Non-Registrable Descriptive Trademarks

January 4, 2011
Non-Registrable Descriptive Trademarks

There are prohibitions for registering certain words, figures or three-dimensional forms as trademarks. Sections IVand VI of Article 90 of the Mexican Industrial Property Law contain the following two such restrictions, according towhich the Mexican Industrial Property Institute (Instituto Mexicano de Propiedad Industrial or IMPI) will denyregistration: (i) those “words, figures or three-dimensional forms that, considered along with their characteristics, aredescriptive of products or services sought to be protected as a trademark,” including “descriptive words or indicatorsthat in commerce serve to designate the nature, quality, quantity, composition, destination, value, place of origin ofthe products or period of production,” as would be the case with words such as SECADO RAPIDO (FAST DRYING)(for paints), SUPER FLEXIBLE (for tooling), DURABLE (for durable products); and (ii) “translations from otherlanguages, creative spelling variations or non-registrable artificial word constructions,” as would be when using thewords BREAD or BRED (for food products) or FAST DRYING (for paints). The cases to which these restrictionsapply apply are many and varied, as it is not uncommon for persons to pretend to register trademarks that eitheridentify the products or services that such trademarks apply to, sometimes using variations in either Spanish spellingor using a foreign language or creative variations thereof. Sometimes, an IMPI examiner who is not familiar with aforeign language being used may grant a registration to one such trademark, in which case such is subject tonullification as having been granted against the terms contained in applicable Mexican law. Therefore, it is importantto undertake an analysis of the descriptiveness of a trademark, notwithstanding in what language it may be presented,to avoid trademark registration proceedings that may be denied or easily nullified in the future.

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