Trademark owners face significant challenges in demonstrating the notoriety of their brands before intellectual property authorities. The following issues summarize the most recurring difficulties in daily practice and how they can play a crucial role in protecting a well-known trademark´s reputation and market position.

Here are some of the main concerns to address in the processes to demonstrate a trademark’s notoriety:

1. Legal Challenges

There is inconsistent legal treatment across jurisdictions. Regional differences in evidentiary requirements and formalities must be considered to prepare submissions tailored to specific markets.

Lengthy processes and subjective examiner opinions complicate the protection of well-known trademarks.

2. Financial Challenges

These processes, by nature, require extensive evidence, notarizations, legalization of documents, and submission of original documents, all leading to significant additional costs. Trademark owners must incur substantial expenses due to high official fees (particularly when separate notoriety declaration processes are required) and legal fees for reviewing evidence and legal support throughout the process.

3. Evidence Collection

Gathering diverse, accurate, adequate, and relevant evidence remains a challenge. Social media presence and AI-based tools offer emerging solutions.

Demonstrating relevant evidence from third countries and related classes is particularly demanding.

4. Client Cooperation

Obtaining complete and timely evidence from clients is essential but often challenging.

5. Third-Party Evidence

Evidence provided by consumers and independent parties (auditors, accountants, etc.) is increasingly valuable, complementing traditional proof provided by trademark owners.

6. Market Surveys

Market surveys are useful but costly, requiring periodic updates and careful confidentiality handling. Alternatives such as CPA certifications and web-based analytics are gaining popularity.

7. New Technologies

Social media and web analytics are essential tools for demonstrating trademark recognition. However, integrating these metrics effectively remains a challenge, and some intellectual property authorities are still reluctant to accept them as valid evidence.

8. Marketing Proof

Demonstrating targeted marketing efforts and brand-specific advertising expenses is vital but complex. Leveraging the brand's impact and presence in regional markets can enhance recognition.

9. Invoices

Although traditional, invoices remain a crucial form of evidence in many jurisdictions. Special attention must be paid to the formalities required to be deemed valid.

10. Renewals

Maintaining a well-known status may require costly and burdensome processes, typically every five or seven years.

Conclusion

The high costs of legal procedures, the challenge of collecting adequate evidence, the need to meet formal requirements, and the temporary nature of notoriety declarations directly impact the decision to pursue such recognition for famous trademarks. Appropriate use of emerging technologies and close collaboration among all the legal process actors are essential to addressing these challenges effectively. Trademark owners should carefully prepare their applications and consult legal experts to successfully navigate the procedural and evidentiary requirements.