First Specialized IP Chamber precedents published
Legal updates: case law analysis and intelligence
The first precedents of the Specialized IP Chamber of the Federal Court of Tax and Administrative Affairs have been published.
The IP Chamber began operations in January 2009. It has jurisdiction to review cases involving trademarks and other distinctive signs, patents and authors’ rights. It may review the validity of decisions issued by the Mexican Institute of Industrial Property and the National Institute of Authors' Rights (for further details please see "New specialized IP section begins operations").
The first 43 precedents of the IP Chamber were published in the August 2009 edition of the Federal Court of Tax and Administrative Affairs Review. The precedents may be classified as follows:
- trademark cases - 36;
- slogan cases - 4;
- copyright cases - 2; and
- utility models cases - 1.
The trademark precedents may, in turn, be classified as follows:
- likelihood of confusion - 11;
- procedural issues - 15;
- competence of the IP Chamber - 2;
- descriptiveness - 6; and
- suggestiveness - 2.
The most important principles set forth by the IP Chamber with regard to trademarks may be summarized as follows:
- There may be a likelihood of confusion between a Spanish word mark and another word mark in a foreign language.
- The phonetic similarity between two word marks must be assessed based on the number of syllables pronounced in each mark.
- In assessing the likelihood of confusion between two distinctive marks, the average consumer's perception of the distinctive features of each mark must be taken into consideration.
- A foreign trademark may be refused registration if its translation into Spanish is descriptive of the characteristics of the goods and/or services at issue.
- A 'suggestive trademark' is defined as a sign that evokes certain features of the goods and/or services covered by the mark. Suggestive marks require a certain degree of imagination or deduction to reach a conclusion as to the nature of the goods and/or services.
Roberto Arochi, Arochi Marroquín & Lindner SC Mexico City
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