Examiners adopt strict trade mark practice

April 28, 2010

BY ALONSO CAMARGO
PARTNER

AND GUILLERMO A. BALLESTEROS

MEXICAN TRADE MARK EXAMINERS HAVE RECENTLY BEEN OVER-STRICT IN CLASSIFICATION AND IN FINDING MARKS TO BE DESCRIPTIVE. ALONSO CAMARGO AND GUILLERMO BALLESTEROS OF OLIVARES & CIA ARGUE THAT THEIR PRACTICE DISADVANTAGES APPLICANTS AND SHOULD BE CHANGED

Although Mexico became party to the Nice Agreement in March 2001, the international classification of products and services had been adopted in our trade mark system since 1989, and was formally incorporated into the Regulations of the Mexican Industrial Property Law in 1994. Since then, the interpretation and applicability of this classification by the Mexican Trade Mark Office has gone through certain changes, in an effort to improve the protection obtained through a trade mark registration and thus to provide certainty to trade mark owners to enforce their rights, based on the actual scope of protection of their registrations.
There is no doubt that classification of products and services is not always an easy task, bearing in mind the extraordinary developments in the manufacturing, commercialization and services industries, and the sophistication of products and services offered in commerce today.
However, during the past few years the Mexican Trade Mark Office has adopted new criteria during the formalities examination, based on the fact that, if certain specific products or services do not appear exactly in the Nice classification of products and services, the examiners issue official actions, requesting that the applicants clarify the products or services by amending the description of the products or services in strict accordance with the alphabetical list of products and services provided in the classification.
Of course, this new practice is absolutely absurd and contrary to the true intention of the Nice classification. On one hand, it is obvious that the alphabetical list of products and services established in the Nice classification is simply indicative, and not limiting, as it would be impossible to collect all the existing products and services in any classification system; on the other hand, the Nice classification system incorporates explanatory notes in connection with each of the 45 classes, which provide certain parameters to assist in determining the correct classification of specific products and services not expressly included in the alphabetical list, based on the nature of those products or services.
Unfortunately, these kinds of classification requirements are causing important delays in the prosecution of trade mark applications, as well as extra costs for trade mark owners in connection with the professional and government fees associated with filing responses to such requirements.
Needless to say, the Mexican Intellectual Property Association is working closely with the Mexican Institute of Industrial Property Authorities in an effort to amend this practice to the benefit of the Mexican trade mark system.
However, until these classification criteria are amended by the Mexican Trade Mark Office, prior to filing a trade mark application in Mexico it is advisable to draft descriptions of products and services adapted as much as possible to the alphabetical list of products and services provided by the Nice Classification System, in order to improve both the time- and cost-effectiveness of obtaining a trade mark registration.
Objections to inherent registrability of composed marks
The Mexican Industrial Property Law (IPL) contains a specific chapter dealing with absolute and relative grounds for refusals. Among these grounds, section IV of Article 90 of the IPL establishes an absolute ground for refusal based on descriptiveness, establishing the following:
Article 90 The following are not registrable as trade marks:
IV Names, figures and three-dimensional forms which, considering their characteristics as a whole, are descriptive of the products or services for which protection is sought as a trade mark. Included in the above hypothesis are descriptive or indicative words used in trade to designate the species, quality, quantity, composition, end use, value, place of origin of the product or production era.
The above provision prohibits the registration of descriptive names, figures and three-dimensional forms, which is one of the main principles of trade mark protection systems universally.
The issue here is that this provision contains an exception that such names, figures and three-dimensional forms should be descriptive “considering their characteristics as a whole”. This means that, if only a single element within the trade mark is descriptive, that should not be sufficient to make it non-registrable. Instead, all the elements making up the mark must be descriptive in order that this condition is met.
Consequently, while the textual portion of a trade mark may be descriptive or indicative of “the species, quality, quantity, composition, end use, value, place of origin of the product or production era”, if that text is accompanied by other distinctive elements, such as another word, a design or a stylized lettering, the trade mark should proceed to registration, bearing in mind that the distinctiveness of the mark would rely on the distinctive elements making it.
The above comments derive from a unified interpretation of section IV of Article 90 of the IPL, with respect to the prohibition established in section V of Article 90, where “isolated letters, digits or colours, unless they are combined or accompanied with elements such as signs, designs or words, which provide them with a distinctive character” (emphasis added) are considered unregistrable.
Under the Mexican Trade Mark Office’s current criteria in conducting examinations on absolute grounds, the Office is only considering the textual portion of composed marks to assess descriptiveness. But, in fact, when considering a composed mark as a whole, the presence of another distinctive word, a design or stylized lettering could provide enough distinctiveness to the applied-for mark to qualify for trade mark protection.

Objections to marks based on a Spanishtranslation
As stated above, Mexican examiners are not complying with a reasonable and logical examination process concerning the correct applicability of the Nice Agreement, resulting in the issuance of office actions requesting clarification or amendment of the goods or services sought to be covered, and of initial refusals on grounds of lack of distinctiveness and descriptiveness according to Article 90 Section IV. The Mexican Trade Mark Office is also issuing official actions objecting to the registration of a certain mark when its translation into the Spanish language makes it descriptive of the goods or services intended to be covered.
It is well known that Mexico and the US have an important commercial business relationship and due to this fact US companies are very interested in protecting their marks in Mexico. Therefore many of the marks that are filed before the Mexican Trade Mark Office are in the English language.
In this regard, Article 90 Section VI of the IPL, in effect from October 1 1994, reads:
The following are not registrable as trade marks:
Section VI Translation into other languages, capricious orthographic variations or artificial construction of non-registrable words.
Based on this Article, the Mexican Institute of Industrial Property has adopted certain criteria whereby trade marks in the English language are often denied as, in the examiner’s opinion, the proposed mark comprises non-registrable wording when translated into the Spanish language and as a consequence it becomes descriptive.

We do not agree with the examiners’ criteria, considering that English formative marks should not always be considered as non-registrable when translated into Spanish. As a matter of principle a trade mark must be examined as a whole considering all elements and not by separating out each of the elements of the mark and then translating each element into the Spanish language to determine that a mark comes under the prohibition of Article 90 Section VI. It is often difficult to obtain the exact translation into Spanish of a mark, and even more difficult when the mark is comprised of words which as a whole have no specific meaning, but rather are a term that was created from the imagination. If this is the case, the mark is registrable even if it is comprised separately of words which in Spanish could have a certain meaning.
For instance, the Mexican Trade Mark Office refused registration for trademark Sawzall filed to cover goods in class 7. The examiner issued an official action based on the following finding:
The proposed trade mark falls under the prohibition provided in Article 90 Sections IV and VI of the Industrial Property Law, as its translation into the Spanish language results in a capricious orthographic variation and description of the goods intended to be covered.
This initial refusal is of course totally out of context and groundless considering that the word Sawzall does not have any specific meaning in either Spanish or English; therefore, the proposed mark should be registrable. The examiner conducted an erroneous examination by separating the mark in two words namely Sawz and All, resulting in the examiner’s point of view that the mark was descriptive of the goods intended to be covered (Article 90 Section IV of the IPL) and whose translation into Spanish was the capricious orthographic variation of non-registrable words (Article 90 Section VI). This of course does not have any legal ground considering that the proposed mark is not Sawz All but Sawzall which has no meaning. Bearing in mind the fact that this mark has no meaning, then it cannot be considered to be descriptive of the goods intended to be covered.
In order to secure registration for Sawzall, pertinent legal arguments were filed against the initial refusal, pointing out that the proposed mark is comprised of one word created from the imagination, which does not describe nor is indicative of the goods intended to be protected in class 7.
Furthermore, it was proved that there was no Spanish translation of the mark Sawzall and that this mark should be considered as a coined term, and therefore be registrable under the applicable Mexican law. Additionally, it was also argued that the term “descriptive” is defined as the purpose of describing something, and this does not apply to this particular case. The examiner after studying and considering the arguments decided to grant registration for Sawzall to cover the goods of interest.
We believe it is important to say that the Mexican trade mark examiners must be careful when conducting the inherent registrability examination, based on the fact that a mark must be analyzed as a whole comprising all of its elements and not separating each element of the mark, trying to find unnecessary grounds for refusal.
As commented above, the Mexican Trade Mark Office often refuses registration of composed marks on the ground that one part of the mark contains a descriptive term, notwithstanding the fact that the mark is also comprised of an additional element which certainly gives sufficient distinctiveness to the proposed mark and therefore it is registrable according to our applicable law.
On the other hand, the Mexican Trade Mark Office refuses the registration of trade marks based on Article 90 Section VI when the mark is comprised of only one word and is created from the imagination. The proposed mark is not properly analyzed as the examiner separates the mark and studies it as a composite mark, and then translates the elements into Spanish so as to base its refusal on the fact that the distinctive portion of the mark is not sufficiently distinctive to allow the registration.
Unfortunately, this recent trend in the Mexican Trade Mark Office has resulted in numerous refusals of composed marks based on descriptiveness. Some of these cases have been appealed before the Federal Court of Tax and Administrative Affairs (FCTA) in an effort to reverse the Mexican Trade Mark Office interpretation of Article 90 Section IV of the IPL. So far no decisions form the FCTA have been issued, but we hope to obtain favourable decisions in order to reverse the interpretation of the Mexican Trade Mark Office.
Source: Managing Intellectual Property Magazine. Americas IP Focus 2006.