Strict criteria from the Mexican examiners
Insertion of goods and services exactly as mentioned in the Nice Classification
The examiners have established as a criterion the refusal of goods or services that do not appear exactly as they are stated in the list of the Ninth Edition of the International Classification of Goods and Services.
This criterion is being applied unnecessarily strictly, since the International Classification of Goods and Services is only a guide to help trademark owners determine the correct classification of the goods and/or services of interest.
For example, if an applicant wishes to cover ‘visors’ in class 25 or ‘key cases’ in class 18, the examiners are likely to issue an official action requesting the amendment of the goods of interest to ‘visors (hat-making)’ or ‘key cases (leatherwear)’, respectively.
These kinds of office actions are completely absurd and only delay the prosecution of the trademark application.
The Mexican examiners lack the capacity to analyse and understand that the International Classification of Goods and Services is just a guide to determine the classes whereby a specific product or service belongs. Therefore, it is important to have constant communication with the examiners in order to try to avoid these kinds of rejections.
Rejection to cover retail services
Another criterion that has been adopted by the Mexican examiners is that the reference to retail or commercialisation services of several products is not accepted anymore in class 35.
For many years, these kinds of services were accepted in class 35 (just as in many other countries). Nevertheless, the examiners recently decided to reject them.
The main problem arises when an applicant wishes to cover the retail services for his own goods. To date, the position of the examiners is that it is unlikely and unnecessary to protect the retail or commercialisation services for companies that produce their own goods, since in accordance with their criteria, the proper way to be protected is by registering their mark to distinguish or cover each of the goods to be commercialised in the classes of products (from 1 to 34).
"WHEN A TRADEMARK APPLICANT WISHES TO COVER SAID SERVICES, THE EXAMINERS ISSUE AN OFFICIAL ACTION WHEREBY THEY REQUEST AN INDICATION THAT THE RETAIL SERVICES ARE BEING MADE OR OFFERED BY THE APPLICANT AS A COMMERCIAL INTERMEDIARY."
Incredibly, when a trademark applicant wishes to cover said services, the examiners issue an official action whereby they request an indication that the retail services are being made or offered by the applicant as a commercial intermediary.
Commercial intermediary refers to the person or company that indeed commercialises certain goods or services, but does not produce them. Commercialisation services refer to products made only by third parties.
Under this premise, it is not possible for trademark owners to protect the specialised services offered by the persons who work in their stores in order to sell their own products.
This criterion is absurd, since what the applicants are trying to protect are specific services, and not goods.
The issuance of these official actions is increasing; however, the Mexican Association of Intellectual Property, through its various committees, is working closely with the MIIP in order to try to resolve this kind of situation. It is necessary that our authorities have better communication with the Mexican IP law firms in order to try to avoid these problems for the benefit of the trademark owners.
