Fictional trademarks in Mexico 1 all visible signs from the well-known film the well-known from from the series Breaking Bad the series Breaking from THE TRADEMARK LAWYER for fictional trademarks, which creates which for fictional trademarks, from the cartoon the seriesfrom The Simpsons Article 87 of use may the LIP establishes who kind of any person or entity is practice, Mexican In In most jurisdictions the law provides specific protection most jurisdictions provides In the law no specific regulation where the case in Mexico, is Such The popularity of and widespread knowledge many can be protected, provided that they are sufficiently that they are provided can be protected, or services identify the products and able to to distinctive apply with to to respect intended theywhich apply or are in followed This definition is those in the same class. Trademark definition under Mexican law definition under Mexican Trademark with article 89 of accordance In the LIP, The Mexican legal frame for trademarks The Mexican under Mexico’s regulated are in Mexico Trademarks of was enacted which current Law Industrial Property (LIP), 2, August 1991 and further amended on 27, on June the LIP. to and also under the Regulations 1994, own a trademark stating: registration, and therefore or service use may providers merchants, “industrialists, or in the services in commerce trademarks in industry, use the right their exclusive to Nevertheless, they render”. their registrationis obtained through with the Mexican ofInstitute Industrial Property (IMPI). apply for a trademarkentitled to registration the before use requirements. withoutIMPI any for the author’s copyrights over the stories, the titles of the stories, copyrights over for the author’s lyrics and music, the fictional characters, the works, On the other hand, of other works their creation. many most jurisdictions (if for protection not all) provide provide few legal systems trademark However, rights. specific protection some uncertainty for the legitimate owners/authors. This article for fictional trademarks. provides describes ofthe legal contours trademark in Mexico relevant law fictional trademarks cases covering in two and presents the case as a trademark one that treated injury Mexico; it a copyright injury. and the other that considered DUFF Beer GUMP Shrimp Co. BUBBA Gump Forrest Hermanos POLLOS LOS fictional trademarks opportunity is a tempting for some of taking advantage resist to They find it hard businesses. and sell their own products using them to markssuch by without the registeringeven them under their name, authorization of the creators. products, services and their products, ctual property particularly rights, tes (Nullity, Caducity and Infringement (Nullity, tes School of Witchcraft & Wizardry from Wizardry & ofSchool Witchcraft products from the Warner Brothers Cartoon Brothers Warner the from products owadays, people all around the world are world the people all around owadays, familiar withgetting more of the names the as the most successful as well TV shows, top intellectual property law. propertyintellectual law. In many cases, the fictional world created by the by created the fictional world cases, many In Some examples ofSome examples fictional trademarks ring that may Sergio L. Olivares Jr. and Victor Ramirez, Olivares, consider and Victor Ramirez, Jr. Sergio L. Olivares is a trademark or of fictional marks whether infringement copyright injury. movies. Many people become faithful fans of become people series some Many movies. all the seasons and sequels and watching or movies, whole fictional a world create the authors to allowing of the main characters around the fictional story. author(s) includes fictional Harry Potter films Harry Potter respective fictional trademarks. These products or services fictional These products trademarks. respective the trademarks by identified by usually well created are author of the storyfor people and and it is not unusual familiar not become to world the real from consumers but also with such only with of the characters the story, fictional trademarks. ifa bell even see or hear them outside of you their include: originating story, Co. ACME Runner and the Road Coyote E. Willy series HOGWARTS N Fictional trademarks Fictional in Mexico Sergio’s work at Olivares is extensive, and he has vast experience in the and he has vast experience is extensive, at Olivares work Sergio’s prosecuting Industrial Propertyprosecuting dispu as as well Office, and Patent Trademark the Mexican before proceedings) is also He the Courts of before appeal proceeding Law. on the respective of analyzing and reporting results in running, experienced availability preparing and names; slogans and commercial for trademarks, search name applications at the Mexican slogan and commercial filing trademark, trying Office; labelling prosecuted product to cases relating Trademark and trying General (PROFECO); Office Attorney the Consumer’s before names. domain to related procedures resolution uniform dispute prosecution and litigationprosecution of intelle Résumés Jr. Olivares Sergio L. a partner becoming in 1994 and Chairman in 1987, Sergio joined Olivares leads the firm with He strength in 2009. of Committee the Management and personal client satisfaction, transparency, to and a commitment service. trademarks, copyrights, patents and unfair competition. He has specialized He and unfair competition. patents copyrights, trademarks, in all typeshis practice of Ramírez Víctor negotiating and focuses mostly on counseling; at Olivares work Victor’s Victor Ramirez Victor Sergio L. Olivares Jr. Olivares Sergio L. CTC Legal Media CTC Legal Fictional trademarks in Mexico 3 THE TRADEMARK LAWYER Based on the foregoing, owners should seek to maximize their legal maximize owners should seek to Based on the foregoing, “…Accordingly, and following the above reasoning, the well- reasoning, and following the above “…Accordingly, was fully proved ofknown character the mark KRYPTONITE based on the widespread acceptance and knowledge by the consumer by and knowledge based on the widespread acceptance so is cinema and the Internet; television, public user ofcomics, that the trademark 1077914 say registration to reasonable at issue, KRYPTONITE, i.e., the plaintiff, and the name used by KRIPTONITE, ofentails a likelihood question… the names in association between so of“…The end sought public, is the protection the consumer ofthat it cannot be susceptible between or association confusion the mark of the plaintiff and the mark of specifically, the marks, the defendant… of being fulfilled the assumptions of the grounds “…Therefore, in its entirety it is reproduced since under consideration, invalidity JORGE the defendant, by and as a whole the name KRIPTONITE right of DC the exclusive COMICS is OLVERA, GONZALEZ of the consideration due to character the well-known diminished, of the company… the mark owned by the right of the owner of the above, to the well- “…According all kinds of or services; products covers protection known mark to is using the name KRIPTONITE, by the defendant, this is why the rights of derived invading of character the well-known the LIQUID HAIR GEL, of: consist although the products mark, AND SHAMPOO… SOAP BODY SOAP, the assumptions of fulfilled “…Once of the grounds invalidity that the the conclusion to comes Authority this under study, GONZALEZ trademark JORGE registrationthe defendant, owned by of was granted of the provisions in contravention the OLVERA, at the time of in force Industrial registration, Property Law it is since ofspecifically Section XV article 90 of the same law, well- considered the mark KRYPTONITE, similar to confusingly administratively to proceeds Authority the consequently, known; AND of the invalidity declare the mark 1077914 KRIPTONITE previously for the reasons mentioned…” DESIGN; from decided this case exclusively that IMPI note to is interesting It Assuming KRIPTONITE is a well-known mark too, our law mark is a well-known too, KRIPTONITE Assuming unfair defendant was taking the position, our firm’s to According that the trademark of considering ruled our client, IMPI in favor Conclusions and recommendations trademark the not believe do we our local experience to According we and for the same reason the copyrightinjury injury, excludes that the rightsconsider in fictional trademarksproperty a protect right of of as the rights as well the creator the fictional work of consumers. registering copyrights by for the fictional trademarksprotection as as registering as well their fictional trademarks, copyright works, in their goods and servicesstrategically protected that are covering entertainment, as ones such as collateral as well fictional world, clothing and other merchandise. games, registration for KRIPTONITE withregistration device was granted for KRIPTONITE in contravention DC to of associated it is confusingly since of the provisions the IPL, quoting hereunder are We mark well-known KRYPTONITE. Comics’ a few paragraphs of decision: this interesting a trademark injury perspective only, grounding the resolution not the resolution grounding a trademark injury only, perspective only on the proprietary rights of DC but also in the interest Comics rights. of consumers’ protecting forbidsof class registering it in any or services; goods if no matter the by servicesthe goods or the ones covered or not to similar are mark. well-known ofadvantage mark the well-known of and harmingDC its Comics trademark rights. in class 3. (1077914 KRIPTONITE, P.C. (1077914 KRIPTONITE, ” owned by TWENTIETH CENTURY FOX TWENTIETH CENTURY by owned It is interesting to note intellectual work intellectual IMPI ruled in favor of Twentieth Century Fox considering that considering Century Fox of ruled Twentieth IMPI in favor of ruledIMPI in the core its decision the following: the with settled above, the reasoning in accordance “…Whereas trademark the title of registration 987704 DUFF BEER recreates the previously called DUFF and that its work FILM CORPORATION of at the date existed filing and granting of as mark, the disputed had no RODRIGUEZ AGUILAR ALVARO as the fact that well authorization of copyrights use such obtain the the owner to to concluded it is registration is why which of as a mark, his work ofthat the grounds Article 151 Section the nullity I of under the Section XIII of article to 90, relation in Industrial Property Law the plaintiffs. by the case made fully apply to the same regulation, the nullity of declare to it is appropriate the trademark Therefore, AND DESIGN.” registration 987704 DUFF BEER Our firm alleged that being the name KRIPTONITE was a part ofOur firm alleged that being the name KRIPTONITE the The solution IMPI has given to this apparent dilemma is reflected this apparent to given has IMPI The solution hair gel, liquid soap, body soap body and shampoo” liquid soap, hair gel, that IMPI decided this case exclusively from a trademark injury grounding the perspective only, resolution not only on the proprietary rights of DC Comics but also in the interest of protecting consumers’ rights. SUPERMAN universe, the name KRIPTONITE should be considered the name KRIPTONITE universe, SUPERMAN is. SUPERMAN just like markas a well-known in Mexico The DUFF Beer case The DUFF Beer Rodriguez Aguilar Alvaro v Corporation Film Century Fox Twentieth Aguilar Alvaro Back in 2006 1567/208): P.C. (987704 DUFF BEER, Rodriguez, the trademark registered DUFF individual, a Mexican the challenged Century Fox Twentieth 32. Beer for beers in class validity of the registration of on the grounds article 90 section XIII title of arguing that the name DUFF was the the IPL, an from previous the use and registration to created of work intellectual the mark. challenged as it reproduces indeed the name DUFF Beer was wrongly registered Century Fox’s the title of harming the Twentieth work an intellectual this case as a copyright treating thus injury. it, copyrights over The KRIPTONITE case Gonzalez Olvera DC Jorge v Comics our firm case in which represented This is a successful 2172/2013): Our client had learned that a local individual had DC Comics. a rather simple device by for accompanied KRIPTONITE, registered “ CTC Legal Media CTC Legal from a fictional character in terms ofterms in character a fictional from ability its designate the to ofsource an entertainment product. one fictional trademarks over cases in Mexico; different in two a trademark the case as treated injury it a considered and the other copyright injury. “ CTC Legal Media CTC Legal Being the fictional trademarks, trademark functions no differently The IMPI is not a court of law, but rather but an administrative court is not a ofThe IMPI law, the Some of derive we do where these important questions are: establish to propose we important do Another question is how be a trademark that because it appears to for a fictionalSome say Likewise, infringements are considered as an administrative violation as an administrative infringements considered are Likewise, trademark, the righttrademark, infringement pursue to actions against third parties possible. is of the law that is prosecuted before administrative authorities administrative (the before of that is prosecuted the law courts). administrative and thereafter IMPI declaring resolution an of The consequences the IMPI’s authority. a fine imposed on the infringer to infringement and an order are: claim A civil action to the infringing stop activities. immediately resolution the IMPI’s once a civil courtdamages before is available, declaring the infringement of a trademark registration is final and possibility the beyond of appeal. precedential cases Relevant The lack of of specific regulation fictional trademarks in the local copyright and trademark it necessary answer framework makes to the formation determine of to certain questions in order rights for fictional trademarks. basis of rights main positions two in fictional trademarks? are There that the rights consider in some may query, this to in response a propertyfictional trademarks right protect to are of of the creator primarily that they are say to while others would the fictional work, consumers. protect rights in fictional trademarks? be to for this question tends initial response the trademarks as such, this However, t-r-a-d-e-m-a-r-k-s. them as what they are: protect to support to use of that is how poses a furthersolution hurdle; these when goods or services, kind of for the relevant marks in commerce usually used only in the fictional story/work.they are rather than a part ofgood, it is in which the entertainment work and our ability understand its to our perspective it blurs embedded, a fictional as in reality functions, notoriously known , equal or similar to a equal or similar to , , as well as titles of as well publication , artistic works , to be applied to any product or service. product any be applied to to , intellectual or intellectual THE TRADEMARK LAWYER The situation, as you can imagine, starts with can imagine, a lack of as you definition The situation, The limitations as to what cannot be protected as a trademark are what cannot be protected The limitations as to to prohibitions two include among others, These prohibitions A visible sign originally created in a fictional story sufficiently distinctive and able to identify or services. products or periodicals, fictitious or symbolic characters, characterizations fictitious or symbolicor periodicals, characters, artisticof names and names of humans, artistic unless the groups; holder of copyrights authorizes it; the corresponding expressly or tridimensional figures forms Names, Titles of Titles trademark which the Institute considers to be to considers trademark the Institute which in Mexico 2 A trademark right use the registration to grants the exclusive the same by for the goods or servicestrademark covered in Mexico party third obtaining a registration from any for an and will prevent with a registered Likewise, similar trademark. identical or confusingly Protection and enforcement Protection Fictional trademark definition Fictional of the complication the fictional trademark before, commented As with do a lack of has to that a specific regulation cases in Mexico defines this type of for them. right suitable protection and provides the trademark considering of Therefore, the fictional trademarks. the following propose we Law, Mexican by definition provided definition of fictional trademarks (for the purposes of Mexican jurisdiction): Mexican practice and, for that reason, olfactory and auditory for that reason, practice and, Mexican Mexico. in trademarks cannot be protected is a list of which and prohibitions established in article 90 of the LIP, for rejecting a trademarkthe only legal source application. we as discussing, are we registration for the topic relevant that are important two cases over will present in detail when we explain the are to refer The limitations we fictional trademarks in Mexico. following: Fictional trademarks in Mexico trademarks Fictional