Trademark Caselaw | Mexico | Diageo Prevails in Tequila 3D Trademark Case
IMPI, Mexico’s Industrial Property office, recently confirmed a ruling in favor of Diageo Mexico Comercializadora, S.A. de C.V. in a case involving an annulment action and a cancellation counterclaim, both associated 3D bottle design trademarks used in connection with tequila.
During 2017, Diageo Mexico Comercializadora, S.A. de C.V. filed for the annulment of trademark Registration No. 1589790 for DON NACHO (& Design).
Trademark DON SANCHO (& Design), Registration No. 1589790
The subject mark identified “tequila” in class 33.
The registrant, Fabrica de Tequila Don Nacho, S.A. de C.V., filed a counterclaim requesting that Diageo’s 3D trademark registrations Nos. 524267, 524268, 531519 and 531520 be declared lapsed due to lack of use.
Diageo’s 3D Trademarks
Diageo’s 3D trademarks consisted of four bottle designs, registered under Nos. 524267, 524268, 531519 and 531520, in class 33 for “alcoholic beverages, such as: gin, vodka, liquors, table wines, ciders, whisky, apperitives, distilled beverages, mint alcohol fruit extracts, digestives (alcohols and liquors), alcoholic essences, anise, aguardiente, mezcal, cognac, tequila, aguamiel, sparkling wines”.
IMPI confirmed its previous resolution, finding that trademark dismissing the registrant’s counterclaim and declaring the annulment of registration No. 1589790. The ruling further stated that:
Trademark DON NACHO (& Design) was, indeed, confusingly similar with Diageo’s pre-existing registered trademarks since it shared multiple elements in common in their bottle designs; and
That there were no grounds for deeming Diageo’s trademarks lapsed, since the company had successfully established that such trademarks were being used in Mexico.
In finding that Diageo’s trademarks were being used in the Mexican market, IMPI further ruled that it is not necessary to establish use of a trademark, in the form of actual sales, during the prescribed three years prior to the corresponding lapse request, because it was enough for the registrant to establish that the goods or services identified with such trademark have been put in commerce or made available in the marketplace, during the subject term.
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