Approach To Composite Marks Changed, Again

Managing Intellectual Property, November 2011

The Mexican Law of Industrial Property establishes in section IV of article 90, an absolute ground for refusal based on the descriptiveness of the mark. This prohibits registration of descriptive names, figures and threedimensional forms. However, it also provides that all the elements of the mark should be "considered as a whole". A harmonic interpretation of the Law would indicate that even when the wording portion of a mark is descriptive, if it contains other elements such as designs that are distinctive enough, the mark should be subject of registration, because the mark as a whole is distinctive. Unfortunately, IMPI's examiners have been inconsistent on this subject over the past 10 years. At first IMPI's criterion was to consider the designs and other elements as secondary elements, and refuse the mark for descriptiveness when the wording portion was descriptive, simply because the name is the form in which