1 August 2011Jurisdiction reportsMiguel Ángel Jiménez Santos

New rules for word marks and slogans in Mexico

On June 10, 2011, several articles of the Rules of the Mexican Industrial Property Law (RIPL) were reformed. The changes became effective on June 13.

The most significant change involved an article regarding applications for distinctive signs (trade names, trademarks and slogans). The change in question involved the wording of the final paragraph of Article 56 of the RIPL, related to word marks and slogan applications. The final paragraph of Article 56 of the RIPL now reads as follows:

“…Word marks or slogans can only be comprised of letters or words of the Roman alphabet, Arabic occidental numbers, and of those orthographic signs which aid to their correct reading. It will be understood that the applicant reserves the use in any font or size of the letters.”

This change limits what signs can be included in applications involving word marks (marks that have no design or logotype at all) and slogans. If applicants use any signs or symbols that are not mentioned in the amended article, in their word marks, then these will become ‘mixed’ marks (the mark will comprise a word and a design).

As for slogans, they would not be registrable under the amended article because, in accordance with Mexican Industrial Property Law and practice, slogans cannot comprise any devices or designs.

Those marks that were originally intended to be registered as word marks but contained symbols that (such as ‘+’, ‘@’ ‘&’ and ‘$’) as part of their wordings (i.e. $pend le$$, @ction M@n, etc.), as well as many others that contain signs or symbols not included in the Roman alphabet, will now have to be applied for as mixed marks.

If the marks are applied for as slogans, they will be objected by the Mexican examiners due to the reasons explained above.

This is a matter of concern for applicants claiming priority rights in Mexico on the basis of foreign trademark applications from countries where trademark offices allow word marks and slogans to comprise symbols not included in the Roman alphabet.

Regarding trademarks, the priority rights would differ because the original foreign word mark would have to be applied for in Mexico as a mixed mark. The non-Roman symbol would be considered as a design, which was not claimed in the original foreign trademark application.

"THERE IS A HIGH CHANCE THAT: A) THE PRIORITY RIGHTS CLAIMED WILL NOT BE RECOGNISED; AND B) THE DISTINCTIVE SIGNS MAY BE OBJECTED BY THE MEXICAN AUTHORITIES."

This is of an even greater concern in cases where the original foreign slogan application includes non-Roman symbols. These slogans will face problems during registration in Mexico.

In these cases, there is a high chance that: a) the priority rights claimed will not be recognised; and b) the distinctive signs may be objected by the Mexican authorities.

Finally, the reform states that word marks and slogans can only comprise “those orthographic signs that aid to their proper reading”. It is not certain what is meant by this limitation or how it will be judged because, before the changes, the criteria followed by Mexican examiners regarding the use of orthographic signs in word marks and slogans were not entirely clear.

It is very important to request professional advice whenever you are planning to apply for a slogan or a word mark that contains any sign or symbol different to those letters and words found in the Roman alphabet or those numbers categorised as ‘Arabic occidental’.

These new changes may cause examiners to evaluate an application in such a way that may lead to the applicant losing any claimed priority rights, or even worse, having a mark or slogan objected or ultimately rejected.

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