Likelihood of Confusion in Mexico: How IMPI Assesses Conflicting Trade Marks

Likelihood of confusion is the most common ground for refusal of trade mark applications in Mexico. Under the Federal Law for the Protection of Industrial Property (LFPPI), IMPI examiners conduct an ex officio search of the register and will provisionally refuse any application that is identical or confusingly similar to an earlier mark covering the same or similar goods or services. Understanding how IMPI assesses confusing similarity is essential for both applicants seeking to clear their marks and opponents seeking to protect them.

The Legal Basis: Article 173, Section XXII

Article 173, Section XXII of the LFPPI prohibits the registration of signs that are identical or confusingly similar to a trade mark that is the subject of a pending application filed earlier, or to a registered and valid trade mark, when applied to the same or similar goods or services.

This is a relative ground for refusal — it depends on the existence of a prior right. IMPI conducts its own search of the register during examination and will issue an official action citing any marks it considers to be in conflict.

The Three Dimensions of Similarity

IMPI assesses confusing similarity by comparing the competing marks across three dimensions:

Phonetic Similarity (Similitud Fonética)

This examines how the marks sound when spoken aloud. In a predominantly Spanish-speaking market, phonetic similarity carries significant weight. IMPI considers the pronunciation of the marks in Spanish, the number of syllables, the rhythm and cadence, and the shared sounds. Marks that look different on paper may still be refused if they sound alike when spoken.

Spanish pronunciation rules are applied consistently. Foreign-language marks are assessed based on how the average Mexican consumer would pronounce them, which may differ significantly from the pronunciation in the original language.

Graphic (Visual) Similarity (Similitud Gráfica)

This examines the visual appearance of the marks, including the spelling, arrangement of letters, use of design elements, colours, and overall visual impression. For word marks, IMPI pays attention to shared letter sequences, particularly at the beginning of the mark, and the overall length and structure.

For composite marks (word plus design), both the word element and the figurative element are assessed. The word element is typically considered the more dominant component for comparison purposes, as it is the element consumers use to identify and request the product verbally.

Conceptual (Ideological) Similarity (Similitud Conceptual o Ideológica)

This examines whether the marks convey the same or a similar idea or meaning. Two marks that are visually and phonetically different may still be confusingly similar if they evoke the same concept — for example, a word mark “LION” and a device mark depicting a lion.

Conceptual similarity also captures translations. A mark in Spanish that means the same thing as an existing mark in English (or vice versa) may be refused on this ground.

Similarity of Goods and Services

Even if two marks are similar, a refusal requires that the goods or services be the same or similar. IMPI considers the nature of the goods, their intended purpose, their usual channels of distribution, and whether they are complementary or in competition.

Mexico uses the Nice Classification system, and goods within the same class are more likely to be found similar. However, goods in different classes can also be considered similar if they are commercially related. Conversely, not all goods within the same class are automatically similar — for example, accident protection clothing and virtual reality software are both in Class 9 but are unlikely to be found similar.

The Overall Assessment

IMPI does not require all three types of similarity to be present. A finding of confusing similarity in any one dimension may be sufficient to sustain the refusal, particularly if the goods or services are identical or closely related. The assessment is made from the perspective of the average Mexican consumer, who is considered to have ordinary attention and imperfect recollection.

The examiner considers the overall impression created by the marks, not a side-by-side comparison of isolated elements. The consumer rarely sees both marks simultaneously — they rely on their imperfect memory of one mark when encountering the other.

How IMPI Differs from Other Jurisdictions

Several features distinguish Mexico’s approach:

• Ex officio examination: Unlike some jurisdictions where opposition is the primary check on conflicting marks, IMPI proactively searches the register and raises objections itself.
• Phonetic emphasis: In a Spanish-speaking market, phonetic similarity receives particular attention. Marks that are visually distinct but phonetically close face significant risk.
• Broad examiner discretion: Article 173 gives IMPI examiners wide latitude to assess similarity. The 22 grounds for refusal are broadly drafted, and examiners may apply them strictly.
• Opposition as a complement: Since 2020, third parties can also oppose applications during the one-month opposition window, adding a second layer of relative grounds examination.

Responding to a Similarity Objection

When IMPI issues an official action citing a prior mark, the applicant has a two-month term (automatically extendable by a further two months) to respond. Available strategies include:

• Legal arguments: Argue that the marks are distinguishable across the three dimensions, or that the goods or services are not similar despite being in the same class.
• Letter of consent: Obtain written consent from the owner of the cited mark (as discussed in a separate article).
• Narrowing the specification: Remove or limit the goods or services that overlap with the cited mark’s coverage.
• Challenging the cited mark: If the earlier mark is vulnerable to cancellation for non-use or invalidity, consider filing a cancellation action.

Strategic Recommendations

• Conduct a thorough pre-filing search: Search the IMPI database before filing to identify potential conflicts. Pay special attention to phonetic similarity in Spanish.
• Consider the Spanish pronunciation: A mark that sounds distinctive in English may be phonetically similar to an existing mark when pronounced in Spanish.
• File promptly: Mexico operates on a first-to-file basis. Priority goes to the earlier application, not to the first user.
• Prepare for objections: If a conflict is identified in the search, have a response strategy ready before the official action arrives.

Common Mistakes

• Ignoring phonetic similarity: Visual differences are not enough if the marks sound alike in Spanish.
• Assuming different classes mean no conflict: Related goods in different classes can still be found similar.
• Failing to respond within the deadline: The two-plus-two-month window is strict. Missing it means the application is refused without further consideration.
• Underestimating IMPI’s ex officio search: IMPI will find existing marks that are phonetically, visually, or conceptually similar. Do not assume a conflict will go unnoticed.

Key Takeaway

Likelihood of confusion remains the single greatest obstacle to trade mark registration in Mexico. IMPI’s examination is proactive, its examiners have broad discretion, and phonetic similarity carries particular weight in the Spanish-speaking market. Applicants should invest in comprehensive pre-filing searches, account for Spanish pronunciation, and prepare a clear response strategy for any objection that arises.