In support of secondary meaning

July 15, 2010

BY VARINIA CALLEROS

Mexican intellectual property law does not provide protection to trade marks that are not inherently distinctive but have attained secondary meaning through use. This means that companies cannot obtain exclusive rights in Mexico over descriptive or generic words, surnames, geographic names or isolated colours and isolated letters, even through continuous and exclusive use or extensive advertisement of the branded products or services (which some jurisdictions deem grounds for proving “acquired distinctiveness”).

Many countries have utilized the secondary meaning doctrine in order to distinguish trade marks that are widely recognized by the public for certain products or services from others of the same kind or class in the market. These marks include words, names, symbols, shapes or designs that inherently are, or over time have become, familiar sources with which consumers identify and which meet the purpose of a trade mark and therefore should be subject to trade mark protection.
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Source: Managing Intellectual Property, Jul/Aug 2008.

Significantly, Mexican IP law does contemplate the opposite scenario, namely “genericide” (Article 153). This calls for the cancellation of a trade mark that no longer distinguishes the products or services that it once identified. Thus, it seems that use can work against trade mark owners in Mexico, but not in favour.

Without the adoption of the secondary meaning doctrine, companies are forced to incorporate additional elements into their trade marks, such as fanciful words and designs, in order to obtain trade mark protection. However, since they cannot enforce trade mark rights based on the generic or descriptive word, colour or letter that has attained secondary meaning itself, buy only in combination with the additional elements, exclusivity is very difficult to sustain throughout t