.
Webster’s Third New International Dictionary, Merrian Webster Inc., 1986

From the above, if the Authority issues a Declaration of Famous Trademark, of course that would not be a problem if we are talking about trademarks like COCA COLA, PEPSI, IBM, NIKE, and maybe hundreds of others; but then, if a trademark is FAMOUS that means it is also WELL-KNOWN. However, if a trademark is WELL-KNOWN it does not necessarily mean it is also FAMOUS. Or it is FAMOUS and WELL-KNOWN and I just don’t know it, or is it WELL-KNOWN and therefore FAMOUS or what?
How is the decision to be made? Under which criteria will the Mexican Institute of Industrial Property act? Who will sign the Declaration of Well-known or Famous Trademark?
There are so many questions in the air, many of which have already been asked to the authorities, but there are no answers. The people who proposed and made the amendment apparently did not have much experience, or the amendment just seemed like a “good idea”. It would be interesting to know, in comparative law, how many countries all over the world have this kind of declarations.
The people, let's call them Congressmen, who made the amendment did not know what they were doing. My guess is that inexperienced and unprepared people did the amendment whether they had the authorization to do so or not, and now the Mexican Institute of Industrial Property has to straighten things out. I can see a bunch of petitions for this declarations of well-known or famous trademark coming from big, medium and small firms and businesses, which will be packed with attached documents, photographs, oaths, and so on, urging the Mexican Institute of Industrial Property to issue a resolution. What started as a fairy tale with a happy ending, will become, something very problematic in the future and it will risk the security of the trademarks, the people’s trust and the consumer’s safety. The Authority’s duty of taking care of the consumer will diminish, many people will get confused trying to figure out which trademark they should buy: the correct, the well-known or the famous trademark. And we also have to analyze if a well-known or famous trademark means good quality, or if is a mere declaration of the Authority. This thing will go on and on and will never end if we keep thinking this way. The only sure thing is that it will not have a happy ending.
I see myself filing a petition for a Declaration of Well-known or Famous trademark, of course I will make sure to meet all the legal requirements, and in doing so I will meticulously try to guess if I should ask for a Declaration of Well-known Trademark or for a Famous Trademark. Up to now, I still don’t know how to tell the difference, I hope the Authority does and will tell us when the time is right.

What do you get from being granted a Declaration of Well-known or Famous Trademark? Why said Declaration of Well-known or Famous trademark has a validity of 5 years? Is it because the status of being well known or famous ends at a certain moment? I'm sure my clients have more questions than me, but maybe some other day, when the Regulations are amended, I will write another article. At that time, we will surely know how much we shall pay to obtain a Declaration of Well-known or Famous Trademark, if it will be cheap or expensive, who will be the first in filing a petition for this declaration. Wouldn’t it be better to regulate “certification trademarks”? So, maybe, in the future, if I’m still alive, I will write ….”What happened on June 2005 and its consequences”… I’m sure that will result in other comments; I'm sure of that.

In order to get a Declaration of Well-known or Famous Trademark from the Mexican Institute of Industrial Property, the requestor should comply with certain requirements, many of which involve big expenses, which I'm sure many businesses are not willing to pay.

The requestor should provide, among other things, the following information (article 98 bis 2):

1- Information about real or potential consumers of the trademark who can identify it with the products or services covered by it, obtained from opinion polls, market research studies or in any other lawful way.
2- Information about people other than real or potential consumers who can identify the trademark with the goods or services covered by it (based on an opinion poll, market research study or in any other lawful way).
3- Information about the commercial circles consisting of traders, industrialists, or service providers associated to that kind of goods or services; who can identify the trademark with the goods or services covered by it, based on an opinion poll, market research study or in any other lawful way.
4- The date when the trademark was used for the first time in Mexico and, if applicable, abroad.
5- The period of time in which the trademark has been continuously used in Mexico or, if applicable, abroad.
6- Commercialization channels of the trademark in Mexico or, if applicable, abroad.
7- Diffusion media of the trademark in Mexico or, if applicable, abroad.
8- Effective advertising time for the trademark in Mexico or, if applicable, abroad.
9- Information about the investment made to advertise or promote the trademark in Mexico or, if applicable, abroad in the last three years.
10- Geographic area where the trademark has an effective influence.
11- Sales volume of the goods or detail of the profits earned from providing the services protected by the trademark, during the last three years.
12- Money value of the trademark in the net equity of the holder or based on an appraisal of the trademark.
13- Trademark Registration Certificates in Mexico or abroad.
14- Information about the franchises and licenses granted in relation with the trademark.
15- Percentage of market participation of the trademark in any given market.

After complying with these requirements, the Mexican Institute of Industrial Property is very likely to deny the Declaration of Well-known or Famous Trademark. On the other hand, any interested third-party may contest the Certificate of Declaration arguing that the holder did not comply with the 15 requirements indicated by the Law; moreover, any interested third-party may contest the Certificate of Declaration on the grounds that the trademark is not Well-known or famous, if said Certificate has been given.

So far, no one has applied for a Declaration of Well-known or Famous Trademark, since the Official Fees and the Regulations of the Law have not been amended. As you may see, there is a something missing in the law, which does not allow to apply for a Declaration of Well-known or Famous Trademark in the name of the interested party.

The purpose of granting Certificates of Notorious or Famous Trademarks is to provide additional protection to the trademarks used in Mexico or abroad and more specifically to avoid the dilution, which means the possibility of the trademark to loose prestige due to inconvenient use even if it is used in different classes.

This kind of Certificate is innovative, since we have no evidence that it exists in other countries, as we mentioned before. Nonetheless, we honestly believe that really well-known trademarks as COCA COLA, NIKE, etc, do not need this kind of protection; for instead of finding an additional protection in these Certificates, mala fide third parties could try to obtain the voidance of said certificates, and jeopardize a trademark that is famous and notorious per se and jure de jure.

Furthermore, the effective term of the Certificates will be 5 (five) years as of the issuance date of the declaration and thereafter the declaration may be revalidated for the same period of time provided that the requestor complies with the abovementioned requirements again, and of course the costs will be more expensive every day.

Finally, the Trademark Office does not have the qualified personnel it needs to review all the information required (experts in marketing, in opinion polls, etc) or a department that is specifically in charge of this innovative protection system.

Since there is no background or comparative law regarding this matter, everything will be new and subject to new criteria which, will hopefully be efficient, honest and professional in order to guarantee the presence of Mexico in the Industrial Property international scope.

.