Mexico: FCC overturns decisions relating to derogatory trademark

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2026

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

Cookies Settings

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 SHARED ros bottom lb

More from across our site

The office, which has a relatively new patent litigation team as well as a wider ‘soft’ IP offering, would remain independent if the rejection is rubberstamped
The IP boutique is betting that growing investment in quantum and semiconductors will fuel demand as technology shifts toward physical systems
Lawyers say the overhaul better reflects commercial reality, with changes spanning novelty searches, digital designs and access to a small claims track, but stopping short of criminalising unregistered design infringement
Carpmaels & Ransford hires its fourth partner of the year and wins access to UPC files, as fresh orders address costs, confidentiality and the use of divisional patents
Peter Ling of Lenz & Staehelin in Zurich discusses trends in patent litigation, the regulation of AI and the benefits of teaching IP
Brandsmiths and Powell Gilbert will contest claims over several UK trademarks in a High Court case examining the ownership and revival of a heritage brand
Hogan Lovells Cadwalader is taking a fresh strategic approach to pricing in its AI strategy. It could amplify calls for law firms to ditch the billable hour
Charles Harding plans to build a new team around life sciences oppositions and contentious work, drawing on his three decades developing a practice from scratch at D Young & Co
The firm reveals how its litigation strategies informed the arguments that took Masimo’s judgment past $818 million
The firm was rebuilding its IP practice through a string of patent hires and a Texas expansion, but its dissolution has put the newly built talent back into the market
Gift this article