On September 2012 the Mexican Patent and Trademark Office (MPTO) issued the Guidelines to Construe the Classification of Goods and Services Mean for Trademark Owners and Applicants (Guidelines). The Guidelines came into effect on October 4, 2012.

The Industrial Property Statute provides that trademark applications may include goods or services of one Class only, and that the goods and services described in the application should be specific. Mexico currently uses the 10th edition of the Nice Classification, and if there were doubts, the MPTO has broad authority to construe the Classification.

Today, examiners review and approve the goods or services listed in a trademark application simultaneously with the formal examination of the application, but always before the substantive examination. The substantive examination of a trademark application can’t start unless the examiner is satisfied with the description of goods or services, namely that the description is clear enough and that it does not list products or activities of more than one Class.

The purpose of the Guidelines is provide certainty to trademark applicant about how the description of goods and services is to be examined and construed. However, no matter what the intentions may be, changing the rules usually originates new questions and concerns.

This article will be focused on a very common practice in Mexico and other countries of copying the header of the International Classes as list of goods and services, and what will be the scope of coverage of trademark applications filed using those headers according to the Guidelines.

According to the Guidelines, the Class Headers now shall be construed in a restrictive way, and if the applicant uses them in the goods or services description, only the products and services expressly stated in the list shall be covered by the application.

The Mexican statute allowed full class coverage until the enactment of the 1991 Industrial Property Law. However, in spite that the new law did not allow claiming full-class coverage in trademark applications, as a matter of fact this kind of protection survived in practice by means of using the Headers of the International Classes.

The MPTO and many practitioners construed the Class Headers in a very extensive way. According to this construction, when the goods or services description reproduced the Header of the Class, the trademark application and resulting registration provided coverage for all the products and services included in the Class, including those goods and activities that were not implicitly described in the header through a genre.

An example would be the tacos. Tacos are classified in Class 30. The Class 30 header currently reads as follows: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

In my opinion, none of the goods and genres stated in the Class 30 Header include tacos. Nevertheless, an extensive construction of the Header lead the MPTO to consider that tacos were included the Class Header, so a trademark application or registration reproducing the Header of the Class 30 covered tacos. Today, with a restrictive construction according to the Guidelines, the MPTO will have to decide that a trademark application or registration with the Header of the Class 30 as list of goods does not comprise tacos in its coverage.

Therefore, this seems to be the actual death of the full-class coverage in Mexico.

One point of concern is, or should be, if the Guidelines will be applicable retroactively, not only to trademark applications filed before the Guidelines became enforceable, but to construe the coverage of trademark registrations issued before October 4, 2012.

Against the retroactive construction of the Classification as provided the Guidelines regarding trademarks and slogans registered before October 4, 2012, the Guidelines only make reference to trademark applications. The Guildelines explicitly state that their purpose is providing applicant with certainty about the examination of trademark applications, so it is clear that the MPTO’s intention to limit the Guidelines to trademark applications only.

In favor of the retroactive construction of the Classification as provided the Guidelines regarding trademarks and slogans registered before October 4, 2012, the Guidelines do not limit the list of products or services of trademark registrations and applications and do not generate new obligations for trademark owners. Actually, the bottom line question would be if the owner of a trademark registration has a right to a specific construction of the description of goods and services of a trademark application.

In the past, the Supreme Court ruled that the construction of laws and rules do not create new rules and law, thus using the Guidelines to construe the scope of protection provided in trademark applications and registrations filed or registered before October 4, 2012 would not be against the principle of no-retroactivity of the law (On the other hand, the new Amparo Law states that the precedents shall not be applicable in a retroactive way, thus it seems that there could be a right to a specific construction after all.).

Further, it would not be reasonable having two different simultaneous constructions of identical lists of goods or services that reproduce the same Class Header based on the date of registration.

The importance of the possible retroactivity of the Guidelines goes far beyond the academic interest. There are huge practical implications related to this issue: the use of registered trademarks and their consequences in connection to renewals and cancellation actions due lack of use of the registered trademark and invalidation of trademark registrations due false information about the date of first use of the trademark. We may also expect some impact regarding trademark infringement, anticipations and invalidation actions due earlier registration of an identical or similar trademark or because of earlier use.