Carlos Hernández November 17 2008 Foreign Trademark Rejected as Descriptive? Don't Give Up Becerril Coca & Becerril SC | Intellectual Property - Mexico Carlos Hernández Intellectual Property In recent years trademark applicants have faced difficulties in registering certain trademarks because of criteria developed by the Mexican Institute of Industrial Property. Rejections, frequently based on strict but inconsistent grounds, are mostly issued against trademarks in the form of compound foreign-language words, which are invented to evoke a specific idea. Such a rejection can force an applicant to modify or abandon its commercial strategy.Experts have argued persuasively that trademarks which should be entitled to registration are frequently rejected by the institute's examiners on incorrectly determined grounds of descriptiveness - the examiners often divide the elements of the trademark incorrectly and consider the component elements on the basis of an inaccurate Spanish translation. This translation of the component words is often considered descriptive of the goods or services to be protected. Thus, the examiner considers the trademark to be non-distinctive and therefore unsuitable for registration. Although the guidance required to perform an adequate examination of such a trademark is rooted in the fundamentals of Mexican trademark law and in the precedents issued by the competent Mexican courts,(1) the institute's practice in applying its criteria is unlikely to change.However, applicants should not be discouraged by a refusal on such grounds, since trademark protection can be obtained through the courts by filing an appeal against the official trademark rejection and arguing that the examination was incorrect.Most applications for trademark registration which are rejected by the institute on such grounds are subsequently granted if taken to appeal, many being won on the basis that the institute's examination was groundless and inadequate. A July 2008 decision by the Federal Court for Tax and Administrative Affairs stated that the institute's examiners must study a trademark in the form in which it is filed - an approach which explicitly precludes the examiners' longstanding practice of arbitrarily dividing trademarks. Furthermore, the court ruled that if a plaintiff can prove that its trademark as filed does not exist in the foreign language in which an issue of descriptiveness arises, the trademark cannot be deemed descriptive and the institute must grant registration.This confirms that applicants should not be discouraged by an initial refusal by the institute, as experienced counsel and legal instruments for appealing such decisions are readily available to satisfy their commercial needs.An obvious disadvantage of obtaining trademark registration through the appeals process is that litigation can be protracted and costly. Nevertheless, the chances of reversing a refusal on these grounds are high in view of the precedents issued by the courts and the criteria confirmed by the recent decision.For further information on this topic please contact Carlos Hernandez at Becerril, Coca and Becerril SC by telephone (+52 55 5263 8730) or fax (+52 55 5263 8731) or by email ([email protected]).Endnotes(1) Supreme Court of Justice, federal circuit courts and Federal Court for Tax and Administrative Affairs.