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The Mexican Law of Industrial Property establishes in section IV
of article 90, an absolute ground for refusal based on the
descriptiveness of the mark. This prohibits registration of
descriptive names, figures and threedimensional forms. However, it
also provides that all the elements of the mark should be
"considered as a whole". A harmonic interpretation of the
Law would indicate that even when the wording portion of a mark is
descriptive, if it contains other elements such as designs that are
distinctive enough, the mark should be subject of registration,
because the mark as a whole is distinctive. Unfortunately,
IMPI's examiners have been inconsistent on this subject over
the past 10 years. At first IMPI's criterion was to consider
the designs and other elements as secondary elements, and refuse
the mark for descriptiveness when the wording portion was
descriptive, simply because the name is the form in which the
consumer calls the mark, which according to the examiners always
made the name the principal and most important element of the mark.
Then the criterion changed and for some time IMPI allowed
registration of composed marks with a descriptive wording portion,
provided that the application was filed as a design mark with an
express disclaimer for the descriptive words. Although this
criterion was not completely accurate because the mark was not
being analysed as a whole, it was an improvement and made it
possible to obtain some protection for composite marks with a
descriptive wording element. However, the criterion has changed
again. IMPI's reasoning is now simple: if one of the elements
of the mark, either the name or the design, are regarded as
descriptive by the examiner, the whole mark will be considered
descriptive and refused. Sadly the examiners are again dividing the
elements of the mark instead of analysing them as a whole, as
required by the Law, and under these circumstances the trade mark
applicants are being forced to appeal IMPI's refusals before
the Federal Courts in an attempt to try to overturn the refusal and
secure registration.
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