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How to prevent classification actions

by Emilio Alabarran

The Mexican Trademark Office (MTO) has a two-step examination process. The first is the examination of formalities and the proper identification of goods or services, and the second relates to relative and absolute grounds of refusal. We focused our analysis on some practices regarding formalities examination, in particular based on the proper identification of goods or services issued by the MTO. Thus, there are some considerations to prevent most common office actions regarding classification of goods/services being taken into account:

1) Generic descriptions of goods or services are still allowed by the MTO if they are in accordance with the Nice Classification.

2) When an applicant claims the class heading for protection, goods or services covered by that application will be only those that are included in the class heading and not any additional good or service included in the alphabetical list of goods and services.

3) The MTO requires clarification of imprecise terms that can lead to confusion regarding correct classification of goods or services, such as “including but not limited to”, “among others” and “etcetera”.

4) Otherwise, wordings such as “especially”, “mainly”, “namely”, “such as” and “including” will be acceptable only when accompanied by a specification of the relevant products, which will be considered as an explanation of the product or service in a limiting manner.

It is a common practice of the MTO to request specification of “parts/fittings/accessories” since they are held to

be indefinite. For that reason it is advisable to file applications including a detailed specification of each “parts/fittings/accessories” for which protection is pretended. Excluding that wording could help to prevent future office actions. As in several countries, the MTO will always argue that final classification of goods and/or services relies on them. Thus in case of doubt about proper identification of goods or services, contacting your local specialist would be highly recommended. If you follow these suggestions it will be possible to prevent most office actions regarding classification of goods/services in Mexico.