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 sensitive 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 sensitive and confidential information, which is a positive change.
Authored by Bernardo Herrerias Franco, Valentina Schmid