Mexican trademark law (Industrial Property Law), as amended on May, 2018, states that any sign that may be perceived by the senses and capable of distinguishing in the market, a product or service from others of the same kind or class may be a trademark and can be registered.

Trademark registration is extremely important in Mexico. Our country does not have common law rights whatsoever, thus registration with the Mexican Patent and Trademark Office (MPTO) is the only way to get exclusivity rights on a trademark. Both traditional (visual signs) and non-traditional (scents, sounds and trade-dress) trademarks may be registered.

The rule is that all distinctive signs may be registered, but there are exceptions and prohibitions; most exceptions and prohibitions are concentrated in article 90 of the Industrial Property Law.

Further, article 4^th of the Industrial Property Law provides a general prohibition, stating that no patent, registration of authorization shall be issued or published in the Official Gazette if the content or form is against public order, moral or good customs or against a statutory provision.

The general prohibition of article 4^th allows the MPTO and courts to refuse or invalidate the registration of trademarks that are not listed in the exceptions and prohibitions of article 90, but are still illegal (for example, a figurative trademark that reproduces a copyrighted drawing without authorization of the copyright holder) or trademarks that the examiner considers immoral or against public order. Further, the Industrial Property Law not only prohibits the registration of trademarks that are immoral and against public order (preventing the applicant from obtaining exclusivity rights on them); using trademarks deemed to be immoral or against public order is illegal and would be a cause of administrative infringement, as stipulated in Article 213, paragraph VII, of the Industrial Property Law.

I have discussed these sorts of trademarks in the past, namely trademarks that reproduce the names/nicknames of criminals or make clear reference to criminal organizations, such as “EL CHAPO GUZMAN” and “LOS ZETAS”.

A recent non-binding precedent from the federal court of appeals published on June, 2019, called my attention to immoral and offensive trademarks again[1].

The case involved trademark application number 1,832,646 (now registration number 2,038,915) for the trademark “PINCHE GRINGO BBQ” & Design.

The trademark application for “PINCHE GRINGO BBQ” & Design was filed on December 15, 2016, to identify services provided by restaurants, cafeterias and bars. The applicants were Messrs. Daniel Andrew de Fossey (an American citizen) and Roberto Luna Aceves (a Mexican citizen).

As some readers may know, “gringo” is the way many Mexicans and other Latin Americans call people or things from or related to the United States of America[2]. Depending on the context, “gringo” may be a very familiar way to address an American individual or object, or it can be a pejorative expression. “Pinche” has different meanings: a noun referring to the helper of a cooker; or, more common (I think), “pinche” is an adjective for something or someone with little value or appreciation.

After a preliminary refusal, the MPTO issued the final refusal of the trademark application, stating that the phrase “PINCHE GRINGO BBQ” was an insult; therefore “PINCHE GRINGO BBQ” & Design was a trademark against good customs and public order. The final refusal was later affirmed (in a split decision) by the Specialized Panel in Intellectual Property (SEPI) of the Federal Court of Administrative Affairs.

The applicant filed a final appeal or “amparo” appeal. It was decided by the Cuarto Tribunal Colegiado or Fourth Panel in Administrative Matters of the Federal Court of Appeals in Mexico City[3].

The basic argument of the applicants in the final appeal was that the phrase “PINCHE GRINGO” was not intended as an insult, but as a reference to a helper in the kitchen that was an American; and that the decision of the MPTO and the SEPI of limiting the meaning of the trademark to an insult was an illegal unilateral ruling that ignored a plausible different meaning with no negative connotation, considering the services listed in the application (services provided by restaurants, cafeterias and bars).

The applicants also argued that article 4^th of the Industrial Property Law was against the Constitution, namely the freedom to conduct any legal trade, activity or profession.

The court of appeals ruled that the trademark “PINCHE GRINGO BBQ” & Design was not against good customs and public order, and refrained from analyzing if article 4^th of the Industrial Property Law was against the Constitution. Although freedom of speech was not an issue in itself in the final appeal, the court used some precedents from the Mexican Supreme Court regarding the freedom to speech to support the decision.

Basically the court of appeals stated that the concept of public order has no clear definition in Mexican law, in spite of the fact that the Mexican Constitution and many statutes make explicit reference to public order. The court did state that public order always seeks a minimum standard of social harmony, and that the possible harm of public order must be decided on case by case basis. The court also stated that a broader concept of public order implies a larger limitation of human rights (freedom of speech for example), so a human-rights oriented system should seek a restrictive scope of protection of public order in order to enlarge the scope of human rights.

In another part of the decision, the court ruled that morality and good customs are intrinsically connected concepts that, by nature, are variable from time to time and from place to place. Therefore, judges (and examiners) must decide on case by case basis, if an expression is immoral or against good customs or uses. The court ruled that an insult may not be registered or used as a trademark; freedom of speech does not mean there is a right to insult others. However, an apparent insult that, under a specific context,  may be plausibly understood with a different non-offensive meaning, is not against public order, immoral or against good customs, and may be registered as a trademark.

When there is a mark with two possible meanings, one offensive and the other not, the examiner and the court have to decide which one would be more reasonable to consider for the approval or refusal of the trademark application. The precedent from the court of appeals provides a useful guideline.

The court stated that there should be different bars to measure if an expression may be offensive or not, depending on the community or group that may be affected by the alleged insult. The court stated that, in the case of groups and communities that have been historically discriminated or referred to in a pejorative way because race, gender, sexual orientation or skin color, the degree of protection they are entitled to against insults and offensive expressions, should be higher. Authorities must be less tolerant to possibly insulting phrases or words directed to such discriminated communities or people, than in the case of less vulnerable or dominant groups.

Unlike women, indians (Mexican natives), African-descendants or gays, Americans living in Mexico –I believe– have not been a community historically discriminated by Mexican society. In the specific case of “PINCHE GRINGO BBQ”, the court of appeals explicitly considered that the fact that one of the applicants was an American citizen (a “gringo”) and that the trademark would identify a restaurant presumably specialized in American cuisine, were relevant to conclude that the trademark “PINCHE GRINGO BBQ” was not fundamentally an insult and that it was reasonable to state that the phrase was making reference to a kitchen aidee that happened to be an American individual, rather than a pejorative way to identify an American. If the mark would have alluded to an indian (i.e. “PINCHE INDIO BBQ”), I think the outcome would have been adverse to the applicants, no matter the non-offensive meaning the phrase may have.

It is all about context. Words and signs that were openly acceptable fifty years ago are now almost forbidden in public, while some vulgar expressions that were not allowed in a decent conversation are now freely used in mass media and ads. Contexts change according the time and place. The court of appeals gave some objective guidance about the availability as trademarks of possibly offensive expressions, flexible enough to change if and when the contexts also change.

[1] “Marcas. Debe permitirse su registro aun cuando su denominación contenga una palabra malsonante, si ésta no es su única connotación, debiendo tener en cuenta su uso en el caso específico y un criterio de excepcionalidad al invocar la afectación al orden público (inaplicabilidad del artículo 4o. de la Ley de la Propiedad Industrial)”, at Gaceta del Semanario Judicial de la Federación, Décima Época, Libro 67, Junio de 2019, Tomo VI, page 5205 (Electronic version: http://sjf.scjn.gob.mx/SJFSist/Paginas/DetalleGeneralV2.aspx?Epoca=1e3e10000000000&Apendice=1000000000000&Expresion=2020128&Dominio=Localizacion&TA_TJ=2&Orden=1&Clase=DetalleTesisBL&NumTE=1&Epp=20&Desde=-100&Hasta=-100&Index=0&InstanciasSeleccionadas=6,1,2,50,7&ID=2020128&Hit=1&IDs=2020128&tipoTesis=&Semanario=0&tabla=&Referencia=&Tema=. Date: December 28, 2019). The public version of the decision (in Spanish) is available here.

[2] Some sources state that “gringo” is a word that refers to English-speaking people. In my experience, the word is specific for Americans. Of course, a white English-speaking individual may easily identified as gringo, regardless her/his true origin.

[3] The federal courts of appeals are organized in tribunales or panels of three judges each. In some zones (such as Mexico City or, technically, the First Circuit), panels are specialized. Amparo appeals against decisions from the Specialized Panel in Intellectual Property of the Federal Court of Administrative Affairs are decided by one of the twenty one panels specialized in administrative matters of the Federal Court of Appeals in Mexico City.