Trademark Enforcement In Mexico

In Mexico trademark rights are enforced mainly through the Trademark Office. The enforcement of famous and notorious marks is governed by specific rules

On June 16 2005 the Mexican Law of Industrial Property (LIP) was amended to improve the protection afforded to notorious and famous trademarks. The reform introduced a distinction between 'famous marks' and 'notorious marks' to reflect the fact that the public has a greater knowledge of some well-known marks than others. Under the LIP, trademarks that are well known throughout Mexico are considered 'famous marks' and enjoy a greater degree of protection than 'notorious marks', which are well known to a limited group of people.

Notorious marks

One of the most important aspects of the reform was the inclusion of the following concepts:

dilution of a notorious trademark (Article 90(XV) of the LIP); tarnishment of a notorious trademark; and protection against taking unauthorized advantage of the notoriety of a trademark. The current text of Article 90(XV) sets out the grounds for the Trademark Office (TO) to refuse to register a denomination, design or three-dimensional form with regard to any product or service, when the sign is identical or similar to a trademark that the TO estimates to be, or has declared, a notorious trademark in Mexico.

Registration of the junior sign will be rejected if there is a risk that it may:

create confusion or a risk of association with the owner of a notorious mark; constitute an attempt to profit, without authorization, from the notoriety of a trademark (by free-riding on its reputation); tarnish a notorious trademark; or dilute the distinctive character of a notorious trademark. Specifically with regard to notorious trademarks, Article 213(VII) provides hat an administrative infringement exists when a third party uses without authorization a trademark that is regarded as notorious under the terms of Article 90(XV) of the LIP. Consequently, for the owner of a notorious mark in Mexico to enforce its rights against a third party that uses, without authorization, a mark that is identical or confusingly similar to the earlier sign, the TO must find that at least one of the above four mentioned situations exists (ie, confusion/association, unauthorized use, tarnishment or dilution).

Evidence

When filing a claim for infringement of a notorious trademark, the plaintiff should submit suitable evidence that at least one of the above four situations exists. This is...