For the past few months, the Mexican Institute of Industrial Property (IMPI), together with several members of the Mexican Association for the Protection of Intellectual Property (AMPPI), have been working towards the creation of a Trademark Examiners’ manual.
For many years, IMPI’s trademark examiners worked without specific examining guidelines, which resulted in several inconsistencies of criteria, particularly when issuing office actions regarding classification issues, objections as to inherent registrability and objections based on the existence of third parties senior rights.
Consequently, this effort was necessary in order to establish appropriate guidelines for the Trademark Examiners to conduct both, the formalities examination and the absolute/relative grounds for refusal examination, thus applying uniform criteria during prosecution of trademark applications, and second and most important, providing legal certainty to the applicants when applying for registration of new trademarks.
This task has been divided into two stages, namely, a first part consisting in the creation of guidelines for the formalities examination, which has been almost finalized and should be published in the Mexican Industrial Property Gazette within the next couple of months; and a second part consisting in the creation of guidelines for the absolute/relative grounds for refusal examination, which discussions will begin within the next weeks with the aim of finalizing them by the end of this year.
Of course, these guidelines are being redacted in strict accordance with the Mexican Industrial Property Law and the Regulations thereof currently in force.
Needless to say that IMPI’s initiative, with the support of members of AMPPI, is welcome by all trademark practitioners in our country. We trust it will result in increased consistency and predictability when prosecuting trademark applications in Mexico and ultimately decreasing legal costs for foreign and domestic companies who own large trademark portfolios.