IMPI publishes criteria for interpretation of Nice Classification

On September 20 2012 the Mexican Institute of Industrial Property (IMPI) published the following agreement in the Federal Official Gazette:

"Agreement establishing the criteria for the interpretation and application of the classification of the Nice Agreement, related to the international classification of goods and services for the purposes of the registration of marks, in the submission and examination of applications for distinctive signs before the Mexican Institute of industrial property."

IMPI published the criteria as an additional tool for the implementation of the Nice Classification in order to provide legal certainty to users of the industrial property system during the submission and examination of applications for the registration of trademarks and slogans.

The criteria for the interpretation and implementation of the Nice Classification are regulated by the provisions of Article 59 (last paragraph) of the Industrial Property Law.

The agreement sets forth the following criteria, among others:

• If a good or service is not included in the alphabetical list of goods and services of the Nice Classification or in the descriptions of the class headings, the complementary list of goods and services shall be used. The complementary list contains goods and services that are not included in the alphabetical list of goods and services of the Nice Classification as a result of the implementation of the General Remarks of the Nice Classification. This complementary list will be published in the Industrial Property Gazette.
• When a class heading is used in an application for registration, the goods and services covered by the application shall be only those that are included in the class heading, and not any other goods or services covered in the same class that are included in the alphabetical list of goods and services of the Nice Classification or the complementary list of goods and services, or any goods which already exist in the market. The agreement establishes that an application must clearly specify which goods or services it intends to cover. 
• Optionally, the applicant will be allowed to enclose a brief explanation of the description of the goods/services provided in the original application. This shall clarify or describe the goods or services at issue if:
  • the goods or services included in the application do not appear in the alphabetical list of goods and services of the Nice Classification, the class headings or the complementary list of products and services issued by IMPI; and 
  • the goods or services cannot be classified in compliance with the rules established in the General Remarks of the Nice Classification.

A concise explanation shall be used only to clarify a highly complex good or service; it will not be part of the description included in the registration.

• In accordance with the General Remarks of the Nice Classification, IMPI may require that the applicant describe the goods or services to be covered by the trademark in a way that will not lead to confusion, in cases where the goods or services are related to, or could be classified in, other classes.
• In order to avoid the use of imprecise terms and expressions that can lead to confusion, applicants must take into account that:
  • the terms 'mainly', 'particularly', 'especially', 'such as' and 'including' will be accepted when accompanied by a general description of the products or services that does not create confusion with products or services in different classes;
  • the term 'namely' will be accepted in the description of goods or services, and it will be understood as referring to, indicating or explaining the product or service at issue in a limitative manner;
  • the phrase 'including but not limited to' will not be accepted in the description of goods or services, as it does not specify the goods or services to be distinguished and does not represent a complete description; and
  • The terms 'among others' and 'etcetera' will not be accepted in the description of goods or services, as they seek to expand the description without indicating or specifying the products or services to be distinguished.

In addition, to avoid official actions requesting the clarification of a description, it is advisable to avoid the use of the terms 'parts thereof' and 'accessories thereof' if the parts and accessories at issue are not listed in the description.

The agreement entered into force 10 business days after its publication in the Federal Official Gazette.

Manuel Morante Arochi, Marroquín & Lindner SC, Mexico