Mexico: FCC overturns decisions relating to derogatory trademark

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.

Luz Elena Elias

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