Trade Mark Dilution In Mexico

This is the text of a thesis submitted (and subsequently passed) for the degree of Master of Studies in Legal Research (MSt) at the University of Oxford, Faculty of Law, in October 2004.The primary purpose of the thesis is to analyse the longstanding treatment of trade mark dilution in the United States with a view to comparing it to equivalent dilution protection available in the Law of Industrial Property of Mexico. Despite a literal reading of the Mexican statute, it is argued that dilution protection is not read at face value and is simply treated as another form of confusion protection for well-known trade marks.Beginning with an understanding of the subject matter and its underlying principles, some arguments for its justification are examined. Relevant cases interpreting the federal anti-dilution statute in the US and the principles that have emerged from such interpretations are exposed. These valuable principles are used as a benchmark by which some parallels are drawn with the Trade Mark and Courts decisions interpreting the Mexican statute. Further, the analysis suggests that both the US and Mexico face difficulties in applying their respective statutes. However, the main focus remains in Mexico and its inconsistencies in determining relevant criteria related to trade mark dilution such renown, consumer recognition, similarity, and evidence to prove it. Finally, it is suggested that urgent legislative guidance is needed to address the failure to read the Mexican statute at face value.

Written by a team of international experts, marshalled by one of the world’s foremost trademark lawyers, Trademark Dilution and Free Riding is the leading comparative work on trademark dilution. This book is a must-have resource for trademark professionals worldwide, and will also stand as a valuable reference point for intellectual property scholars.

What remedy does a car manufacturer have to prevent the use of its trade mark for cosmetics, confectionery, office furniture, or any one of a number of dissimilar uses? Except in cases of public deception, the answer was none until the doctrine of trade mark dilution was first introduced into English law and into much of Europe with the advent of the Trade Marks Act 1994 and the EC Trade Marks Directive. This doctrine, `misunderstood, misconstrued, and misapplied' since it was introduced into American law nearly 70 years ago, exists to prevent one trader taking unfair advantage of the name or mark, usually well established, of one business and using it for the exploitation of goods in areas in which the well-known trader is not presently active. This controversial and complex area of law is now of very considerable interest to lawyers, trade mark and patent agents and their business clients throughout the European Union where specific anti-dilution provisions have been widely introduced. Its appearance is timely given the uncertainty about the relevant provisions of the Trade Marks Act 1994 and there can be no doubt that practitioners in the field will be eager to buy and read this book.