Easier terms for trademark applicants
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.
