In a globalized world, trademarks transcend borders. Products and services which were once only available on the local market have now acquired a global perspective.
Trademark holders that have achieved a certain degree of prestige among consumers should do their utmost to protect their trademarks, availing themselves of all accessibly legal mechanisms to preserve their sustained market value and ensure they continue to yield the expected profit.
Hence there is a need to grant special and extended protection to brands which are famous and well-known by the consumer.
In view of the relevance of these brands, Mexican legislation has established a process to declare a trademark as famous or well-known and offer a raft of important advantages, most notably:
- Extended protection compared to ordinary trademark registration. In the case of the well-known trademark, the declaration considers the trademark is known by the entire commercial sector it targets. In the case of famous trademark, the declaration considers the trademark is known by all, or almost all, of the consumers beyond specific targets or commercial sectors.
- Since a single declaration is issued granting specific protection for certain types of products/services (well-known) or widespread protection (famous), the applicant can make the declaration stand against third parties and/or to his/her interest whenever he/she needs to accredit that the trademark is well-known or famous.
- Protection for trademark holders that are in possession of a declaration of well-known or famous trademark against third parties. Bolstering the rights of holders in possession of the aforementioned declaration will discourage third parties from undertaking unfair practices and/or from using or creating similar trademarks that could violate their rights.
- The opportunity to avoid the well-known or famous trademark to become generic, since third parties will find it impossible to register trademarks that are not only identical but also similar in a specific product type (well-known) or all product types (famous).
- Increased economic and commercial value of the trademark. The declaration reaffirms its prestige and grants the holder the opportunity to use the declaration as positive marketing.
The declaration of well-known or famous trademark in Mexico is processed by the Mexican Institute of Industrial Property, which decides whether or not it is granted based on the evidence provided, after verifying it complies with legal requirements, including the prerequisite that the trademark should already be registered in Mexico for the products or services that made it well-known or famous.
The declaration of well-known or famous trademark has a duration of 5 years as of the date of issue and can be updated or renewed as long as the same conditions exist.
Companies are increasingly resorting to the declaration given the advantages it offers. BARCEL, ANDREA Y DISEÑO, PRITT Y HOTELES CITY EXPRESS, amongst others, have been declared well-known trademarks, and CINEPOLIS, BIMBO, PEMEX, PEPSI Y BMW, amongst others, have been recognised as famous trademarks.
A number of other trademarks are eligible to request consideration and protection as well-known or famous trademarks in Mexico.
The declaration provides them with an excellent opportunity to obtain official recognition for their position and all the possible advantages and benefits.