IMPI changes approach to trade mark reclassification

by Liliana Rojas

Trademark registrations used to be granted based on a request by the applicant to obtain protection for certain products or services that were initially classified according to a national classification. Eventually Mexico adhered to the Nice Agreement whereby the international classification system was adopted. The International Classification of Goods and Services for the registration of trademarks (or Nice Classification) has had various versions since its origin. The 10th edition is in force since January 1 2012. Previously, when issuing a renewal certificate, the Mexican Institute of Industrial Property (IMPI) used to reclassify the goods or services that were originally protected, according to the corresponding edition of the International Classification. In consequence, a mark obtained in a particular national class could now cover goods classified in several international classes.

Unfortunately, in practice renewal certificates had erroneous reclassifications or omissions, making it necessary to submit a brief to request that the reclassifications be issued correctly. However, since last year, IMPI began issuing official communications informing us that renewal certificates will no longer include any reference to the reclassification (if any), and now the reclassifications will only be performed internally in certain official records only available to our authorities.

We believe that IMPI’s decision limits legal certainty to industrial property holders as they no longer may obtain an official communication containing the reclassification of goods or services covered by their registrations, and they now depend absolutely on the good criteria of our authorities, which seems not to be the best outcome for trade mark owners.