Mexico: Proven commercial use required for trademarks to achieve acquired distinctiveness

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Mexico: Proven commercial use required for trademarks to achieve acquired distinctiveness

Sponsored by

olivares-400px.jpg

On August 10, 2018 several modifications to the Mexican Industrial Property Law entered into force, resulting in some new IP figures being recognised in Mexico.

One of the new legal concepts included in the Law is 'acquired distinctiveness,' more commonly known as 'secondary meaning', which allows the registration of trademarks that can be considered as not initially distinctive, but owing to their commercial use have acquired distinctiveness.

However, these modifications still need to be complemented with regulation and are yet to be published in the Official Gazette.

In light of this there are no clear guidelines to determine the evidence required to support an application for a trademark filed based on acquired distinctiveness, and so it is not clear how The Mexican Institute of Industrial Property (IMPI) will examine these applications when filed.

In order to be able to demonstrate that a trademark has acquired distinctiveness it is necessary to prove that it has been used in the market and that consumers recognise the trademark in relation to the goods and/or services that it distinguishes. This is to ensure that the trademark complies with its main requisite, i.e. that it is sufficiently distinctive to enable its goods/services to be distinguished from others in the market.

Factors that can support the distinctiveness of the trademark in the market include:

  • surveys;

  • the date of first use of the mark in Mexico;

  • the period of time of continued use and advertisement of the trademark in Mexico;

  • the volume of sales of the goods/services identified with the trademark during the last three years.

In any case, until the regulations to the industrial property law are published in the Official Gazette, it will be necessary to meet with examiners to determine whether or not this evidence is sufficient to obtain a favourable resolution from the authorities.

caraza-wilma.jpg

Wilma Caraza


Olivares

Pedro Luis Ogazón No 17

Col San Angel

01000 México DF

Tel: +5255 53 22 30 00

Fax: +5255 53 22 30 01

olivlaw@olivares.com.mx

www.olivares.com.mx


more from across site and SHARED ros bottom lb

More from across our site

News of a breakaway firm launching in Germany and a spike in vaccine-related patent applications were also among the top talking points
A flurry of hiring activity among UK firms suggests they are confident of mounting a serious challenge at the UPC
With the submission deadline approaching, we sat down with our research team to provide top tips on how to make your firm stand out
EA, owner of video games including Madden and The Sims, will be sold to a consortium including Saudi Arabia’s Public Investment Fund and a firm owned by Donald Trump’s son-in-law
New arrival marks Mewburn Ellis' second partner hire in ten days as firm looks to boost patent litigation and prosecution capabilities
In-house counsel and teams are invited to submit information for the 21st annual Managing IP Awards
The 2025 list of Rising Stars and Corporate Stars, produced by Managing IP’s accreditation title IP STARS, is now available
Eszter Szakács, partner at Danubia in Hungary, discusses women’s progression, workplace flexibility, and how to deal with imposter syndrome
Rob Fewery is a solicitor at Allwyn Entertainment in the UK
Piotr Rafalski is a patent attorney at Qemetica in Poland
Gift this article