On September 20, 2012 it was published in the Federal Official Gazette an Agreement with the guidelines for the interpretation and application of the Nice Agreement related to the International Classification of Goods and Services for the purpose of the Registration of Marks, applicable during the Formal Examination at the Mexican Patent and Trademark Office (MPTO).
There are three main issues that must be taken into consideration, which clearly affects, in a positive way, the actual practice held by the MPTO:
- The purpose and the scope of the Class Headings of the International Classification;
- Specification of the goods involved or related when using the wording “the bringing together, for the benefit of others, of a variety of goods…” within international class 35; and
- The acceptable and non acceptable wordings to be used within a proposed description of goods and/or services.
This Agreement would be in force and applicable within ten (10) working days, counted from the next day of its publication in the Federal Official Gazette.
Therefore, starting on October 04, 2012:
- The Class Headings of the International Classification have the sole purpose of establishing, in general terms, what kind of goods/services can be included within each international class.
- The use of Class Headings is no longer considered to be covering all of the goods/services of the classes involved within the International Classification.
- Any application filed using any of the Class Headings of the International Classification would only cover the goods/services specifically mentioned within the Class Heading involved, meaning that the description to be filed must specifically include the real goods/services of interest.
- If an application is filed using the wording “the bringing together, for the benefit of others, of a variety of goods…” within international class 35, the MPTO could issue office action requesting specification of each of the goods involved.
- When a good or service specified with the proposed description of an application does not appear in the International Classification of Goods and Services, in the Class Heading descriptions, Complementary list of Goods and Services issued by the MPTO and can not be classified in accordance with the rules established in the International Trademark Classification, the applicant, optionally, may attach to the description of goods or services provided in the application, a concise explanation in which clarifies or describes the good or service wanted to be described.
The concise explanation referred above, is only an explanation of a complex good or service and will not be part of the description contained in the Registration Certificate.
- The acceptable wordings to be used within a proposed description of goods/services are:
- Such as; and
- The non acceptable wordings within a proposed description of goods/services are:
- Included but not limited to;
- Amongst others; and
The publication of this Agreement clearly prove the willingness of the authority to have a better IP system in Mexico, allowing the private sector to have an understanding of the criteria to be used by the Examining Attorneys at the MPTO on how the International Classification is going to be handled and certainly would avoid unnecessary delays and expenses during the registration process.