by Sofía Arroyo
Managing Intellectual Property, November 2011
The Mexican Law of Industrial Property establishes in section IV of article 90, an absolute ground for refusal based on the descriptiveness of the mark. This prohibits registration of descriptive names, figures and threedimensional forms. However, it also provides that all the elements of the mark should be “considered as a whole”. A harmonic interpretation of the Law would indicate that even when the wording portion of a mark is descriptive, if it contains other elements such as designs that are distinctive enough, the mark should be subject of registration, because the mark as a whole is distinctive. Unfortunately, IMPI’s examiners have been inconsistent on this subject over the past 10 years. At first IMPI’s criterion was to consider the designs and other elements as secondary elements, and refuse the mark for descriptiveness when the wording portion was descriptive, simply because the name is the form in which the consumer calls the mark, which according to the examiners always made the name the principal and most important element of the mark. Then the criterion changed and for some time IMPI allowed registration of composed marks with a descriptive wording portion, provided that the application was filed as a design mark with an express disclaimer for the descriptive words. Although this criterion was not completely accurate because the mark was not being analysed as a whole, it was an improvement and made it possible to obtain some protection for composite marks with a descriptive wording element. However, the criterion has changed again. IMPI’s reasoning is now simple: if one of the elements of the mark, either the name or the design, are regarded as descriptive by the examiner, the whole mark will be considered descriptive and refused. Sadly the examiners are again dividing the elements of the mark instead of analysing them as a whole, as required by the Law, and under these circumstances the trade mark applicants are being forced to appeal IMPI’s refusals before the Federal Courts in an attempt to try to overturn the refusal and secure registration.