Distinctive Signs and Symbols that May Not be Registered in Mexico

September 17, 2010
Distinctive Signs and Symbols that May Not be Registered in Mexico

As is the case with many intellectual property laws around the world, Mexico’s Intellectual Property Law (Ley de la PropiedadIndustrial) establishes in article 90 a list of names, figures or three-dimensional forms that may not be registered, as is the case withtrademarks that are similar or previously registered or applied for, including those that reproduce or imitate shields, flags, official seals orsigns and guarantees, geographic names and maps, when such signs indicate the origin of the products or services covered, and whichgenerate confusion or possible error. There are 17 different bases for finding a distinctive sign to be ineligible for registration. Two ofthese legal provisions stand out given the frequency that the ineligibility of marks occurs. The first case is when the “names, figures orthree-dimensional forms, considered together with their characteristics, are merely descriptive of the products or services that the markwould be protected under. Included in this category as descriptive or indicative words that designate the kind, quality, quantity,composition, destination, value, place of origin or time of production of the products, which may not be registered.” This prohibitionapplies at all times given that there are many cases where parties seek to register trademarks and, allegedly to improve marketpenetration, but the law does not allow such names, figures or forms describing a product or service to be granted exclusive use.However, there is no legal provision prohibiting the registration of so-called “evocative marks,” which without describing the product orservice to be covered, nor using the term, form or usual designation, suggest characteristics of the products or services. In this case, eventhough it is not valid to provide a direct description in the trademark application, one may evoke or suggest the idea of a product orservice. The second case is when parties seek to get around the prohibition on merely descriptive trademarks in languages other thanSpanish, or cleverly change the spelling of names to be registered, and all of these causes are sufficient to allow Mexican authorities toreject registration of the proposed mark.

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