The pros and cons of industrial designs, trademarks and trade dress

As global competition continues to mount, it is increasingly common for consumers to choose a product or service based on its design and overall appearance. As such, a product or service needs to be well designed to stand out from the crowd, making design rights a powerful aspect of a business or brand’s positioning. In Mexico, the Industrial Property Law and the Copyright Law provide protection through industrial design and trademark registrations, as well as copyright. But how do brand owners determine which protection is right for them

Industrial designs

According to the Industrial Property Law, industrial designs include:

• ‘industrial drawings’, defined as any combination of figures, lines or colours that is incorporated into an industrial or craft product for ornamental purposes and gives it a peculiar and proper appearance; and
• ‘industrial models’, made up of any 3D form that serves as a type or pattern for the manufacture of an industrial or craft product, which gives it a special appearance and involves no technical effects.

For an industrial design to be registrable it must be new and capable of industrial application. Moreover, in connection with the novelty requirement, the Industrial Property Law establishes that the design must be an independent creation, meaning that no other identical design has been made public before the filing date of the application or the date of the recognised priority, and must differ to a significant degree from prior designs or from known combinations of the features of other designs. As with the patent process, an inventor who publicly discloses their design has a one-year grace period from the time of disclosure to file an industrial design application.

The exclusive right to exploit a protected industrial design grants its owner the right to prevent others from manufacturing, using, selling, offering for sale or importing the product to which the registered industrial design, or a substantial copy of the same, is incorporated without its consent.

However, the protection conferred on an industrial design does not cover those elements or features that have been dictated solely by technical considerations or by the performance of a technical function and that do not include any arbitrary contribution of the designer.

Moreover, industrial design protection is limited to a period of five years from the application date and renewable for equal periods up to a maximum of 25 years. After this time the design enters the public domain and any party may use it.

Trademarks

Designs can also be protected through trademark registrations. In Mexico, exclusive rights over a trademark are obtained only by means of its registration, and the legal standard for registration is inherent distinctiveness.

Trademark registrations have a 10-year renewable period of protection. What is more, unlike industrial designs, the term of protection can be renewed indefinitely provided that the mark is used in commerce by its owner or registered licensee in connection with the covered products or services and is renewed in a timely manner.

In 2018 amendments to the Industrial Property Law incorporated major changes to trademark protection, including adopting a broader definition of a ‘trademark’ and introducing recognition and protection of non-traditional marks such as sounds, scents, holograms and trade dress.

Article 88 of the Industrial Property Law defines a ‘trademark’ as “any sign perceptible by the senses and able to be represented in a way that allows the determination of the clear and precise object of protection, which distinguishes products or services from others of the same species or class in the market”.

Moreover, Article 89 of the law lists the signs that may constitute a trademark registrable as a design under the categories of device trademarks, 3D marks, composite marks and now trade dress as well.

Trade dress

Before the 2018 amendments, Article 213 of the Industrial Property Law attempted to protect trade dress through unfair competition by establishing ‘infringement’ as the use of a “combination of distinctive signs, operative and image elements, that allow the identification of goods or services identical or confusingly similar to others protected by this Law, and which, through their use, causes or induces the public to confusion, error or deception, by causing them to believe or assume that there is an existing a relationship between the titleholder of the protected rights and the non-authorized user”. In this regard, protection of trade dress was commonly sought through various registrations including device marks, 3D marks, composite marks and industrial designs.

Although this provision grants some protection for trade dress, it does not expressly recognise it as a trademark. This represented a challenge when filing an infringement action based on unfair competition, as the applicant would have to prove the property of IP rights over each distinctive sign, operative and image element involved.

As such, the recognition and protection of trade dress as a type of trademark is a significant achievement for the Mexican IP system, as it now provides certainty to IP owners about the rights conferred by a trade dress registration. Article 89(VII) of the Industrial Property Law defines ‘trade dress’ as “the plurality of operative elements; image elements, including, but not limited to, size, design, color, layout, label, packaging, decoration or any other that, when combined, distinguish products or services in the market”.

A trade dress application must include:

• the name and address of the applicant;
• the goods or services to be covered;
• a photograph or drawing showing the width, height and volume of the trade dress, in black and white or in colour, as applicable;
• a clear and precise description of the operative and distinctive image elements that form the trade dress;
• the date of first use of the trademark in Mexico or confirmation that the mark has not been used;
• the factory address or location of the main commercial establishment if the applicant has claimed a date of first use in Mexico; and  
• the country of the base application, filing date and serial number if the applicant is claiming priority rights. 

However, the rules and criteria applicable to trade dress in Mexico are not perfectly clear yet, especially as the regulations to the amended Industrial Property Law are still pending issuance. For example, one of the first trade dress registrations granted by the Institute of Industrial Property was VALENTINA (Registration 1966712),  shown in Figure 1, which was filed with the description: “The mark consists of a glass bottle with an orange lid and its label. The label consists of a yellow background and the design of the trademark 'VALENTINA'. 'Valentina' is engraved on the top of the lid.”

Figure 1. Valentina trade dress registration

After this registration was granted, examiners of similar applications issued official actions requesting that applicants exclude from the images and description provided all elements that did not constitute an operative element or distinctive image of the goods or services to be protected (eg, the word mark to which the trade dress was associated). Under this criteria, the Valentina registration should not have been granted due to the inclusion of the trademark VALENTINA.

Contrary to Mexican law, US law provides further elements to be considered in order to determine whether the combination of elements may be subject to trade dress protection. For instance, the examining attorney must separately consider two substantive issues: functionality and distinctiveness.  

For this purpose, it is important to consider the functionality doctrine, which prohibits the registration of functional product features, in order to maintain a proper balance between trademark law and patent law, and to prevent the owner of a trademark from appropriating a functional feature for an undetermined time.

Moreover, with regard to distinctiveness, the US system distinguishes between two types of trade dress – namely, product design and product packaging. In this regard, when a mark consists of product design trade dress, it is never considered inherently distinctive and requires secondary meaning to be granted. This is because product designs serve purposes other than source identification. On the other hand, product packaging trade dress may be inherently distinctive considering that its intrinsic nature serves to identify a particular source.

Although the recognition and protection of trade dress under the Industrial Property Law represents a huge step forward for the Mexican IP system, all of these considerations serve to show that trade dress is a complex concept for which regulation must go far beyond two articles in the Industrial Property Law. In this regard, it is of vital importance and urgency that regulations to the law establish sufficient corresponding rules to ensure efficient protection of this type of mark.