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

McDermott Will & Schulte lawyers explore why the UPC is seeing rapid adoption by medtech for fast-moving disputes, while pharma and biotech take a cautious, selective approach over revocation risks
IP firms may be growing more comfortable with external capital, but uncertainty over who could ultimately own the business is complicating the investment pitch
The former Western District of Texas judge addresses perceptions of his courtroom, reveals what comes next as he returns to practice at A&O Shearman and explains why marathon running is ‘cathartic’
International Anti-Counterfeiting Coalition says it has been blocked from hosting its annual event in the city, ending a long tradition of holding the gathering in the days leading up to INTA’s flagship event
The ITC is a powerful tool for litigators, practitioners say, as the threat of an exclusion order on a critical tech component could mean disrupting the entire data centre's operations
Anna Toh plans to expand Rajah & Tann’s soft IP capabilities, leveraging its Southeast Asia network to support clients on cross-border portfolio management and commercial strategy
The Canadian boutique’s new IP lead says he wants to build a tech-enabled IP practice aimed at giving startups senior expertise away from the traditional ‘big law’ set-up
Qantm IP’s acquisition of Henry Goh & Co shows shifting attitudes towards private equity, with firms increasingly viewing external backing as a normal route to expansion rather than a source of concern
The firm’s involvement in prominent AI cases drew litigator Christian Mammen to join from Womble Bond Dickinson, as US firms continue to bolster AI-focused practices
Two judicial appointments confirmed in Paris and Mannheim, while cross-border injunctions and high-profile procedural rulings keep major patent practices occupied
Gift this article