As covered in our earlier article, the Mexican government approved and published a new Intellectual Property Law (IPL), which will come into force on 5 November, 2020.
The new IPL includes several important trademark related changes for brand owners to know, which we will provide detailed information in forthcoming articles. Here we cover the upcoming changes for famous and well-known trademarks in Mexico.
The new IPL will reduce the requirements to have a trademark declared famous or well-known in Mexico. One major change is that a trademark can be declared famous or well-known in Mexico, when the brand gained a “global diffusion or recognition”. The respective article states that:
Article 190 IPL […] a brand is famous in Mexico, when it is known by the majority of the consuming public, or when it has a diffusion or recognition in global commerce.
While the law does not provide a definition for “global commerce”, the added wording suggests that it should now be possible for brand owners to have their trademarks declared famous or well-known in Mexico even if their brand is not yet or only to a certain extent in use in Mexico, as long as it is known or distributed in other countries to a degree that it can be considered recognized on a global scale.
In addition, the new law no longer requires brand owners to reveal the following sensible information in order to prove the recognition of their brands:
- Investments made in advertising and promoting the mark
- The complete geographical area of influence of the mark
- Sales volume or revenue obtained under the protected mark
- Economic value represented by the mark in the shareholders’ equity of the company owning the mark, or in accordance with a valuation of the company;
While other requirements to have a trademark declared famous or well-known in Mexico (as listed in Article 192 IPL) remain unchanged, such as providing a market survey, the mentioned changes will give brand owners an easier access to benefit from the broader protection for famous or well-known trademarks by lowering the level of evidence and revealing fewer insights on sensible and confidential information, which is a positive change.