Easier terms for trademark applicants

30-05-2017

Emilio Albarran

The Mexican Institute of Industrial Property has adopted some modifications for the examination of trademark applications. Therefore, when a new applicant seeks to obtain registration for its mark, there are some changes in the examination process which should be taken into account.

The Mexican Institute of Industrial Property (IMPI) has adopted some modifications for the examination of trademark applications. Therefore, when a new applicant seeks to obtain registration for its mark, there are some changes in the examination process which should be taken into account.

Examiners will apply more lenient criteria when reviewing the filing of the application forms, including the following.

If word marks were depicted in upper and lower case letters, the IMPI used to consider them (during 2016) as composite marks. Furthermore, if an applicant sought to file an amended application form indicating the trademark of interest all in capitals, the examiners used to change the filing date of the trademark.

From now, word marks will be accepted in upper and lower case since word marks may use either capital or lower case letters despite the fact that the filing confirmation (the sticker confirming filing information) as well the electronic database at the IMPI indicate the mark all in capital letters.

Regarding design marks which include word portions and where the applicant forgets to indicate the wording elements within the space reserved within the application form, the IMPI asked applicants indicating non-registrable word elements to comply with formal requirements in order to prevent the change in the filing date.

From now, the IMPI will request the applicant to clarify if the word elements should be considered as part of the mark or if they are non-registrable elements.

 Use of symbols

When a design mark includes any letter, symbol or number without any claim within the application form, the IMPI will require clarification in order to determine if those elements should be considered to be part of the design, part of the word portion of the intended trademark or a non-registrable element.

Symbols such as ®,® or MR are non-registrable elements per se. However, if in the past the applicant forgot to indicate said symbols as non-registrable elements, the IMPI requested applicants to indicate those symbols as non-registrable elements.

Now, the examiner in charge will conclude the formal examination and send the application to substantive examination without requirements. Moreover, it is no longer compulsory to indicate the ®,® or MR symbols as non-registrable elements when filing new applications.

Other symbols such as “#, %, +, /” etc, were considered to be designs; therefore, if any applicant wished protection over that element, it was necessary to indicate it as part of the design portion of the mark.

From now, those symbols can be considered as part of the word portion of the mark only if they are in the modern Latin alphabet, are Arabic numbers or are signs that help with reading.

"Applicants will avoid office actions and other legal consequences when filing new trademark applications in Mexico."

It is important to mention that in our country the “+” symbol is considered a design element. For that reason, if the applicant wants protection over any word mark besides the “+” symbol, it will be necessary to file the application as a composite mark. It means the application should be filed by separating the word element by indicating the “+” symbol as a design.

When the description of services included “food supply” in class 43, the IMPI used to request clarification of services. From now, “food supply” will be acceptable in class 43 without further requirements.

The IMPI tends to analyse the whole description of goods and from now will work on the overall review of the description of goods in order to prevent requirements of isolated goods or services included within a general description of goods/services.

When the application form claims protection for a clear description of goods or services but indicates an incorrect class number, the IMPI used to request indication of the correct class number.

However, from now, the examiner will inform the applicant about this confusion and study the application in the correct class.

Taking into account each of the points above, applicants will avoid office actions and other legal consequences when filing new trademark applications in Mexico.

Emilio Albarran is trademark attorney at Becerril, Coca & Becerril. He can be contacted at: ealbarran@bcb.com.mx

IMPI,Emilio Albarran, Becerril, Coca & Becerril, Mexico,

WIPR