New rules for word marks

27-04-2017

Daniel Castro

The Mexican Institute of Industrial Property (IMPI) has adopted a new rule of requesting the applicant of a word mark to detail on the application form the letters either all in upper case or all in lower case, or the first letter in upper case and the rest in lower case (as in a typical sentence).

According to this new criterion, and using the word ‘criterio’ in Spanish as an example, if the applicant intends to protect only the word mark, this must be represented on the application with one of the following three forms: criterio, CRITERIO or Criterio, ie, the representation of the distinctive sign should be uniform for all the letters. The following representations: CRITerio, crITero, cRiterio or criteriO would be excluded from the word mark register since IMPI considers these to be figurative marks.

It is important to mention that the applicant for a trademark, besides having to graphically detail the mark, must additionally indicate on the application form the type of trademark it is wishing to protect: word mark, figurative, 3D or design. The applicant must select it by checking the square for the correct option from the list on the trademark application. 

Applying for a word mark registration should only require selecting the corresponding type of trademark on the form, in order to determine this information. However the examiners at IMPI require the trademark sample to be specifically represented, as mentioned before. This new measure becomes a problem for the applicant when applying for a trademark registration.

In Mexico, having a registered word mark could provide the possibility of using the word in any type of character, colour, size, and font including the proposed style. The applicant has the possibility of using the name of its personal taste or interests.

In this regard, if an applicant is willing to protect a certain denomination, which it is going to use with a specific style, common sense dictates for the applicant to state the denomination on the application form in the way it is going to be used.

"Applying for a word mark registration should only require selecting the corresponding type of trademark on the form, in order to determine this information."

With the new measure taken at IMPI, this action will result in an official action requesting the amendment of the application form for a figurative mark. This will cause the date of presentation to be changed to the day the amendment is made, possibly causing the applicant to lose a priority right.

In this circumstance, and if the applicant is unwilling to change the type of trademark, the alternative is to amend the application to represent the word mark with upper case or lower case in order to keep the application as a word mark. This will not change the date of application and the priority date will not be lost.

This criterion is totally strict. The decision of the applicant regarding the type of trademark it desires to protect becomes affected. In view of the above, IMPI should cease issuing official actions and/or provisional refusals of this kind, which hinder the prosecution of trademark applications and increase the registration fees for trademark owners. 

Daniel Castro is a trademark attorney at Becerril, Coca & Becerril. He can be contacted at: dcastro@bcb.com.mx 

Daniel Castro, Becerril, Coca & Becerril, Mexican Institute of Industrial Property, IMPI, trademark,

WIPR