Four out of every ten marks that come to us are not registrable as they stand. The official fee is not refundable, so it is worth knowing before you file.
The usual reasons for refusal
Descriptiveness. The mark describes the product or a characteristic of it. "Pan Suave" for bread. Article 173 of the Federal Law for the Protection of Industrial Property bars signs that indicate the kind, quality, quantity, purpose or value of the goods.
Generic terms. The common name of the product itself, which no one can monopolise.
Prior conflicting marks. An earlier registration that is identical or confusingly similar for related goods. This is the single most common ground, and the only way to see it coming is a search.
Geographic indications and protected symbols. Place names that mislead as to origin, national emblems, and official denominations.
What to do before you spend anything
Run an availability search in the IMPI database, check the specific classes you need, and look not only for identical marks but for phonetically and visually similar ones. Then decide whether to adapt the mark, narrow the specification, or choose a different name.
We run this search and issue a written opinion free of charge, precisely because filing a doomed application helps nobody.
What happens if IMPI objects
A refusal is not the end of the application, but it is a deadline. The Institute communicates the requirement, impediment or opposition in writing and grants two months to answer (article 225 of the Mexican Industrial Property Law), with a further two months available automatically on payment of the corresponding fee (article 226). If both pass without a response, the application is deemed abandoned.
And the notification takes effect on publication in the Gazette alone, whether or not the courtesy email arrives (article 20), so the clock does not wait for anyone to notice.
The trap in responding: changing the mark, or adding or substituting goods or services to get around the objection, converts the application into a new filing with a new fee and a new filing date (article 227). The priority is lost. Which is why the class list and the sign itself are worth getting right before filing, not after.