Current criteria on Mexican distinctive signs examination

27-11-2014

María Elena Fernández

Although few amendments have been made to the Mexican Industrial Property Law over the years—a trend that has helped to improve the trademark registration process—the examiners’ criteria have undergone significant changes

These changes are either related to the description of goods or services, or to substantive issues concerning the registrability of trademarks.

The examination of trademarks, or of a slogan application, is divided into two parts. First, there is a formal stage, in which legal aspects are reviewed. These include the application including correct general information, ownership being correctly assigned, and goods or services being correctly classified. Second, there is a novelty examination, in which the registrability of the proposed distinctive sign is assessed.

Formal examination

In the past, when an applicant filed a trademark or a slogan application indicating the class heading, it was understood that all goods or services included in that class were protected. As a consequence, the trademark owner was tacitly authorised to use its mark in connection with any good or service corresponding to that class.

However, this practice has now been changed so that if an applicant files a trademark or a slogan application covering a class heading, the granted protection must cover only the goods or services specifically indicated in the description of goods or services.

"it is important to point out that the main purpose of the IMPI is the protection of industrial property rights, not the protection against possible trademark confusion among consumers."

This change of practice also applies where applicants used to indicate the goods to be protected with the general wording “parts and accessories”. Nowadays this generic term is no longer accepted. The “parts and accessories” must be specifically enlisted and thoroughly described according to the Nice Classification. The issued IMPI requirements represent, in many cases, an advantage for the applicant of confirming the correct classification of its product or service. However, in many other cases these types of requirements are completely useless since the correct classification of a product or service is clearly confirmed according to its nature. Therefore, the issuance of such official actions only delays the registration procedure.

These actions by the authorities clearly demonstrate IMPI’s intention to grant protection to the most specific description of goods or services possible, to avoid general and unclear protection of goods or services covered by a distinctive sign.

Novelty examination

During this examination the trademark registrability is analysed to ensure it is not granted if it falls into one of the legal impediments established in article 90 of the Mexican Industrial Property Law. One of the legal areas in which the registration of a trademark or a slogan is prevented is where an identical or confusingly similar trademark already exists. In cases where similarities between two trademarks exist, coexistence agreements or consent letters are executed by the owners of the existing trademark application or registration to authorise the use and registration of another similar trademark. The execution of such agreements or consent letters does not affect the marketing and/or commercialisation interests of any party.

Since a coexistence agreement is voluntarily executed between the parties, it should be considered an important argument for the granting of a trademark registration. Unfortunately, according to the current authority’s criteria, there are cases where such agreements and consent letters are not useful or accepted as relevant arguments for the grant of a trademark, despite the companies being related or pertaining to the same corporate holding, and even though other countries accept them. The authority’s argument for refusing such documents relates to the protection of the IP of a previously filed distinctive sign. The authority states that such a refusal also protects consumers from any possible confusion between the trademarks. In such cases, it is important to point out that the main purpose of the IMPI is the protection of industrial property rights, not the protection against possible trademark confusion among consumers, which corresponds to a different authority.

Other types of official actions have been issued based on the authorities’ criteria of objecting to evocative trademark denominations because they are considered “descriptive” of the goods or services, while evocative trademarks are inherently registrable. Even when such trademarks have been registered in other countries, and a copy of the foreign registration certificate has been submitted in Mexico, the authority does not have to take this into account when deciding whether to grant a trademark.

It has become necessary for examiners to analyse the current situation of trademark applicants and modify their criteria by making a more efficient registration procedure, to generate a virtuous circle that benefits both authorities and trademark owners.

María Elena Fernández is a trademark attorney at Becerril, Coca & Becerril. She can be contacted at: mfernandez@bcb.com.mx

Mexican Industrial Property Law; trademarks; slogans

WIPR