MEXICO Law and Practice Contributed by: Victor Adames, Carlos Hernandez and Paola Becerril, Becerril, Coca & Becerril
• images, logos, and designs; • sounds, provided they can be represented graphi - cally (eg, musical jingles); • shapes and three-dimensional signs, including product designs or packaging; and • scents and holograms. Certain marks receive special protection – ie, the terms “OLYMPIC” and “RED CROSS” are safeguard - ed under international treaties and specific Mexican laws that prohibit their unauthorised use. Geographi - cal indications like “Tequila” and “Mezcal” also have heightened protection under national and international frameworks. In Mexico, there is a procedure to obtain a formal declaration of fame or well-known mark issued and recognised by the Mexican authorities. 2.2 Essential Elements of Trade Mark Protection The following are required to qualify for trade mark protection: • Distinctiveness – The mark must distinguish the goods or services from others in the market. Generic, descriptive, or common-use terms are not eligible unless they have acquired distinctiveness. • Lawful composition – Marks must not violate public order, morality, or legal restrictions (eg, using prohibited terms or symbols such as national emblems). • Non-deceptiveness – The mark must not mislead consumers about the nature, quality, or geographic origin of the goods or services. • Use in commerce – While prior use is not required for registration, trade marks must be used in com - merce within three years of registration to avoid cancellation for non-use. Acquired distinctiveness, also known as secondary meaning, applies when a descriptive or non-distinc - tive mark has become uniquely associated with the applicant’s goods or services through extensive use. To prove acquired distinctiveness, the applicant must present substantial evidence, including of:
• consumer recognition in the form of market sur - veys or consumer studies that show the public associates the mark with the applicant’s goods or services; • duration and extent of use of the mark through evidence of long-term and continuous use of the mark in commerce; • advertising and marketing through documentation of significant promotional efforts, including adver - tisements, marketing campaigns, and expenditure data; • a substantial market presence or dominance attrib - uted to the mark; and • awards or media coverage in the form of industry awards or mentions in the press or public forums. 2.3 Trade Mark Rights The rights granted to trade mark owners include: • exclusive use – owners have the exclusive right to use the registered trade mark for the goods or services specified in the registration; • prevention of unauthorised use – owners can prohibit third parties from using identical or confus - ingly similar marks in commerce if such use could mislead consumers or dilute the mark’s distinctive - ness; • licensing – trade mark owners may license their rights to third parties through licence agreements; • assignment – owners can transfer trade mark rights to others through an assignment agreement; • enforcement – owners have the right to initiate legal proceedings against infringement, dilution, or counterfeiting, including administrative, civil, and criminal actions; and • customs protection – owners can register trade marks before customs to block the importation of counterfeit goods. Trade mark rights have a validity of ten years from the granting of the registration date and are renewable indefinitely, as long as the owner fulfils specific obli - gations, including declaration of their use and paying the renewal fees. 2.4 Use in Commerce To establish use of a trade mark, is it necessary to show the following:
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