ZUMBA mark registered after six-year struggle

Mexico

In February 2009 Zumba Fitness LLC filed for the registration of the word mark ZUMBA and the figurative mark ZUMBA in Class 41 of the Nice Classification for services related to sport activities with the Mexican Institute of Industrial Property. The figurative mark ZUMBA was accepted for registration in less than two months without any obstacle. However, the word mark ZUMBA was rejected by the examiner under Article 90.IV of the Industrial Property Law, on the ground that it was descriptive of the services at issue.

In 2010 Zumba Fitness appealed the examiner’s decision, based on the following arguments:

  • the origin, expansion and enormous popularity of the ZUMBA mark;
  • its protection as a registered trademark in several countries, including the registration of the figurative mark ZUMBA (in which 'Zumba' is the main distinctive element) in Mexico; and
  • the distinctive character of the word 'Zumba', which is an original and arbitrary word that does not describe any type of product or service in terms of its dictionary definition and under the relevant jurisprudence.

Finally, Zumba Fitness claimed that the ZUMBA mark was not generic and that the examiner had only rejected the mark based on the provision that prevents the registration of descriptive marks, and not the provision that prohibits the registration of common or generic names.

In 2011 the Specialised Branch in Intellectual Property Matters of the Federal Court for Tax and Administrative Affairs (SEPI in Spanish) confirmed the examiner’s decision. Zumba Fitness further appealed to the Federal Circuit Court.

In 2012 the Circuit Court ordered SEPI to issue a new decision, taking into account the fact that the examiner had failed to demonstrate that the ZUMBA mark was descriptive; the new decision had to refrain from using arguments relating to 'generic' trademarks. SEPI remanded the case back to the examiner for a new decision and Zumba Fitness appealed once again, arguing that SEPI had to resolve the case following the guidelines issued by the Circuit Court.

In 2014 the Circuit Court ordered SEPI to resolve the case. SEPI once again held that the mark ZUMBA was descriptive and Zumba Fitness had to appeal one more time, claiming that the Circuit Court had already decided that the examiner had not demonstrated the alleged descriptive character of the ZUMBA mark and that this issue was res judicata.

Early this year the Circuit Court reversed SEPI’s decision for the third time and ordered that the latter demand the immediate issuance of the registration of the ZUMBA mark by the examiner.

Between the trademark examiner’s arbitrariness, the lack of expertise of the court that is supposedly specialised in IP matters and the Circuit Court’s alarming slowness and reluctance to resolve the case on the merits, it took six years for Zumba Fitness to register its ZUMBA mark, even though not one objective reason was ever raised to explain why it was considered to be a descriptive sign.

Manuel Morante Soria, Arochi & Lindner SC, Mexico City

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