Following the instructions from our client we applied for the registration of the trademark TAP MACHINE in International Class 11 to distinguish “refrigerating dispenser units for beverages.”
The Examiner of the Mexican Institute of Industrial property issued an office action stating that “…the name proposed for registration is prohibited under paragraphs IV and V of Article 90 of the Industrial Property Law, since it describes the product to be identified and, therefore, lacks distinctiveness.” (Articles 88 and 89, Section I of that same Code).
We timely replied to the office action arguing that the trademark TAP MACHINE does not describe the products listed in the respective application, since that name is not used in the market to make reference to that merchandise.
Despite our arguments, the Examiner issued a new office action wherein the allowance of the registration was rejected and the proceeding ended. The office action did not take into account the argument we submitted as mentioned hereinabove.
In rebuttal to the office action, we filed before the Federal Fiscal and Administrative Justice Tribunal, the action contemplated in the Federal Administrative Contentious Procedure Law, demanding the annulment of the official action refusing the allowance of the registration on grounds that it did not met due process rules.
The Magistrates of the Federal Fiscal and Administrative Justice Tribunal annuled the office action issued by the Institute, and ordered the issuance of a new resolution allowing the registration in International Class 11 for the trademark TAP MACHINE in connection with “refrigerating dispenser units for beverages.”