By Marco Tena
The isolated thesis issued by a Collegiate Circuit Court in administrative matters, identified with digital registration number 2023043, addresses a fundamental issue in intellectual property law in the examination of trademarks: the protection of nominative trademarks and the role of isotypes or fundamental components in their registration and defense.
Under the title “Nominative trademarks. The isotype or fundamental component does not fall on words of common use,” this thesis establishes relevant criteria that should be considered by companies, lawyers and industrial property specialists when analyzing the registrability of a trademark.
The Scope of the Thesis
The thesis in question emphasizes that the isotypes or fundamental components of a nominative mark should not be words of common use. This implies that, when analyzing the distinctiveness of a trademark, courts not only consider the text or words that compose it, but also the graphic or figurative elements associated with having additional words. This criterion is particularly relevant in a context where companies seek to protect trademarks that incorporate visual elements or words of general use in combination with distinctive isotypes.
In addition, if the isotype makes direct reference to the company’s name or identity, it will always be considered the most dominant aspect of the brand, as it serves as the main identifier to consumers.
The Importance of Distinctiveness
Distinctiveness is a key principle in trademark registration and protection. For a trademark to be registered, it must be capable of differentiating a company’s products or services from those of its competitors. When a trademark includes generic or commonly used words, these alone are not eligible for exclusive protection. However, if they are combined with unique isotypes or graphic designs, it can be argued that the mark acquires a distinctive character.
In this sense, thesis 2023043 reinforces the idea that isotypes associated with nominative marks should be evaluated as essential components contributing to distinctiveness, provided they are not based on generic elements. This approach makes it possible to protect trademarks against possible infringement and ensures that there is no confusion among consumers.
Practical Implications
This criterion has several implications for companies’ legal and commercial strategies:
- Brand Design: When creating a brand, it is essential to develop isotypes and graphic components that are not commonly used, to ensure its registrability and protection. If the isotype refers to the company’s name or identity, it becomes a key element of the design strategy.
- Trademark Defense: In cases of dispute, isotypes can be a key element to argue the distinctiveness and originality of a word mark, particularly when they are linked to the company name.
- Registration Strategies: Companies should conduct exhaustive searches and consult intellectual property experts to ensure that their trademarks meet the criteria established by this type of thesis.
- Legal Developments: This case reinforces the need to evaluate trademark signs as a whole, considering their phonetic, graphic and conceptual impact. The judgment makes it clear that it is sufficient that one of these dimensions generates confusion to deny a registration.
Integration of Jurisprudence
The decision also highlights the role of case law as a guide for interpreting the Industrial Property Law. In this case, the Court analyzed previously established guidelines for determining the degree of confusion between nominative marks, emphasizing that the approach must be comprehensive, taking into account both similarities and differences from the perspective of the average consumer.
Isolated thesis 2023043 represents a significant advance in the interpretation of the distinctive elements of nominative trademarks. By clarifying that the isotypes or fundamental components must not fall on words of common use, this criterion contributes to strengthen the protection of trademarks in Mexico. In addition, the application of this thesis allows unifying criteria and ensures that trademark decisions are based on principles of equity and legal clarity.
For companies and specialized lawyers, this precedent is a valuable guide for designing, registering and defending trademarks that meet the standards of distinctiveness required by Mexican legislation and jurisprudence. In a highly competitive market, understanding and applying these principles can make the difference between a vulnerable mark and a robust mark, capable of withstanding legal disputes and standing out in the marketplace.
At Vega, Guerrero & Asociados, our Intellectual Property team is ready to support and advise companies on these issues.
