• A mark is well-known if a given sector of the Mexican public or business circles is aware of the mark, as a result of business activities conducted in Mexico or abroad by the owner of the mark, or through advertising or promotion of the mark.

• A mark is famous if a majority of Mexican consumers are aware of the mark.

The owner of a famous or well known mark may apply to IMPI for a declaration of fame or notoriety.  A declaration of notoriety covers specific classes.  For example, IMPI may declare that the notoriety of a mark registered for pharmaceutical products in Class 5 extends to Classes 1 (chemicals), 3 (cosmetics and cleaning preparations), and 10 (medical apparatus).  A declaration of fame is not limited as to class.

To obtain a declaration of fame or notoriety, the trademark owner must provide IMPI with the following information and documents:

• Market studies or other evidence demonstrating the sector of the public or commercial circles that identify the mark with the goods or services protected by the mark.

• The date of first use of the mark in Mexico and abroad. ro.

• The period of time during which the mark has been continuously used in Mexico and abroad.

• The channels of trade in Mexico and abroad.

• The methods of distribution in Mexico and abroad.

• The period of time during which the mark has been advertised or promoted in Mexico and abroad.

• Advertising and promotional expenditures in Mexico and abroad during the past 3 years.

• The geographic extent of the use of the mark.

• Sales volume during the past 3 years.

• The economic value of the mark.

• Registrations for the mark in Mexico and abroad.

• Franchisees and licensees that use the mark.

• The market share enjoyed by the products and services offered under the mark.

The owner of a famous or well-known mark is not required to apply for a declaration. However, the declaration allows IMPI to consider the fame or notoriety of the mark when examining applications by third parties. This is particularly important in Mexico, given the absence of a formal opposition process.

If a mark is identical or similar to a mark previously declared to be well-known, IMPI will refuse registration if use of the mark is likely to:

• Create confusion or a risk of association;

• Constitute an unauthorized appropriation of the prior mark;

• Discredit the prior mark; or

• Dilute the distinctiveness of the prior mark.

The protection afforded to famous marks is even broader. IMPI must refuse registration if the applicant’s mark is identical or similar to the famous mark, regardless of the goods or services involved.

Ownership of a declaration of fame or notoriety may also have consequences in litigation, although this issue has not been fully explored by IMPI or the courts.  At the very least, the holder of the declaration is spared the burden of providing evidence of the fame or notoriety of its mark every time it files a new proceeding.

A declaration of fame or notoriety remains in effect for five years following the date of issuance.  The trademark owner may renew or “update” the declaration at any time by providing evidence that its mark continues to be famous or well-known.

Maintenance and renewal

A trademark registration is valid for 10 years from the date of the application and may be renewed indefinitely. To renew the mark, the registrant must state under oath that:

• The mark is being used in Mexico for at least one of the goods or services identified in the registration; and

• This use has not been interrupted for more than three consecutive years without “just cause”.

Exception:  if the mark is not in use on any of the listed goods or services, the registration may still be renewed if the trademark owner has registered and is using the same mark for other goods or services.

To ward off groundless nonuse cancellation claims, the registrant may file periodic declarations of use with IMPI (ideally, every three years following registration).  However, such declarations are not required by law.

Assignment and licensing

A registered mark or pending application may be assigned or licensed by written agreement. (Exception: collective marks may not be assigned).  The law does not require that licenses contain quality control provisions.

An assignment or license must be recorded with IMPI to be effective against third parties.  Use of a mark by a licensee does not inure to the benefit of the licensor unless the license has been recorded.

The Industrial Property Law contains no provisions regarding the assignment or licensing of unregistered marks.

Linkage

Linked registrations may not be assigned separately.  IMPI will link registrations if:

• The same party owns multiple registrations for the same mark, covering related goods or services; or

• The same party has registered different versions of a mark (e.g. a word mark in standard characters and stylized form) for identical or similar goods or services.

Notice of trademark registration

A party seeking administrative, civil or criminal remedies for trademark infringement or counterfeiting must show that its mark is used along with:

• The words “marca registrada” (“registered mark”);

• The abbreviation “M.R.”; or

• The symbol “®”.

In the absence of such notice, the trademark owner must show that it has made the public aware of its rights by other means.  For example, the registrant may publish a newspaper advertisement stating that it owns a registered mark.

The forms of notice listed above may only be used in connection with the goods or services for which the mark is registered.