Lately, IP practitioners have experienced the consequence of the most recent and out of the ordinary criteria that the examiners of the Mexican Institute of Industrial Property (MIIP) have developed when submitting a trademark application to a substantive examination. The application of these criteria matures in the issuance of unnecessary official actions that hinder the prosecution of some trademark applications and, consequently, increases the registration fees for the trademark owners.

What is it about these new criteria?

As we have experienced, some examiners are now considering that trademarks containing orthographical signs or numbers within their whole, which are normally filed as "word marks", should be filed now as "design marks" due to the fact that said signs or numbers supposedly are elements that comprise a design or parts of a specific logo.   

This new practice has raised the following issues:

i) The examiners have not yet defined or established this as a unique and uniform criterion thereof, that is to say, it is not a standard practice; and

ii) If the application is firstly filed as a word mark (nominative) and the MIIP issues an official action requesting us to amend the distinctive sign of interest from a word mark to a design mark, it is necessary to pay filing fees again and therefore the filing date will be changed. According with the Mexican Industrial Property Law (MIPL), if the distinctive sign sought to be registered is amended or modified, the amendment will be considered as a new filing, and therefore, as a new procedure.

As mentioned above, the criteria regarding this kind of cases are not unique and consistent. When facing this kind of cases, sometimes the Mexican examiners request the trademark applicants to amend the trademark and therefore to pay the new filing fees, meanwhile some other times they accept the mark as it was filed (it all depends on which examiner is studying the trademark application). This practice clearly leaves trademark owners in total legal uncertainty and in lack of defense.

As an example, Mexican examiners are not accepting a word mark as it was filed when it includes an orthographical sign such as a diaeresis "¨", the letter "Ç" (same that is recognized as an orthographical sign by the Dictionary of the Royal Spanish Academy), the signs "+", "..." and exponential numbers like (²). They are issuing official actions requesting the applicants to amend the mark to a design mark and to pay new filing fees.

However, when the filed mark includes an orthographical sign such as exclamation signs "!¡" or a hyphen "-", the examiners are currently not issuing any requirements and thus, the mark is allowed to be registered as a word mark.

The issuance of these official actions is increasing. Therefrom, the Mexican Association for the Protection of Intellectual Property, through its different Committees, is working closely with the MIIP in order to try to resolve this kind of situations.

Moreover, it is necessary that our authorities issue an official position in relation with the aforesaid situation and that the resulting provisions are incorporated in the MIPL or within its regulations, so there can be a better way of enforcement of IP rights. As well, it is necessary that our authorities have better communication with the Mexican IP Law Firms in order to work out these problems in an efficient manner for the benefit of the trademark owners.

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.