Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Mexico: FCC overturns decisions relating to derogatory trademark

Sponsored by

olivares-400px.jpg

The Mexican Institute of Industrial Property (the IMPI) denied applications for the mark "Pinche Gringo BBQ" and design to Daniel Andrew Defossey and Roberto Luna Aceves, on the grounds of Article 4 of the Industrial Property Law (LPI). It stated that the mark was contrary to public order, morality and good customs. The term "Pinche" is a pejorative word and "Gringo" refers to a person born in the United States, especially one who is English-speaking. However, interestingly, the real meaning of "Pinche" is a person who provides services in the kitchen or an assistant cook.

This decision was challenged before the Federal Court of Administrative Affairs (FCAA) which, by a majority, confirmed the validity of the IMPI's decision. These decisions were appealed by means of a so-called "amparos" filed before the Federal Circuit Courts (FCC) for Administrative Matters, which despite not entering into an analysis of the constitutionality of Article 4 of the LPI, issued decisions favourable to the owners of the trademark.

The FCC resolved that words tend to evolve, and it does not make sense not to consider that what was previously the subject of taboo or prohibition is now considered normal or accepted.

Therefore, it should be borne in mind that currently the word "Pinche" is used very frequently and is generally approved in all areas of Mexican society, especially taking into account the context in which the brand is used (restaurants and food).

In addition, the FCC resolved that the IMPI and the FCAA sought to assert their linguistic preferences as a public order and to censor use of language. However, according to the FCC, the concept of public order cannot reach the extreme of censoring or limiting freedom of expression when it comes to the registration of a trademark.

These decisions are important for the development of intellectual property in Mexico, having called into question the powers that the IMPI should and should not have when it comes to the topic of morality in Mexico. They also address the constitutionality of part of the aforementioned Article 4 of the Industrial Property Law.

elias-luzelena.jpg

Luz Elena Elias


Olivares

Pedro Luis Ogazón No 17

Col San Angel

01000 México DF

Tel: +5255 53 22 30 00

Fax: +5255 53 22 30 01

olivlaw@olivares.com.mx

www.olivares.com.mx

more from across site and ros bottom lb

More from across our site

The easyJet owner’s trademark complaint says the band Easy Life has risked damage to the airline’s reputation through negative publicity
Jessica Kaiser tells Managing IP why she moved to Perkins Coie and how she wants to expand the firm’s PTAB practice
Lawyers at Allen & Overy provide some key takeaways from the UPC’s first few months
Speaking exclusively to Managing IP, Oliver Walsh said he is looking forward to developing cutting-edge enforcement solutions, including AI-powered predictive analysis
Johnson & Johnson won’t enforce patents for bedaquiline after months of public scrutiny and new licences for generics
We have published this year’s Corporate IP Stars list, an annual rankings publication which recognises senior in-house practitioners
The 2023 edition of Managing IP’s Rising Stars publication is now available online
Allison M Hester, attorney at Moye White, outlines Mattel's litigation history and explains what trademark lessons brands can learn from the toy company
The former BoA president won a high-profile race to succeed Christian Archambeau as executive director in July
Each week Managing IP speaks to a different IP professional about their life and career