Mexico: Getting creative in protection

Trade dress has become an increasingly urgent topic, given that we are living in a society that is ruled by its markets, where the ability to differentiate a product or its source from other products represents a direct benefit – not only to the seller and the rest of the production chain, but also to consumers.

The ability to distinguish one product from others of the same nature that are available on the market – whether at production, point of sale or any stage in between – is naturally of great importance, since it immediately translates into the possibility of developing a highly profitable business. It is also advantageous to consumers as it allows them to distinguish one product quickly from others on the market, making it less likely that they will accidentally purchase something that does not meet their tastes and requirements.

Trademarks are the most common way to distinguish between different products on the market. However, if a business protects not only its trademarks, but also the shapes, packaging, designs, colours, lines, size, layouts, graphics, typography and other protectable characteristics of its products, this could allow it to create a more profound and lasting impact in the minds of consumers.

Thus, trade dress protection is perhaps the most accurate and powerful way for brand owners to gain distinctiveness on the market.

Trade dress

In Mexico, as in most countries, no specific legal instrument applies to trade dress protection as a whole. Nevertheless, several available alternatives can be combined to allow a brand owner to obtain exclusive rights over the overall appearance of its product. Brand owners and lawyers must therefore stay creative, as there is no single and straightforward formula for success.

The overall appearance of a product is formed by designs, colours, lines, size, layouts, graphics, words, typography and shapes or packaging. The applicable laws provide for the protection of these various aspects through trademarks, copyright and industrial designs, as well as through the provisions of unfair competition.

There is no prohibition against accumulating rights in Mexico. Therefore, in principle, a rights holder is perfectly entitled to seek protection under trademark, copyright and patent laws. However, this can become complicated if the rights holder must then prove to the corresponding authorities the originality (copyright), novelty and industrial application (industrial design), distinctiveness and lack of descriptiveness (trademark) of the product in order to obtain protection under the various legal alternatives.

Designs

Mexican legislation contemplates several means of obtaining protection with regard to designs, varying the requirements and formalities depending on the design’s characteristics and functionality. The suitable legal forms for obtaining protection of designs are industrial designs, copyrights, design trademarks and three-dimensional (3D) trademarks.

The legal forms of industrial design are governed by the Industrial Property Law, which states that novelty and industrial application are indispensable requirements for registration and divides these into two types:

• industrial drawings – combinations of figures, lines or colours that are added to an industrial product for the mere purpose of ornamentation; and
• industrial models – any 3D form that provides a special appearance and serves as a model or pattern for the manufacture of an industrial product, not involving technical effects.

This kind of protection will grant its owner a non-renewable 15-year legal monopoly, entitling it to take action in case of infringement.

Copyright

Original designs, such as applied artwork or drawings, are protected by the Copyright Law, regardless of how they are intended to be used. The law allows for the registration of a copyrighted work in order to recognise the author’s rights. However, registration is not necessary for protection to apply – copyright arises as soon as the original work of authorship is fixed in a tangible medium of expression and lasts for 100 years following the death of the author, provided that the author has successors.

Trademarks

Two-dimensional and 3D designs that distinguish certain goods or services from others of the same type or category can be registered as trademarks under the Industrial Property Law, which provides for a 10-year renewable period of protection. This effectively translates into indefinite protection for as long as the mark is used in connection with at least one of the covered products or services.

The law recognises four types of trademark: word marks, design marks, 3D marks and composite marks. This opens a world of possibilities when it comes to trade dress protection, since while it is not always easy to achieve registration in all cases – especially for 3D marks – it does mean that nearly all aspects of trade dress can be covered by trademark protection in some way.

Article 90(4) states that in order for a distinctive sign to qualify for registration, it must not describe the product or service that it covers. While this is logical for word marks, it can be problematic for 3D marks. In my opinion this provision is poorly worded and has resulted in the common practice of rejecting applications for 3D marks if the model serves to designate or describe in trade the nature and purpose of the product or service for which protection is sought.

To sum up, if the trade dress involves a design element, the owner can try to seek protection for it as an industrial design in order to obtain the exclusive right to commercialise it for 15 years – all the owner need do is prove that the design both is novel and has an industrial application. Also, the owner can protect the trade dress through copyright as an applied art work – in this case the design need only be original to benefit from protection for 100 years following the death of the author. Finally, it should be possible to obtain protection under trademark law if the distinctive sign is applied for as a 3D mark – in which case the design should be distinctive and should not describe the nature and purpose of the product or service that it covers in order to qualify.

Registration of trade dress as a design trademark or a word and design trademark is another means of obtaining protection and can be used to protect other elements involved in the trade dress (eg, typography, colours, lines, contours, graphic designs and the way that these are depicted). Disclaiming words or figures is also possible – while this will not grant the owner exclusive rights regarding these specific words or figures, it will provide protection with regard to the overall look of the label.

Given how difficult it can be to register a 3D mark, practitioners have begun to seek protection through composite trademarks, disclaiming the 3D figures in order to protect the overall look of a 3D model and avoid rejection on the grounds of mere descriptiveness. However, the current approach of the authority, due to judicial precedents, is that any composite trademark which includes 3D models and a disclaimer with regard to this should be considered as a 3D trademark rather than a composite trademark. Consequently, if the 3D elements relate to the product’s functionality, it is highly probable that the application will be considered descriptive and rejected for registration.

Specific protection through enforcement

In 2006 the Industrial Property Law was amended to include an administrative infringement cause of action, which includes direct protection for trade dress. This states that if a person or legal entity uses a combination of distinctive signs and operative elements and images in a blatant effort to pass off its products or services as those of others that are already protected by the law, it will be committing a flagrant infringement and act of unfair competition.

The applicable article reads as follows:

Article 213. The following constitute administrative infringements:

XXVIUsing the combination of distinctive signs, operating elements and images that identify identical or confusingly similar products or services to others protected by this law, whose use causes or induces the public to confusion, error or deception, for making the wrong belief or assumption of the existence of a relationship between the holder of the protected rights and the non-authorized user. The use of such operative elements and images in the indicated manner constitutes unfair competition in terms of section I of this article.

The debate as to whether including this conduct as an administrative infringement action actually benefits rights holders has been raging since the law was amended in 2006. Many opponents of the amendment contend that it merely confuses the issue, since previously it was already possible to combat any usage designed to copy an IP right. While the new provision is more specific, this very specificity has turned it into a barely applicable cause of action.

Conclusion

Rights holders may obtain the greatest degree of protection for their trade dress by combining the applicable existing legal forms of intellectual property according to the particular needs of the product, taking into account industrial designs, copyright and word and/or design trademarks.

However, the real challenge is to find creative ways of securing protection for each element that constitutes the trade dress of the product or service. 

Raul Ortiz-Mena
Associate
[email protected]

Raul Ortiz-Mena is an associate at Uhthoff, Gomez Vega & Uhthoff, SC specialising in trademarks. He was born in Morelos, Mexico and obtained his law degree from the Universidad Iberoamericana, Mexico. Mr Ortiz-Mena is a member of the Mexican Association for the Protection of Intellectual Property and is fluent in Spanish and English.