Presented at AIPPI Boston 2008

1. Famous and Notorious
Trademarks in Mexico
Luis Burgueño
AIPPI Boston 2008

2. Introduction
• Mexico’s Industrial Property Act (IPA)
recognized notorious trademarks since 1993
• In 2005, the IPA was amended to further
recognize and regulate notorious and famous
marks
• Significantly, a procedure was established to
obtain a declaration of notoriety or fame in
advance to any litigation or proceeding
• Protection of notorious and (newly
introduced) famous trademarks was clarified
and extended

3. Notorious Marks Pre-2005 Reform
• Legal framework:
– Paris Convention 6-Bis
– NAFTA 1508
– IPA art. 90(XV)
– Gucci case precedents

4. Principles
• Consisted in knowledge by a sector of the public
or the “commercial circles” of Mexico
• Resulted from use or promotion in Mexico or
abroad
• Trademarks “equal or similar” to a notorious
trademarks could not be registered nor used
• Did not require trademark registration in Mexico
(Gucci precedent)
• Protection afforded across classes – no
specificity principle
• Notoriety could be proven by any available
means

5. Declaration of Notoriety
• The IPA did not expressly authorized IMPI to
issue declarations of notoriety
• IMPI still issued them based on general
principles of IPA, administrative law and Paris
Convention
• Most often granted in the context of litigation, but
occassionaly as precautionary or preparatory
measure
• No specific requirements were established -
prove by any means
• Notoriety declaration covered all classes

6. The 2005 Reform
• Lobbied by trademark owners and IP legal
practicioners
• Key Features:
– Recognizes both notorious and famous
trademarks
– Extends protection beyond likelihood of
confusion
– IMPI is now authorized to process, issue and
publish declarations of notoriety or fame of
trademarks

7. Famous and Notorious Marks
• Notoriously known trademarks are:
– Known by a “particular sector of the public or of the
commercial circles of the country”
• What is a valid definition of a sector of the public?
– As a result of
• Use of the trademark
• Promotion or publicity of the trademark
• in Mexico or abroad
• Famous marks are known by “majority of
consumers” in general
– What consumers?
• Actual of the protected product/service, potential, all…

8. Effects and Scope of Protection
• Notoriety protects against
– other marks, whether word-only, design or 3D
– That are equal or similar to a notorious mark and
– That may:
• Create confusion or risk of association with the mark owner
• Constitute an unauthorized exploitation of the mark
• Cause discredit or disparagement to the mark
• Dilute the distinctive character of the mark
• Fame protects against other marks, whether word-only,
design or 3D that are equal or confusingly similar to a
famous mark
• Scope of protection:
– Infringing applications should be denied and if granted, nullified
– Unauthorized use of a mark that falls within these categories
constitutes trademark infringement

9. Declaration
• For the first time, Mexican IPA establishes a
procedure to obtain a declaration of notoriety or
fame
• Applies to any type of mark: word-only, design
and 3D
• Can be applied for at any time, independently
from litigation or proceeding
• No opposition procedure is established
• Registration in the relevant class is pre-requisite
for declaration of notoriety of fame – not for
protection

10. Requirements for Declaration
• Identify the trademark and the corresponding registration
number
• Identify the relevant group of consumers or commercial
circle in which the trademark is known, based on a poll
or market study or other means:
– Sector of the public made up of real or potential consumers that
identify the trademark with the products or services
– Sectors of the public other than real or potential consumers who
identify the trademark
– Commercial circles made up of merchants, industrials or service
providers related to the same type of products or services, who
identify the trademark with the products or services

11. Requirements for Declaration
• Other significant requirements:
– Date of first use and time of continuous use in Mexico and
abroad
– Channels of commercialization in Mexico and abroad
– Advertising and promotion investment during the last 3 years
– Geographic area of actual influence of the trademark
– Sales volume during the last 3 years and market share
– Economic valuation of the trademark
– Registrations of the trademark in Mexico and abroad
– Franchises and licenses that have been granted
– The market share of the trademark in the corresponding sector
or segment of the market
• All of them must be met, but no criteria for evaluation
• Payment of fees for analysis of application and granting
of declaration

12. Effects of Declaration
• Rebuttable presumption that notoriety or fame subsists
for 5 years from declaration
• During 5 years term – expedited process for denial of
infringing applications
• Pre-constitutes evidence of notoriety or fame
• Can be obtained in a “friendlier” context (i.e., no
opposition nor litigation)
– Opposite party carries the burden of challenging declaration
– Declaration can only be challenged (nullified) before IMPI on
limited grounds
• However, notoriety or fame can always be proven later,
though likely in a litigation context

13. Is It Worth It?
• Cost may be substantial
• Must be renewed every 5 years
• Declaration may be denied
• Fame and notoriety per se provide protection
otherwise not available (e.g. dilution)
• But obtaining declaration in non-litigation context
provides much more flexibility and strengthens
position in preparation for litigation
• Courts will test and refine IMPI criteria

14. Famous and Notorious
Trademarks in Mexico
Luis Burgueño
lburgueno@vwys.com.mx
AIPPI Boston 2008