Specialised IP court corrects IMPI
The Mexican Trademark Office (IMPI) usually applies strict criteria concerning the likelihood of confusion and distinctiveness in relation to trademarks. In order to determine whether one mark is confusingly similar to another, examiners base their examination on an analysis of the similarities, determining this from the existence of a common element and disregarding the mark's overall impression.
Examiners rarely analyse the distinctiveness of the different elements. Therefore, whether there are strong or weak elements is generally considered irrelevant, and design elements have been consistently disregarded.
As an example of this, examiners have stated that:
"As trademarks are signs derived of the human creativity, which purpose is to distinguish product or services from other of the same kind in the market, there is no reason to allow between them the existence of the slightest resemblance.”
Concerning distinctiveness, the IMPI has also denied distinctive signs on the basis that any suggestive informative content in relation to the product/services is often held to be of a descriptive nature.
Since its creation in 2009, the IP Court of the Federal Court for Tax and Administrative Affairs has been developing criteria in this regard, thereby correcting the IMPI. The court has stated that consideration of confusing similarity and descriptiveness should always be based on the mark's overall impression, and the relevant consumer should be defined as a purchaser of average intelligence and ordinary caution. In addition, the court has repeatedly stated that when studying a mark, it is important to determine its weak and dominant elements.
The court has also separated suggestive marks from descriptive marks by analysing the cognitive effort that their message requires from consumers, and has stated that the meaning of descriptive foreign terms must be accessible to the consumer.
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