TWENTI ETH COL L EGIATE COURT IN ADMINISTRATI V E MATTERS OF THE F IRST CIRCUIT RUL ES ON PRIORITIZING PHONETIC ANAL YSIS OF A TRADEMARK
On July 12, 2024, the Twentieth Collegiate Court in Administrative Matters of the First Circuit issued thesis with digital registration 2029171, confirming the position of the Mexican Institute of Industrial Property (IMPI) regarding the prioritization of phonetic analysis in assessing similarities between proposed and registered trademarks. It was established that IMPI should primarily focus on phonetic analysis when evaluating the similarity between proposed trademarks and those already registered, even when the visual design of both trademarks includes distinctive elements.
This decision arises from the Supreme Court of Justice of the Nation's initial consideration that confusion between trademarks may arise from multiple aspects, including phonetic, graphic, and ideological elements. Any similarity in any of these aspects may jeopardize the distinctiveness required to clearly identify products and services in the market. Therefore, it is sufficient for a case to align with any of these aspects to conclude that the trademarks may cause confusion.
REGIONAL PLENARY IN ADMINISTRATIVE AND CIVIL MATTERS OF THE CENTRAL-NORTH REGION ON THE IMPI'S OBLIGATION TO REQUIRE THE OMISSION OF PRIORITY RECOGNITION DOCUMENTATION FOR PATENT OR INDUSTRIAL DESIGN APPLICATIONS
Derived from a conflict of criteria between the Tenth and Twenty-First Collegiate Administrative Courts regarding whether the Mexican Institute of Industrial Property (IMPI) must require the submission of proof of the procedure carried out in another country from the applicant seeking priority recognition based on a patent or industrial design application filed abroad, the Regional Plenary in Administrative and Civil Matters of the Central-North Region, based in Mexico City, concluded on June 28, 2024, that IMPI is not obliged to require the presentation of such documents, even when seeking priority recognition.
As established, during the formal examination, which is limited to verifying non-substantive requirements related to the procedural aspects of obtaining the right, the presentation of such documents is not required. This contrasts with the substantive examination, where criteria such as novelty, inventive step, and industrial applicability of the invention are assessed. This interpretation is supported by Article 4 of the Paris Convention for the Protection of Industrial Property, which grants States the discretion to require or refrain from requiring the presentation of the prior application in another country for priority recognition, with the risk of losing such right if not complied with within the established period.
PUBLICATION OF RECOGNITION OF GEOGRAPHICAL INDICATIONS FOR MICHOACÁN AND JALISCO
On July 4, 2024, three significant registrations were announced in the Official Federal Gazette, concerning protected Geographical Indications in Michoacán and Jalisco. These include "Catrinas de barro de Capula, Michoacán," "Cobre Martillado de Santa Clara del Cobre, Michoacán," and "Cajeta de Sayula." The publications determine their elements, as well as the protected territory with specific geographic coordinates ensuring the authenticity and quality of the product. In accordance with Article 288 of the Federal Law on Protection to Industrial Property, the elements are definitively established as Protected Geographical Indications. Similarly, the description of the finished products is determined, including their characteristics, components, extraction methods, production or processing processes, packaging, and wrapping.
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