The Extent to Which Trade Marks are Protected Against Dilution in Mexico and the United States

Abstract

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.