2023 Laws of Puerto Rico › TITLE TEN - Commerce (§§ 1 — 4196) › Subtitle 1 - Regulation of Business Generally (§§ 1 — 998q) › Chapter 11 - Trademarks; Identification of Products (§§ 171-171h — 224b) › § 223y - Dilution of the distinctive nature of famous marks

(a) Any person who, without the consent of the owner of a famous mark uses such mark or a term that is substantially similar thereto in commerce in Puerto Rico, shall be subject to an injunction if the use of such famous mark or substantially similar term is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, even when the goods or services are different, or there is no likelihood of confusion between such marks, or there is no financial injury. In such cases in which the owner of the famous mark further proves that the defendant had the intention of causing dilution of the famous mark or of taking advantage of its distinctive nature, the owner of the famous mark shall also be entitled to the remedies established under § 223w of this title.
(b) A mark is famous if it is widely recognized by the general consumer in Puerto Rico, or in a geographic area of Puerto Rico, as the source of the goods or services of the owner of the famous mark. In determining whether a mark is famous, the court may consider the following factors, among others:
(1) The duration, extent, and geographic reach of publicity of the mark, and whether publicized by the owner or by third parties;
(2) the amount, volume, and geographic extent of sales of the goods or services offered under the mark;
(3) the extent of recognition of the mark in Puerto Rico, and
(4) whether the mark is registered, and if so, in which jurisdictions.
(c) In determining whether a mark is likely to be diluted by blurring, the court shall consider the following factors:
(1) The degree of similarity between the marks;
(2) the degree of distinctiveness (whether inherent or acquired) of the famous mark;
(3) the extent of substantially exclusive use of the famous mark;
(4) the degree of recognition of the famous mark;
(5) whether the user of the mark intended to make an association with the famous mark, and
(6) any actual association between the mark and the famous mark.
(d) The following uses of a famous mark without the consent of the owner of the famous mark shall [not] be grounds for initiating an action under subsection (a) of this section:
(1) Advertising use of the mark to compare or describe goods or services competing with one another;
(2) non-commercial use of the mark, and/or
(3) use of the mark for news or reporting, commentaries, reviews or parody.
(e) In an action under this section for the dilution of the distinctive nature of a trade dress not registered in Puerto Rico or the United States Patent and Trademark Office, the person who asserts trade dress protection has the burden of proving that:
(1) The claimed trade dress, taken as a whole, is not functional and is famous, and
(2) if the claimed trade dress includes any mark or marks registered in Puerto Rico or the United States Patent and Trademark Office, the unregistered concern, taken as a whole, is famous separately and apart from any fame of such registered marks.
History —Dec. 16, 2009, No. 169, § 28; July 12, 2011, No. 124, § 11.