Secondary meaning under Mexican trademark law: recognising acquired distinctiveness

Distinctiveness constitutes the cornerstone of trademark protection. Under Mexican law, as in most jurisdictions, a sign must be capable of distinguishing goods and/or services in the marketplace to be registrable. Traditionally, signs that are descriptive, generic, or devoid of inherent distinctiveness have faced refusal. However, Mexican law has recently recognised that distinctiveness may be acquired through use – a doctrine commonly referred to as secondary meaning.

The incorporation of acquired distinctiveness into the country’s legal framework represents a significant development in trademark practice. It aligns the Mexican system with comparative jurisdictions and acknowledges commercial reality: consumer perception may transform a non-distinctive sign into an indicator of origin.

Currently, the concept of acquired distinctiveness is expressly recognised in the Federal Law for the Protection of Industrial Property, which entered into force in November 2020. Under this statutory framework, signs that once lacked inherent distinctiveness may now be regarded as distinctive and therefore eligible for registration by virtue of their continuous and effective use in Mexican commerce.

In Mexico, the competent authority, the Mexican trademark office (MTO), may refuse registrations where the sign may be descriptive, generic, customary in trade, or otherwise non-distinctive. Nevertheless, in view of the registration proceeding, the applicant has the opportunity to demonstrate to the authority that, because of prolonged and intensive use, the sign has been associated in the minds of consumers with a specific commercial source.

It is for that very reason that legal recognition of acquired distinctiveness has represented a change from the previous practice, in which the absence of inherent distinctiveness resulted in definitive refusal, regardless of market recognition.

It is essential to distinguish between two analytical categories:

• Inherent distinctiveness – where a sign is, by its nature, capable of distinguishing goods or services (e.g., coined words or arbitrary terms); and

• Acquired distinctiveness (secondary meaning) – where a sign, initially descriptive or otherwise weak, becomes distinctive as a result of use.

In the latter case, the primary meaning of the sign may remain descriptive; however, a secondary association arises in consumers’ perception, since the sign ceases to function merely as descriptive language and instead performs a trademark function: identifying the commercial origin of the goods or services.

The doctrinal justification for this recognition lies in consumer perception. Trademark law protects not language in the abstract but the capacity of a sign to indicate source. Where that function is demonstrably fulfilled, the rationale for refusal weakens considerably.

It is important to emphasise that the burden of proof rests entirely upon the applicant. Mexican law does not provide for a list of admissible evidence, nor does it prescribe fixed quantitative thresholds.

Consequently, the formulation of an appropriate evidentiary strategy assumes fundamental importance. In practice, persuasive evidence may include:

• Length and continuity of use in Mexico;

• Sales figures and market share data;

• Advertising expenditure and promotional reach;

• Geographic scope of commercial presence;

• Media coverage and industry recognition; and

• Consumer surveys demonstrating source identification.

The MTO retains discretion in assessing sufficiency. The key issue is whether the relevant public, within Mexico, associates the sign with a specific undertaking rather than with the descriptive concept itself.

One structural challenge is the absence of detailed administrative guidelines defining evidentiary standards. This may generate unpredictability and underscores the importance of assembling robust, objective, and market-specific documentation.

It should be clarified that secondary meaning does not function as a universal solution, as certain absolute prohibitions may still be insurmountable, especially when considerations of public interest come into play. Examples include:

• Signs contrary to public order or morality remain excluded; and

• Functional shapes or technical characteristics are governed by distinct legal principles.

Therefore, acquired distinctiveness serves primarily to overcome refusals based on descriptiveness or lack of inherent distinctiveness, provided that exclusivity does not unduly restrict competition.

The recognition of secondary meaning in Mexico aligns the jurisdiction with established trademark systems such as that of the UK and the US. In those systems, acquired distinctiveness has long functioned as a doctrinal mechanism to reconcile free competition with brand investment.

Although Mexican jurisprudence is still developing in this area, the statutory framework signals an intention to harmonise with international standards.

From a commercial standpoint, the doctrine has significant implications:

• Businesses may consider investing in descriptive branding strategies where marketing objectives justify such positioning, provided they are prepared to build evidentiary support over time;

• Continuous and documented use becomes strategically valuable, not merely commercially advantageous; and

• Early refusal on descriptiveness grounds does not necessarily foreclose long-term registrability.

However, reliance on acquired distinctiveness should be approached cautiously. The evidentiary threshold can be demanding, and outcomes may depend on the persuasive quality of documentation rather than on formalistic criteria.

The formal recognition of secondary meaning in Mexican trademark law reflects an understanding of market dynamics. Distinctiveness is not exclusively an inherent attribute but can be built through sustained commercial activity and consumer engagement.

By allowing registration when acquired distinctiveness is demonstrated, Mexican law balances two conflicting principles:

• The preservation of descriptive language for general use; and

• The protection of the genuine identity of the trademark forged in the market.

As administrative practice continues to evolve before the MTO, the doctrine of secondary meaning is likely to become an increasingly relevant tool within trademark strategy in Mexico. Its successful invocation will depend not only on legal argumentation but also on demonstrable market reality.