Mexico: Response To Registrar's/Examiner's Objection Against A Trademark Application

Last Updated: 31 May 2016
Article by Sofía Arroyo

According to the Mexican IP Law, the study of all trademark applications in Mexico is divided in two stages.

The first stage corresponds to a review of the formal requirements in order to confirm the application form was correctly filled by the applicant and the second stage analyses the registratbility of the proposed mark, considering both relative and absolute grounds of refusal.

Now, the first analysis stage includes a review of the description of the products or services of interest which currently has become very relevant for two reasons.

The first reason is because according to the Mexican IP Law, the final decision regarding the classification of goods and services corresponds to the examiner.

The second reason is because the Mexican examiners have a very strict criteria regarding classification, as the Mexican Examiners consider that the products and services of interest, need to be indicated as closely as possible to the lists included in the Nice Classification, in order to provide certainty to both the trademark owner and third parties about the scope of protection of the eventual trademark registration.

Of course, as you will realize the above described criteria has resulted in the issuance of a significant number of official actions addressing classification issues.  Additionally, said criteria presents a practical problem because as you know science, technology and the development of new products and services in the market occurs much more faster that the pace at which the Nice classification is updated.

Nonetheless, in order to try to avoid official actions with classification issues, when filing a trademark applications in Mexico we recommend whenever possible to use the descriptions contained in the Nice classification, and if this is not possible to describe the product or service in question as closely as possible to the descriptions contained in such lists.

Likewise, clarifications between parenthesis indicating the nature of the product or services are also helpful to reduce classification requirements, for example a description a long the lines of "apparatus for monitoring the sleeping patterns (medical apparatus)" is helpful to maintain the product in class 10 and reduce the risk of receiving an official action regarding classification issues.

Also, it is very important to have in mind that as previously mentioned, the final decision regarding classification issues pertains to the examiners, therefore even when the examiners allegedly try to issue as few official actions as possible, if the examiner in charge of the case is not satisfied with the description of the products or services in question, said examiner can issue as many official actions as needed until he or she is satisfied with the description, because the Mexican IP Law does not establish any limit to the number of official actions that can be issued during the trademark application process.

Of course, as you will realize receiving multiple official actions not only delays the trademark registration process but also increases the prosecution costs, because according to the Mexican IP Law it is necessary to pay government fees with each response to an official actions and failure of payment is penalized with the automatic abandonment of the application.

Finally, it is also important to comment that multiple class applications are not possible in Mexico, therefore if the same mark is to be filed in two or more classes and there is doubt about the proper classification of a certain class product or service, we recommend to include the conflicting product or services in all relevant classes, because we can always delete the product or service after filing, but we cannot include said product or services in an already filed application.

The reason for the above is because we increase the number of products or services covered by an application after filing, this is considered by the law as an alteration of the originally filed application and therefore treated as a new application filing which will result in the change of the filing date and the need to pay the government fees for the study of a new application.

Now, once the formal analysis stage is cleared, the Mexican examiners proceed to analyze the registrability of the mark as such.

In this point is important to comment currently there is no opposition procedure in Mexico, therefore all absolute and relative grounds for refusal are determined by the Mexican trademark examiners based on Article 90 of the Mexican IP Law which establishes all the relative and absolute causes by which a mark may be refused for registration in our country.

Regarding the absolute grounds for refusal it is important to comment the Mexican examiners are prone to object the inherent registrability of a trademark based on descriptiveness.

The reason for the above is because trademark examiners in Mexico have difficulties to distinguish between descriptive terms and evocative marks, therefore although evocative marks can be registered as trademarks in Mexico, many evocative marks get objected and eventually refused based on descriptiveness even when these marks have been accepted and registered in other countries.  Forcing us to go through an appeal process before the courts to try to revert the refusal and obtain trademark protection.

Likewise, obtaining registration for 3D marks in Mexico can also be challenging because the examiners tend to object this kind of registrations on the basis of considering that the 3D form is the "usual form" or the "form imposed by the nature of the product of interest".  Nevertheless, our firm has had significant success in obtaining trademark registrations for 3D marks in Mexico through litigation and as a consequence the examiner's criteria regarding these type of marks has slowly but surely become more flexible in benefit of the trademark applicants.

As for the relative grounds of refusal, it is up to the trademark examiner to determine which of the senior trademark registrations and applications constitute an obstacle for registration on the grounds of likelihood of confusion.

Again, in accordance with the classification issues and the absolute grounds for refusal, the Mexican examiners also have very strict criteria when assessing likelihood of confusion between marks.

Additionally, for the purpose of assessing likelihood of confusion, Mexican examiners tend to consider the names of the marks as the most relevant element while designs are regarded as secondary elements and usually deemed insufficient to distinguish two marks from one another and overcome a barrier which has been considered as "phonetically" similar by the trademark examiners.

Of course we do not agree with the above criteria because in accordance to international law and jurisprudence trademarks in Mexico are supposed to be analyzed and compared as a whole; however Mexican trademark examiners tend to divide the elements of the marks when making the comparison analysis.

Fortunately, the Mexican examiners resolutions are not final and can be appealed before the Courts which although they also have a strict criteria it is not as strict as the criteria from the trademark examiners and have the faculty of reverting the Mexican Institute of Industrial Property (IMPI) refusal and order this authority to grant the registration certificate.  Likewise, our firm has ample litigation experience and has had significant success in reverting IMPI's decisions which again has resulted in the change and flexibility of some of IMPI's criteria.

Consequently, when responding to official actions issued by IMPI is important to take into consideration the following.

1. IMPI has very strict criteria regarding both classification issues and absolute/relative grounds for refusal.

2. According to the Mexican Jurisprudence IMPI is completely independent to issue their own resolutions, therefore this Institute is not obliged to grant a trademark registration even if this registration has been granted in other countries, which in practical terms means that even if we submit certified copies of trademark registrations granted in other countries IMPI can still refuse registration for the mark in Mexico.

3. Our Supreme Court has ruled that IMPI is not obliged to accept letters of consent and/or coexistence agreements to overcome senior trademarks that have been cited as barriers, because said documents are not expressly indicated in the Mexican IP Law as a valid option to overcome barriers.

Consequently, letters of consent and coexistence agreements are studied on a case by case basis and their acceptance depends on the criteria of the examiner in charge of the case, though in our experience we have noted the examiners in general are more prone to accept these documents and grant registration when the scope of protection of the involved marks is limited to the specific products/services of interest in each case or expressly excludes the products/services of interest of the counterpart.

4. All IMPI's resolutions can be appealed before the Courts in two possible stages.

Finally, it is very important to comment that a project to amend the Mexican IP Law and include an opposition procedure has been recently presented to our Congress and is currently being discussed by our law makers, therefore, even when we do not know when this project will be voted, we are closely monitoring the evolution of the situation and will readily inform our clients about the changes to the trademark registration process in Mexico, derived from this amendment in due course.

To read this article in japanese, please click here.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions