Non-registrable Trademarks

• Published date: 25 November 2020
• Subject Matter: Intellectual Property, Trademark
• Law Firm: OLIVARES
• Author: OLIVARES

The new Federal Law for the Protection of the Industrial Property in Mexico, set to come into force on November 5, 2020, contains several relevant modifications regarding those trademarks considered to be 'non-registrable.' The general prohibition to register IP rights, which is applicable to trademarks when their content or form are contrary to morals and good customs, which had previously been obscure and applied at-will by the Patent and Trademark Office,- is gone from the new IP Law. The new regulation maintains only the prohibition relating to those marks deemed contrary to public order or those which contravene legal provisions.

The prohibition relating to generic words, phrases or figurative elements, which was defined and limited in the former IP Law as, related to technical names or common use names or figurative elements for the products or services, is defined under the new IP Law to include all those words, phrases or figurative elements that simply lack distinctiveness, which is clearer than the former drafting.

The prohibition concerning three-dimensional shapes in the public domain or, three-dimensional shapes in common use, or to shapes imposed by the products or services nature or functionality, or generally non-distinctive shapes, which erroneously included a mention to industrial designs, has been...