BY CARLOS REYES
The Mexican Trademark Office (IMPI) usually applies strict criteria concerning trade mark likelihood of confusion and distinctiveness. In order to determine marks’ confusing similarity, examiners base their exam on an “analysis of the similarities”, determining this from the existence of a common element and disregarding the marks’ overall impression.
Additionally, examiners almost never make any analysis of the different elements’ distinctiveness, so whether there are strong or weak elements is considered mostly irrelevant, and design elements have been consistently disregarded.
As an example of this, examiners have stated that: “as trademarks are signs derived of thehuman creativity, which purpose is to distinguish product or services from other of the same kind in the market, there is no reason to allow between them the existence of the slightest resemblance”. Concerning distinctiveness, IMPI has also denied distinctive signs on the basis that any suggestive informative content in relation or not with the product/services is often held as descriptive character.
This is why it is important to mention the criteria the IP Specialized Court of our Federal Court for Tax and Administrative Affairs (FCTAA) has been developing since its creation on 2009, by which this Court has been correcting IMPI. The Court has stated that confusing similarity and descriptiveness should always be based on the marks’overall impression, also defining the relevant consumer as a purchaser with average intelligence and “ordinary” caution. Additionally, the Court has repeatedly stated that when studying a mark it is important to determine its weak and dominant elements.
The Court has also separated suggestive from descriptive marks by analysing the cognitive effort their message requires from consumers, and has also stated that the meaning of descriptive foreign terms must be accessible to the consumer.
Source: Managing Intellectual Property Magazine, International Briefings, May 2010