Changes in practice on the classification of goods and services

10-08-2015

Carlos González

The practice for classifying goods and services in Mexico has undergone many changes over the years, in response to local necessities and amendments to classification from an international perspective.

Mexico implemented the Nice Classification in 2001, leading the Mexican Institute of Industrial Property (IMPI) to adapt a new form of practice to the system that had been operating for a large number of years.

As a result, the examiners have been following criteria that require applicants to adapt descriptions exactly as those recited in the Spanish version of the Nice Classification.

This practice brought some complications during trademark application proceedings because the Nice Classification should be understood as a legal guide to an appropriate specification of goods and services that should accept adaptations to local language and particularities of each case.

However, the IMPI has established as formal practice the criterion of issuing unnecessary refusals when products or services are not recited exactly as stated in the list of the current edition of the Nice Classification. This is to ‘confirm’ that the proposed recitation of goods and services belongs to the class of interest.

The measures adopted by the examiners caused the issuance of unnecessary official actions that hinder the prosecution of trademark applications and increase registration expenses for trademark owners.

The general criterion that the “heading classes” provide a wide range of protection, under the statement that filing an application with a heading class represents the protection of all the products or services of that class of interest, was introduced according to the practice accepted by the IMPI and Mexican law firms until it remained as a criterion normally applied in the Mexican practice. That was the line of practice with the aim of solving inconsistencies in the formal protection and enforcement of intellectual property rights in Mexico.

This has been part of the Mexican practice and passed many years ago. Therefore, the former interpretation that the heading classes provide a broader protection brought, again, the necessity to adapt new changes—not only in strict practice, but in Mexican law.

Derived from the above, a local supplementary list of goods and services published by the IMPI was implemented that includes products and services that do not expressly appear in the Nice Classification, but that in accordance with the explanatory notes of such international classification have been accepted as valid for classification purposes in our system.

Some goods and services published in the supplementary list have been proposed to the Committee of Experts, part of the Nice Agreement, and some of them now form part of the Nice Classification.

"A local supplementary list of goods and services published by the IMPI was implemented that includes products and services that do not expressly appear in the Nice Classification."

During a meeting of the experts’ committee in April 2015, some countries that are party to the Nice Agreement proposed amendments to the explanatory notes and in the heading classes, with the purpose of applying a stricter classification that responds to the necessity of using more specific recitations of goods and services for trademark application proceedings.

Because most IP offices do not accept the identification of heading classes, the World Intellectual Property Organization (WIPO) proposed to amend such general recitations of heading classes in order to improve the classification system and ensure legal certainty to the users.

However, some inconsistencies and ambiguities have not been solved with respect to the heading classes and its effective scope of protection. Therefore, the committee meeting in 2015 recognised and declared that the heading classes and explanatory notes of the Nice Classification are mere indicators to help the classification of a product or service.

These new challenges force the Mexican system to adapt fresh ideas and criteria on the use of heading classes and explanatory notes of the Nice Classification for the classification of goods and services, which would benefit the IP system in our country.

Therefore, despite some ambiguities remaining on the recent amended heading classes of the Nice Classification, if the IMPI no longer accepts heading classes in the descriptions as a formal practice, there will no longer be ambiguities on the scope of protection of distinctive signs in Mexico.

This measure will benefit everyone in the Mexican IP system, as it currently occurs in other jurisdictions, providing legal certainty based in local law but motivated under an international base. 

Carlos González is a trademark lawyer at Becerril, Coca & Becerril. He can be contacted at: cgonzalezc@bcb.com.mx

Carlos González, Becerril, Coca & Becerril, Nice Classification, WIPO, IMPI,

WIPR