MEXICO
were developed in Mexico or abroad by a person or company that uses a certain trademark to distinguish its goods or services, or as a consequence of the promotion or advertising of the trademark. On the other hand, to determine whether a trademark is famous, it will be understood that a trademark is famous when the majority of consumers are familiar with it.
In order for a trademark owner to obtain a declaration of notoriety or fame of its trademark, the trademark must be registered in Mexico and cover the goods or services from which its notoriety or fame derived. To obtain a declaration, a trademark holder must provide a number of elements to prove the promotion, advertising, positioning, value, geographical presence and international protection of the trademark.
An element of the system that has been questioned the most is the need to fi le a trademark valuation that discloses the monetary value of the trademark. IMPI has accepted that it is not necessary to provide all the elements of evidence described in the IPL, but rather only those that an applicant deems necessary to prove the fame or notoriety of the trademark. Regarding the valuation requirement, IMPI has accepted that an applicant can state a value without fi ling a valuation report, which is nothing more than a document that summarises the strength elements that deliver value to the trademark.
T e average time-frame for obtaining the declaration of notoriety or fame is between four and six months, and every fi ve years elements to prove that the trademark continues to be notorious or famous must be provided.
One of the positive eff ects of a declaration is that, immediately aſt er its recognition, it prevents the registration by third parties of any identical or similar trademarks in all classes of goods or services that are related to those for which a declaration of notoriety has been granted. In the case of famous trademarks, the blocking extends to all classes of goods and services.
Until now, 23 trademarks have been declared as famous or notorious by IMPI. Among them are Mexican trademarks with a long history and
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presence, as well as international trademarks such as Intel, Bimbo and Microsoſt , which have been deemed to be famous.
Another positive eff ect of the system is that authorities at all levels, both judicial and administrative, grant a greater degree of protection to trademarks that achieve this recognition, considering that the damage caused to a trademark and to consumers is greater when trademarks that have acquired this quality are involved. T is is underlined by criminal actions. Counterfeit products that imitate notorious or famous trademarks are oſt en seized in raids.
It is clear that notoriety and fame declarations in Mexico are granting signifi cant advantages to trademark holders. T ey must be considered integral to any real and eff ective trademark protection strategy in Mexico.
Three-dimensional trademarks
According to Article 89(2) of the IPL, three-dimensional shapes may be registered as trademarks. T e express recognition of three-dimensional shapes as elements that can be registered as trademarks was one of the novel aspects of the IPL, as the previous Patent and Trademark Law contained no provisions in this regard. T is is a recognition of the fact that product packaging and product shape are also means of distinguishing one product from another.
In order for three-dimensional shapes to be registered, they must be stationary (animated or shiſt ing three-dimensional shapes cannot be registered), and they cannot be the common shape of products, or the shape imposed by the nature or use of the products. Also, three-dimensional shapes that are in the public domain or are commonly used in trade, as well as those that lack originality, are prohibited from registration.
Finally, Article 53 of the regulations to the IPL specifi cally states that, within the three-dimensional shapes provided for in the IPL, wrappers, packaging, containers, shape or presentation of products are also elements that can be registered as three-dimensional trademarks.
World Intellectual Property Review e-Digest 2012 181
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