BY SOFIA ARROYO
MANAGING INTELLECTUAL PROPERTY, INTERNATIONAL BRIEFINGS, APRIL 2007
Section IV of article 90 of the Mexican Law of Industrial Property (IPL) establishes an absolute ground for refusal based on the descriptiveness of the mark. This provision prohibits the registration of descriptive names, figues and three-dimensional forms. However, it also contains an exception in that all the elements and characteristics of the mark should be “considered as a whole”.
Article 90 suggests that, if the wording part of a composite mark is descriptive but the mark contains other elements such as designs or stylized lettering that are distinctive, then the mark should be registrable because when considered as a whole the elements are distinctive.
This situation is relevant because until recently the Mexican Trade Mark Office’s (MTO) rule when analyzing the descrptiveness of composite marks was to disregard the designs and other elements and consider the mark to be descriptive when the wording portion of the mark was descriptive.
Nevertheless, this regrettable rule has recently been modified and the MTO is allowing registration for composite marks with a descriptive wording part, provided that the corresponding application is filed as a design mark with an express disclaimer of the descriptive words.
With this new criterion the MTO will grant protection for the design and even for the style and size of letter in which the mark is written, without granting protection for the words.
Now, even though we consider that this new approach is not completely accurate because the mark is not being analyzed as a whole, as required by the IPL, it represents an advance and opens the possibility to obtain some protection for composite marks that include a descriptive wording element.
Source: Managing Intellectual Property Magazine, Apr 2007.