Recently, the examiners of the Mexican Institute of Industrial Property (MIIP) have adopted certain criteria that bring about the issuance of unnecessary official actions that hinder the prosecution of some trademark applications and increase the registration fees for the trademark owners.

It is now frequent to receive official actions whereby the examiners request the applicants to further specify some of the goods or services contained within the scope of protection in order to determine if said goods/services are correctly classified.

The examiners have established as a criterion the refusal of goods or services that do not appear exactly as they are stated in the List of the Ninth Edition of the International Classification of Goods and Services.

The aforesaid criterion is very strict since the International Classification of Goods and Services is only a guide to help trademark owners to determine the correct classification of the goods and/or services of interest. In fact, the booklet contains a chapter of general remarks and one with the list of classes with explanatory notes that serve as a guide for goods and services that are not contained explicitly in such list. This is due to the fact that it is impossible to insert all of the goods/services that exist.

Another criterion consists in refusing registrations of phrases as trademarks.

In this regard, the examiners issue official actions whereby they request the applicant to protect a phrase as a slogan and not as a trademark arguing that the main purpose of the phrase is to announce/advertise goods or services and not to distinguish them in the market.

It is necessary to mention that the Mexican Industrial Property Law does not authorize the MIIP to determine if the nature of the distinctive sign to be registered is to announce or to distinguish.

Moreover, the Mexican Industrial Property Law does not exclude the possibility to register phrases as trademarks.

On the other hand, the examiners are refusing trademarks for considering that the mark to be registered lacks distinctiveness or is descriptive of the goods sought to be covered. The main issue is that in most of these cases, the examiners are omitting to mention the reasons that motivate them to consider that the mark is descriptive or that lacks distinctiveness.

It is necessary to request examiners to start providing the applicants with a wider and better explanation/motivation of the reasons of the issuance of the official action in order to be able to defend the owners rights.

The issuance of all of the aforesaid official actions is increasing; however, the Mexican Association of Intellectual Property through its various Committees is working closely with the MIIP in order to try to resolve this kind of situations.

It is necessary that our authorities have better communication with the Mexican IP Law Firms in order to try to avoid these problems for the benefit of the trademark owners.

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