Citation of Prior Registration or Legal Impediment in Registration of Distinctive Signs
When choosing and applying for protection for a nominative mark, a three-dimensional mark, a graphic mark, a commercial notice, a trade name or some other distinctive sign, by registration with the Mexican Institute of Industrial Property (IMPI), the application will be examined to identify that there are no legal reasons preventing the granting of the registration, but if the authority detects that the proposed sign may be in one of the cases of impediment established by the Industrial Property Law (LPI), it shall inform the applicant of the situation by means of a prior appointment or legal impediment, with an initial period of two months to provide the authority with the arguments it deems necessary in order to circumvent the impediment and obtain registration and protection of the distinctive sign.
Among the various reasons that exist for notifying a prior appointment or legal impediment to the registration of a distinctive sign, we have the following:
One of the main reasons is that the distinctive sign or mark is descriptive, that is, used as part of its denomination, technical names, common use names, words, names, phrases, or figurative elements that, in the common language or in commercial practices, they have become common or generic elements of the products or services that it is intended to protect or, failing that, evoking characteristics of quantity, composition, destination, value, place of origin and time of origin. Ex. The best Sodium Chloride (for a company that refines salt), Restaurant (for restaurant services), Harvest 91 (for alcoholic drinks).
Another reason is that the distinctive sign or mark is considered to be in the public domain, has been made in common use, whether in the usual or ordinary form or imposed by the nature or functionality of the products or services it offers. Ex. A fork (for silver forks).
The next reason is that the distinctive sign or mark is neither distinctive nor original in that it is composed of letters, digits or isolated colours, as well as marks which imitate or reproduce coats of arms, flags, emblems of countries, municipalities, official institutions or organizations, signs, stamps, coins, maps, medals, decorations, etc. Ex. The flag of Spain (for any product or service).
Similarly, another reason for preventing the protection of a distinctive sign or mark is given when the examiners scrutinize the application for registration and consider that there are identical or similar marks registered or applied for prior to the proposed mark, either because there is similarity in their names, logos, descriptions, conceptualisation, and which apply to the same or similar products or services.
It also occurs when distinctive signs or trademarks violate Copyright or Designations of Origin, Geographical Indications, Trade Names, Famous Marks or Well-known Marks.
And as one of the last and least usual reasons is that the distinctive sign or mark in any of its elements is contrary to public order, morality or morality. Ex. The bastard (for a taqueria).
Now that you know some of the reasons why you can notify a prior appointment or legal impediment to the registration of a distinctive sign, It is important to take them into account before starting your procedure and if you have already been notified of any of these reasons it is important to give a reply so as not to lose the opportunity to defend and continue the registration process for your distinctive sign.
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