Famous trademarks in Mexico: what they are and how to obtain them

Preface  

The Federal Law for the Protection of Industrial Property provides two situations of recognition for trademarks. 

According to composition 190, a trademark will be understood to be" well given" in Mexico when a certain sector of the Mexican public or Mexican marketable circles is apprehensive of the trademark due to marketable conditioning carried out in Mexico or abroad by a person that uses similar trademark in connection with its products or services; or 

 as a consequence of the creation or advertising of similar trademark. 

Secondly, it will be understood that a trademark is "famous" in Mexico when it is known by most of the consuming public, or when it is diffused or recognised in global commerce.

A famous trademark thus acquires great recognition, to the extent that most of the consuming public can identify it, regardless of race, gender, age, socioeconomic level or geographic area.

Some famous trademarks in Mexico include:

ELEKTRA;

ITALIKA;

EXA;

BRIDGESTONE;

FIRESTONE;

RED BULL;

CINEPOLIS;

BIMBO; and

EL PALACIO DE HIERRO.

Background  

When the procedure to gain a protestation of fame was enforced in 2005, it was veritably complex and needed the donation of a lot of information and attestation that, in numerous cases, was veritably delicate to gain. Trademark possessors were occasionally reticent to submit sensitive and nonpublic information, similar as fiscal statements or deals reports, considering that the information submitted is considered public. lately, the procedure has come less complex and the conditions for proving fame or notoriety have come more flexible. Trademark possessors may indeed request that the Mexican Institute of Industrial Property( IMPI) keeps certain information nonpublic and, thus, that similar information isn't included in the sanctioned train. 

Procedure 

 According to recent professional practice, in order to gain a protestation of fame, it's necessary to give details of  the factual or implicit consumers who identify the trademark with the products or services it covers, grounded on a check, request study or any other means permitted by law; 

 other sectors of the public( ie, not factual or implicit consumers) who identify the trademark with the products or services it covers, grounded on a check, request study or any other means permitted by law; 

 the marketable circles – made up of merchandisers, industrialists or service providers relating to the kidney of goods or services – who identify the trademark with the goods or services it covers, grounded on a check, request study or any other means permitted by law; 

 the date of first use, the time of nonstop use and the time of effective advertising of the trademark in Mexico and, in certain cases, abroad 

 the marketing channels in Mexico and, in certain cases, abroad 

 how the trademark has been broadcast in Mexico and, in certain cases, abroad 

 the licences or votes that have been granted in connection with the trademark; and 

 the chance of participation of the trademark in the corresponding sector or member of the request. 

 In order to gain a protestation of fame, it's judicious to seek the advice of an expert in the matter. 

Advantages
The main advantage of carrying a protestation that a trademark is notorious is that the IMPI'll not permit the enrollment of trademarks applied for by third parties that are analogous or identical to the notorious trademark in any of the 45 classes( ie, for any product or service, anyhow of whether it's related to the main business exertion). With a protestation of fame, the trademark is averted from getting general, since third parties would not be suitable to gain the enrollment of trademarks that are identical or analogous. 
 
 Another advantage of carrying a protestation of fame is that it'll enable its proprietor to initiate legal conduct against any third party that intends to use the trademark to identify any product or service. The protestation of fame is a clear recognition by the state of the significance of the trademark in Mexico, as well as of the rights of its proprietor; thus, trademarks considered as notorious will have special attention not only from the trademark authorities, but also from customs authorities and indeed from the attorney general's Office. It's important to note that one of the advantages of the protestation of fame is that it constitutes substantiation in executive action proceedings. 
 
 An fresh advantage is that, with a protestation of fame in Mexico, it's possible to demonstrate in other countries the recognition of the trademark by consumers and its applicability within the business conditioning to which it belongs, which increases the value of the trademark. It also promotes the protection of IP rights as a visionary result to help third parties acting in bad faith or opportunism from trying to take advantage of the prestige of the trademark to cover other products or services. 



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