It is well known that in Mexico a multiclass system is not accepted, thus, when a person or a company decides to file a trademark application before the Mexican Institute of Industrial Property, it becomes necessary to have an appropriate advice.
Continuing with the mentioned above, when someone decides to file a trademark application, the first question is how can I protect my brand or is it possible to get a trademark registration for my products or services, and what is the prosecution process to obtain a trademark?
First, the recommendation is exploring what is exactly the product or service to be protected since as we previous mentioned, our system is not multiclass and the trademark application must be filed separately in relation to the goods or services of interest, so in case you produce different products and those may be protected in different classes, the number of trademark applications will be different.
After the scope of protection is found and the products or services are classified according to the Nice Classification, it is possible to move further with the application, but to determine which class you need for your products and services it is important to understand the Nice classification and the principle of specialty, which determines that products or services must be registered according to the dispositions of the Mexican Industrial Property Law and its regulation.
One of the most common practices in Mexico is that applicants file a trademark application according to the heading of the class, believing that in this way, their trademark will protect all the products or services covered by the class, which in fact is a big mistake and the trademark will be in risk of facing a nullity action based on the grounds of being granted against the applicable regulations.
Please let us explain more about this and the importance of filing a trademark application correctly and according to the list of products and services of the Nice Classification.
Articles 89, section I, 93, 151 section I of the Mexican Industrial Property Law, as well as the articles 57 and 59 of the Mexican Industrial Property Law Regulation, state that a trademark application must be filed according to the List of products and services of the Nice Classification, in a SPECIFIC WAY and not in a general form.
For many years, trademarks were filed according to the heading of the Class, this means in a general and not in a specific way, under the impression that if you filed a trademark with the heading, you were protecting all the products or services.
Due to this confusion or misbelieve, criterion has chanted an, authorities have issued a new standard related to the Nullity of a trademark, when the same was granted for the heading of the class and not in accordance with the alphabetic list of products or services.
The dispute on that nullity action is that a trademark that was filed under the heading of a class and not according to the list of the products or services provided by the Nice Classification, this would imply an irregularity on the registration and if for example the owner of this trademark launched an infringement action against an infringer, the infringer could counter attack with a nullity action arguing that the trademark used as the base of the infringement was null because it was not granted according to the list of the Nice classification.
In this sense, the authorities were forced to study the nullity action before the infringement action, since in case the trademark used as legal interest was declared null, the infringement action must be rejected.
After several discussions, the Federal circuit court as a final authority determined that a trademark which was registered according to the heading of the class, is null, since the Mexican Industrial Property Law provisions, state that trademarks must be registered by specifying the products or services protected, only according to the list of the Products or services of the Nice classification, but never according to the heading, since the heading is only a reference to the products or services classification, but not the classification indeed.
Finally, the strict criteria issued was that if a trademark is registered in a general way and not according to the list of products of the Nice Classification, this trademark will be considered null, therefore in the special case, mentioned before, the potential infringer overcame the infringement action and the owner of the trademark base of the infringement, lost his trademark.
Now a days the debate is focused on determining how strict is the mentioned criterion and if there are any fresh resolutions determining that in case a trademark registration was granted according to the heading will it be null or not, concluding that as the wording of the heading has a product listed on the group of the classification, the trademark registration will be considered valid but will only if it covers the product which is also listed in the Nice Classification.
That's why is important to protect your trademark ...... and do it well. That is why at Iberbrand we keep updated on criterions in order to provide the best advice for our clients.
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.