Descriptive Marks and Acquired Distinctiveness in Mexico: Article 173 Explained

Mexico’s trade mark law, like most systems worldwide, bars the registration of marks that merely describe the goods or services they cover. Under the Federal Law for the Protection of Industrial Property (LFPPI), descriptive and generic signs are listed among the 22 grounds for refusal in Article 173. However, the law also recognises that a descriptive sign can earn its place on the register if it has acquired distinctiveness through use. Understanding where the line falls — and how to cross it — is essential for applicants choosing marks for the Mexican market.

The Legal Framework: Article 173 of the LFPPI

Article 173 sets out a comprehensive catalogue of signs that cannot be registered as trade marks. The provisions most relevant to descriptive marks include prohibitions against:

• Descriptive words or elements: Signs that describe the species, quality, quantity, composition, intended purpose, value, or place of origin of the goods or services.
• Generic terms: Words, phrases, or figurative elements that have become the usual or common designation for the goods or services in the relevant trade.
• Non-distinctive elements: Signs that lack distinctiveness power when referring to general aspects of the goods or services, such as their nature, purpose, or characteristics.

These prohibitions are examined by IMPI during the official examination of every application. If the examiner finds the mark to be descriptive, an official action is issued provisionally refusing the registration.

What “Descriptive” Means in Practice

A mark is descriptive when it directly and immediately communicates information about the goods or services to the average Mexican consumer, without requiring any mental leap or interpretation. The assessment is made from the perspective of the relevant consuming public in Mexico, taking into account the Spanish language as well as any foreign language terms that are commonly understood.

Examples include:

• “Café Orgánico” (Organic Coffee) for coffee products — directly describes the product and its quality.
• “Rápido” (Fast) for delivery services — describes a characteristic of the service.
• “Agua Pura” (Pure Water) for bottled water — describes the nature and quality of the product.

Foreign-language terms are not automatically safe. If the average Mexican consumer would understand an English, French, or other foreign word as descriptive — for example, “Fresh” or “Natural” — IMPI may refuse the mark on descriptiveness grounds.

Generic vs. Descriptive: A Critical Distinction

The LFPPI treats generic and descriptive marks as separate grounds for refusal, and the distinction has practical consequences:

• Generic terms are the common name for the product or service itself (e.g., “Teléfono” for phones). They represent the most extreme form of non-distinctiveness and are virtually impossible to register.
• Descriptive marks describe a characteristic of the product but are not the product’s common name (e.g., “Ultra Limpio” / “Ultra Clean” for cleaning products). These can potentially be saved through acquired distinctiveness.

Non-Reservable Elements

The LFPPI introduced the concept of non-reservable elements (“elementos no reservables”) — components of a mark that appear in its design or logo but are not protected as part of the trade mark. These are elements that lack distinctiveness because they are descriptive, generic, or refer to general aspects of the goods or services.

When filing a composite mark (word plus design), IMPI may accept the mark overall but disclaim protection for the descriptive word element. This allows the mark to register based on the distinctive elements while ensuring the descriptive component remains free for all traders to use.

Acquired Distinctiveness: The Exception

Mexican law recognises that a descriptive sign can become registrable if it has acquired distinctiveness through use. This means the consuming public in Mexico has come to associate the descriptive term with a specific commercial source, rather than treating it as a mere description.

To prove acquired distinctiveness, the applicant must provide evidence demonstrating that the mark has been used extensively in Mexico and is now recognised by consumers as a brand. Relevant evidence includes:

• Duration and continuity of use in Mexico: How long and how consistently the mark has been used in the Mexican market.
• Sales volumes and revenue: Figures demonstrating significant commercial activity under the mark in Mexico.
• Advertising expenditure: Investment in marketing and promotion directed at the Mexican public, with samples of actual advertising.
• Market surveys: Consumer recognition studies conducted in Mexico showing that the public perceives the sign as a brand.
• Media coverage: Press articles, reviews, or editorial mentions in Mexican publications.
• Market share: Data showing the mark’s position in the relevant product or service market in Mexico.

The evidence must relate to use in Mexico specifically. International sales data or advertising campaigns not directed at the Mexican market carry little weight with IMPI.

The Examiner’s Broad Discretion

The LFPPI gives IMPI examiners a wide margin to assess distinctiveness. The 2020 law specifically strengthened the provisions aimed at preventing the registration of signs that do not fulfil the distinctive function required of a trade mark. This means examiners may apply a stricter standard than applicants expect, particularly for marks that are clearly laudatory, promotional, or composed of common industry vocabulary.

Applicants who receive a descriptiveness refusal have a two-month term (extendable by a further two months) to respond with arguments and evidence. If the refusal is upheld, appeals are available to the FCAA or through an amparo suit.

Strategic Recommendations

• Choose distinctive marks: The most reliable strategy is to avoid descriptive marks entirely. Invented words, arbitrary terms, and suggestive marks face no descriptiveness objection.
• Consider composite marks: If a descriptive element is important to the brand, combine it with a distinctive word or logo. The descriptive element may be disclaimed, but the mark can register based on the distinctive components.
• Build evidence before filing: If you plan to file a descriptive mark, accumulate evidence of use and recognition in Mexico before the application. This strengthens any acquired distinctiveness argument.
• Account for Spanish: Test your mark not only in English but also in Spanish. A mark that sounds arbitrary in English may be descriptive or have unintended meanings in Spanish.

Common Mistakes

• Assuming foreign-language terms are safe: If Mexican consumers understand the foreign word as descriptive, IMPI will refuse it.
• Combining two descriptive words and expecting registration: A combination of descriptive elements typically remains descriptive unless the combination creates a new, non-obvious meaning.
• Relying on stylisation alone: Adding a font or colour to a descriptive word does not overcome the objection if the word element is dominant.
• Submitting only international evidence: Acquired distinctiveness must be proven in the Mexican market, not globally.

Key Takeaway

Mexico’s approach to descriptive marks follows the international consensus: terms that merely describe the goods must remain free for all traders. The LFPPI offers a path through acquired distinctiveness, but the evidentiary burden is high and the examiner’s discretion is broad. For most applicants, the most cost-effective strategy is to invest in inherently distinctive marks that avoid the issue entirely.