Trademark negative and its solutions.

­Some people decide to carry out the process of application for registration of a trademark before the Mexican Institute of Industrial Property, on their own, without consulting a specialist in the matter, situation that, in most cases, causes a trademark negative.

The Mexican Institute of Industrial Property has the power to grant trademark registration titles, and may also issue a trademark refusal. The causes of a trademark negative are diverse, mainly arise when there is a phonetic, graphic or conceptual confusion that is generated between the trademark applied for and that or those that have been previously registered, or by some legal impediment.

However, even after the Mexican Institute of Industrial Property issues a resolution denying the registration of the trademark applied for, there are several solutions:

• Apply for registration of another mark. This solution becomes favorable when the trademark has not been used, however it is counterproductive when the applicant has already made use of its trademark, since it can discredit the advertising of the same;

• Remedy of review. This is processed before the Mexican Institute of Industrial Property, however it is not recommended, since it is the same authority that resolves, which causes most of its resolutions only confirm the trademark negative;

• Administrative Litigation Trial. This is being dealt with by the Federal Court of Administrative Justice and is the best way to combat refusal of registration, although it has certain formalities, which means that such a trial must be conducted by lawyers who are specialists in the field, to obtain a favourable ruling. It is important to mention that for the processing of this, there is a term of 30 working days, counted from the notification of the refusal of trademark registration.

In Bandala | Díaz | García we have professional experts in the field of Intellectual Property. If you are thinking of registering your trademark, we can provide you with the best advice for obtaining your registration, or, if this was denied, we have enough litigation experience to combat the refusal of such registration.

LEGAL NOTICE

The main purpose of this information is to provide guidance to the general public. It does not replace the provisions of applicable law. Nor does it replace the specialized legal advice or consultancy that can be offered by any of the lawyers and/or accountants of Bandala | Díaz | García