Terms that May Not be Registered as Trademarks

November 12, 2009
Terms that May Not be Registered as Trademarks

The Mexican Industrial Property Law establishes that technical names or commonly used names of products orservices such as words that in current language or commercial practices have been converted into the usual orgeneric designation of such item, may not be registered as trademarks. This legal prohibition is completelyunderstandable given that if a technical name or commonly used word were permitted to be registered todesignate a product or service, this would grant the acquirer of the mark a competitive advantage against thirdparties by prohibiting the use to such third parties of the words, figures or forms, that are technical or common bynature, to distinguish their products. This would contradict the principle that a registered trademark must bedistinct. Many different strategies have been employed to attempt to register these types of names, figures or three-dimensional forms, so one must keep in mind that from the beginning of a trademark application, even ifthe authorities grant a registration (even if by error, inadvertence or lack of understanding) it is always possiblethat a trademark may be nullified according to the terms of Mexico’s trademark law. In addition, it is worthnoting that trademarks have existed which, at a given time, were distinctive symbols that serve to distinguishproduct or services covering its use in a class or kind, but over the passage of time, such terms becamegenerically recognized in commerce. This latter case is exactly the scenario in which a validly registeredtrademark could be cancelled, based on a loss of its distinctive character, which is a topic to be taken up in futurenotes.

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