MEXICO Law and Practice Contributed by: Victor Adames, Carlos Hernandez, Paola Becerril and Eduardo Saldaña, BC&B Law & Business
Certain marks receive special protection – ie, the terms “OLYMPIC” and “RED CROSS” are safe - guarded under international treaties and specific Mexican laws that prohibit their unauthorised use. Geographical 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 mis - lead 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 commerce within three years of regis - tration to avoid cancellation for non-use. Acquired distinctiveness, also known as sec - ondary meaning, applies when a descriptive or non-distinctive mark has become uniquely associated with the applicant’s goods or ser - vices through extensive use. To prove acquired distinctiveness, the applicant must present sub - stantial evidence, including of:
• consumer recognition in the form of market surveys or consumer studies that showing the public associates the mark with the appli - cant’s goods or services; • duration and extent of use of the mark through evidence of long-term and continu - ous use of the mark in commerce; • advertising and marketing through docu - mentation of significant promotional efforts, including advertisements, marketing cam - paigns, and expenditure data; • a substantial market presence or dominance attributed 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 confusingly similar marks in commerce if such use could mislead consumers or dilute the mark’s distinctiveness; • 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 agree - ment; • enforcement – owners have the right to initi - ate legal proceedings against infringement, dilution, or counterfeiting, including adminis - trative, civil, and criminal actions; and • customs protection – owners can register trade marks before customs to block the importation of counterfeit goods.
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