Over time, distinctive signs —particularly trademarks— have gained increasing importance and value in both the economic market and the law. Companies, large and small, invest more in consolidating their trademark portfolio: a well-positioned registration not only distinguishes goods or services from competitors but can also constitute per se a monetary value of great importance. Think of brands such as Apple: the mere name evokes technology, phones, and computers of a specific business origin and quality; the brand alone constitutes an intangible of significant economic and social value.
In the marketplace, some trademarks —due to their impact on consumers over the years— become signs known to the majority. The Ley Federal de Protección a la Propiedad Industrial (LFPPI) calls these famous trademarks and well-known trademarks, differentiated by the level of popularity or market impact. Given their importance and value, they are granted greater “shielding” than other marks, since they are highly susceptible to unfair competition and even criminal acts such as counterfeiting.
What is a famous or well-known trademark and what are the differences?
Both are distinctive signs with above-average recognition. They differ by the scope of that recognition:
- Famous: known to the majority of consumers, both within and outside their economic sector.
- Well-known: known within a specific economic sector —the one in which their goods or services are marketed—.
How to obtain recognition? Declaration vs. estimation
The LFPPI provides two paths: (i) declaration and (ii) estimation, with different effects.
(i) Declaration
Requested by free-form writ before IMPI, supported by evidence showing that the mark is known to the majority of consumers (fame) or to a relevant portion of its sector (well-known status): market studies, commercialization channels, market share, among others.
IMPI may: (i) issue a preventative notice if there are deficiencies (curable); (ii) deny the declaration due to insufficient evidence; or (iii) grant the declaration. Either way, the resolution is published in the Gazette (SIGA platform).
(ii) Estimation
Requested by writ within any motion filed in an ongoing proceeding —for instance, opposition proceedings—. It can be mentioned in the same filing, without the need to submit extensive evidence. IMPI has discretionary power to estimate a mark as famous or well-known without additional evidence, but must provide reasoning for its decision.
Scope of protection
When a mark is declared famous or well-known, it obtains protection across the 45 classes of the International Classification of Goods and Services (Clasniza). Given the recognition, any other identical or confusingly similar marks —even in different goods or services— are blocked from registration.
With an estimation, protection covers only the proceeding in which it was requested; elsewhere it may serve as a relevant precedent but does not carry the same weight.
Duration
The conditions that gave rise to a declaration or its updates subsist for 5 years from issuance, renewable for equal periods provided that the underlying conditions persist. Estimations, by contrast, last only for the duration of the proceeding in which they were granted.
Conclusion
Obtaining a declaration is a major benefit: in addition to full protection across the 45 classes, it increases the economic and commercial value of the trademark, brings market prestige, and prevents the name or design from becoming generic.