News

This is how your brand can be registered through the figure of the acquired distinction; famous brands in Latin America

According to data from the World Intellectual Property Organization (WIPO), in 2021, the filing of trademark registration applications increased by 13.7%. If a brand wishes to position itself strategically in it is necessary to carry out the corresponding administrative procedures before the competent authorities, and even more when it comes to little-known figures.
Cristian Medina, IP Prosecution Specialist at ClarkeModet, assures that every entrepreneur must keep in mind that their main asset are their brands. The importance of their brands lies mainly in their economic value and the marketing power they have or may have in the market. A brand can be as valuable as the company itself, and even the value of a brand can exceed that of the entire business itself.
“It is important to approach specialists in intellectual property and copyright issues to obtain the corresponding strategic advice. Convert business needs ideas into business opportunities to anticipate the true needs of the market, as well as any important obstacles, to carry out the administrative procedures before the respective authorities. He commented that this results in great benefits and greatly reduces costs and commercial and legal risks for companies.
The expert explains that, for a trademark to be able to obtain its registration through the figure of acquired distinctiveness, it must have the possibility of accessing the registration of the sign, this use has given it the distinctiveness that the law requires and, consequently, the consuming public recognizes a specific business origin behind it.
“In general terms, acquired distinctiveness arises when certain signs lack the distinctiveness that the IP laws of most Latin American countries indicate as an essential requirement for signs, and has the practical consequence of modifying the perception of those signs by the public. This is an exception, not a rule. On the other hand, it will be understood that a brand is famous when it is known by most of the consuming public within a certain country, or when it has a diffusion or recognition in global commerce.” added the expert.
Given this situation, Medina recommends that companies protect their trademarks and subsequently assess the possibility of requesting the declaration of notoriety, acquired distinctiveness, or famous trademark, as the company Quiroocan, S.A. de C.V. did, one of the main clients of ClarkeModet, which in turn belongs to one of the most important Spanish hotel chains at a global level: Grupo Barceló. In this particular case, in 2016 the Mexican Institute of Intellectual Property and Copyright (IMPI) issued the declaration of fame for the BARCELÓ brand because during the application procedure it was possible to prove that the brand and its owner were under the assumptions that the Copyright Property Law indicated so the trademark could be susceptible to said distinction.
In the international sphere, there are various laws that provide for and grant this kind of special protection to trademarks, in this sense, the owners of these may demonstrate either the acquired distinctiveness or fame of their trademarks, using the Protection of Intellectual Property.
In 2021, 13.4 million applications for trademark registration were filed worldwide, covering 17.2 million classes, so Cristian Medina believes that many small, medium, and large entrepreneurs have become aware of the constant volatility of the market and the innovation that every day becomes more visible.
“With constant innovation, new business tools, and technological changes, each industry, from different sectors, can be left behind, therefore, many of them are concerned to learn about new ways to protect their intangible assets. Many users have already begun to explore this kind of specialized protection to emerge successfully and strategically in an increasingly competitive market.”, exclaimed Cristian Medina, IP Prosecution Specialist at ClarkeModet.

Jaime de la Mora