MEXICO Law and Practice Contributed by: Victor Adames, Carlos Hernandez, Paola Becerril and Eduardo Saldaña, BC&B Law & Business
4.10 Refusal of Registration Article 173 of the FLPIP states a full catalogue of 21 provisions for the refusal of registration of trade marks on absolute grounds. These include: • technical or common names; • public domain three dimensional forms; • public domain holograms or those that are not distinctive; • descriptive signs; • isolated letters, digits and names; • translation, transliteration or artificial con - struction of unregistrable words; • signs consisting of imitations of government emblems or flags; • signs identical or similar to denominations of origin and/or geographical indications; • confusingly similar signs; • identical and/or confusingly similar signs to well-known or famous trade marks; and • bad faith signs. It is important to mention that the official action issued by the authority may be responded to by the applicant, which can seek to overcome the objection. Therefore, the official action of the refusal of the registration is not conclusive. As previously mentioned, the official action whereby IMPI provisionally refuses the registra - tion of a trade mark based on any of the provi - sions set out in Article 173 of the FLPIP may be responded to through arguments to try to over - come the obstacle. However, if the same is not successful, the denial of registration of a trade mark may be appealed before IMPI or the FCAA. 4.11 The Madrid System Mexico approved its adhesion to the Madrid Protocol on 25 April 2012 and the same came into force on 19 February 2013.
IMPI conducts a formal and in-depth examina - tion of the application and may require the fur - ther fulfilment of some requirements, such as specifications on the scope of protection, or any other formal issue. However, if IMPI finds dis - crepancies in the trade mark to be registered, this will require the filing of a new application. 4.8 Dividing a Trade Mark Application As stated in 4.4 Application Requirements , Mexico’s trade mark system does not allow multi-class applications; therefore, any division intended to be made from a certain application runs the risk of constituting a brand new appli - cation. 4.9 Incorrect Information in an Application Considering that trade mark registrations in Mexico constitute exclusive rights for the owner, and that the FLPIP states that a trade mark must be used as it was registered, having an incor - rectly granted registration may lead to problems around that registration’s use, if it is not the trade mark to be used, if it does not cover the exact goods/services that it distinguishes in com - merce, or if the correct titleholder may not have a certain exclusive right for the use of such trade mark if its name were erroneously provided. The incorrect information may be contested by third parties that may detect that the mark used is not the one that obtained its registration, or that its owner is not the person/entity entitled to use it. Those problems normally arise through litigation. It is possible to correct some information such as the name of the applicant if a clerical error or typo was made, the number of the class of inter - est covered by the trade mark, the registrant’s domicile, and/or priority.
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