Path of least resistance: understanding trademark examination and prosecution

In Mexico a trademark application is filed with the Mexican Institute of Industrial Property (IMPI). Applications must be filed on paper and are then examined, within a couple of months of the filing date, by one person who conducts a first examination on formalities.

If, and when, this first examination is satisfied, a substantive examination is made to determine whether the trademark is registrable from a distinctive standpoint, or if there are prior trademark applications or registrations that would constitute antecedents and obstacles to the registration.

If the examiner finds no obstacles or antecedents he can grant registration within five or six months of the filing date. The certificate of registration is issued by the same examiner and immediately sent and delivered to the titleholder or its representative.

In Mexico, trademark applications are not published and there is no opposition; publication takes place in the Official Gazette (physical but also available on the Internet) a couple of months after the certificate is issued. Until then it is possible to file a cancellation action against the registration, if it was granted in error or, inadvertently, against the law or if a third party claims better rights for prior and uninterrupted use, even abroad.

Mexico is part of the Paris Convention but not of the Madrid System. Our trademark practice is regulated by written and not common law. In addition, we don’t use a multi-class system, so applications for the same trademark in more than one class of goods or services follow their own and separate procedures.

From application until registration, powers of attorney and priority documents are no longer required, so trademark prosecution in Mexico sounds rather simple.

No documents and legalisations are needed, no third parties are involved in the application process and the Certificate of Registration is issued within six months of the filing date. Why is it, then, sometimes very difficult to register a trademark in this country for no justified reason?

The specification of goods or services in a trademark application is tricky.

Mexican trademark examiners feel more comfortable with applications filed to protect either part, or the entire class headings, of the Nice Classification (ie, advertising; business management; business administration; or office functions), or specific goods or services, but as indicated in the list of IMPI’s adopted classification (ie, business organisation consultancy).

Anything different or not enlisted (ie, “auditing” instead of “verification of accounts” as indicated in IMPI’s classification) could generate office actions that would greatly extend the length of formal examination.

“Trademarks that share a same or similar word, even if different and not applied on the same goods or services, are automatica lly objected to and, in almost all cases, denied.”

Applicants need to adapt their specifications of goods or services in trademark applications to IMPI’s own classification and to the examiner’s caprice. Even if “auditing” has the same meaning as “verification of accounts”, the first just won’t do it.

The examiner will request the change of terms even knowing these activities are the same, with warnings of abandonment after two or three answers to the office action.

Another situation that complicates trademark applications in Mexico is that a very high percentage of registered trademarks protect all class headings of the Nice Classification. A word registered as a trademark that protects, for instance, machines and machine tools and is used on a specific machine tool only, would ban registration for a similar word applied for registration and used specifically on, say, offshore oil platforms.

The same situation occurs with registrations that protect the whole of Class 35 headings or retail sales services, that ban registration of any similar trademark for any product even if, in practice, uses differ completely.

Following the same example, even if the mark that protects machine and machine tools is used on one machine tool only, the use on that specific product would protect the rest of the goods of the same class, as well as other classes of goods or services that the same trademark is registered for.

When a trademark that is registered and renewed for goods and services of many different classes (even for class headings) is used on one single product, that use is enough to keep all registrations in force (adding that, in Mexico, there is no partial non-use cancellation).

Trademarks are examined in Mexico very thoroughly. That is not a bad thing, but sometimes IMPI examiners’ practice and criteria are excessive. Examiners object and deny registration to anything—for example, registration for the word ‘Twing’ was objected to because of an existing prior registration for ‘Gemelo’ (Spanish for twin).

The mark ‘Sea Comfort’ was considered to be descriptive for mattresses; any evocative word may be considered to be descriptive, sometimes leading to many years of appeals before a perfectly distinctive trademark obtains registration.

Trademarks that share a same or similar word, even if different and not applied on the same goods or services, are automatically objected to and, in almost all cases, denied, again obliging applicants to take a simple trademark application that could have obtained registration with the least criterion and disposition from the authority to years of appeals.

The main current concern over trademark prosecution in Mexico is that consents are not allowed. They can be filed in support of an answer to a citation of antecedents, but not taken into consideration in examination. According to IMPI, consents are not allowed in order to protect consumers from error and confusion.

In October 2011 the consents issue arrived at the Mexican Supreme Court, which issued a criterion according to which an identical, or confusingly similar, trademark will obtain or keep registration only if it belongs to the same titleholder, even with a consent from a third party, subsidiary, sister or holding company.

The main problem with this criterion is that it stops any chance of subsidiaries or sister companies being recognised as the same economic group, and so obtaining their own registrations for similar trademarks, causing the situation in which only one of them can hold certain registrations, the alternative being to celebrate and file assignment or licence agreements.

Another inconvenience caused by the rejection of consents in Mexico is the need to file cancellation actions against trademarks that could have peacefully coexisted with registration, with or without a letter of consent, causing unfair but necessary cancellations.