Mexican legislation does not prohibit the accumulation of rights; thus, a rights holder should seek to protect all elements contained in its trade dress in order to cover as much as possible.
A ‘design’ is defined as a combination of lines, colours and/or patterns brought together to create a new design or three- dimensional form (3D). In Mexico, designs are covered by various pieces of legislation, and can be protected under the laws relating to industrial designs, copyright or trademarks.
The Patent Law establishes that designs can be protected through industrial design registrations and may be eligible for protection as industrial blueprints, provided that they:
- are industrially applicable;
- are novel; and
- constitute any combination of shapes, lines or colours for ornamental purposes that would give the design its own specific appearance.
Designs can also be protected as industrial models that are made up of any 3D form that serves as a model or pattern for the manufacture of an industrial product, giving it a particular appearance which involves no technical effects.
Designs such as drawings or plastic models can be protected by copyright in line with the original and artistic characteristics or elements represented therein.
The law considers the protection of designs as 3D trademarks, but only if the design distinguishes the goods or services that it is intended to protect.
Unfortunately, in respect of copyrights and trademarks, the decision as to whether a party is eligible to obtain a registration depends on subjective criteria. For instance, in recent years, the Mexican Trademark Office has adopted criteria according to which it has objected to – and subsequently rejected – most applications requesting the protection of a 3D form. The office argued that the intended 3D forms were non distinctive as they merely described the nature and purpose of the goods seeking protection.
Bearing in mind that it is obvious that a design must contain similar features to others of the same type or category in the market to assist in its functionality, this approach cannot be justified. Therefore, it has become unreasonable for the Mexican Trademark Office to consider that the distinctive elements of most 3D forms that have sought registration are insufficient to allow them to enjoy proper legal protection.
If a trademark owner requests protection for a 3D form that will be used, for example, to commercialise vodka, it is obvious that it will not only request protection under International Class 33 of the International Catalogue of Goods and Services, but may also request protection in Class 21 or 32. These classes may be selected if the trademark
holder wishes to prevent a third party from using a bottle identical to its own to commercialise, for example, soda or perfume.
In countries ruled by common law, such as the United States, a combination of designs can be protected as trade dress. In such countries the design will be protected as an IP right.
Trade dress can comprise, for example, an element of a product’s design or packaging, the colours used in the layout of a store, forms or works of art, an image of the merchant or elements of a company. These elements will be used to identify and distinguish goods or services from others of the same type or category in the market. However, the Mexican IP legislation does not consider the protection of trade dress to be an IP right; hence, a rights holder should seek protection for an industrial design or trademark to protect some of the elements that form its trade dress. In this way, it can cover as much as possible of the way in which it identifies and distinguishes its goods or services and the way in which it wishes consumers to identify them.
Unlike designs, trade dress cannot be protected through copyright, since trade dress comprises a combination of various elements. Therefore, if a rights holder wishes to apply for a copyright in order to protect its trade dress or the elements therewith, it must request protection for each individual element and not the item as a whole. Thus, copyright will not serve to protect trade dress per se.
In countries governed by common law, where trade dress is part of the applicable law, product labels, wrappers, containers and designs, shapes, single colours, colour combinations, points of sale materials, exterior building designs, sound, smell, flavour, motion and hologram marks can all be protected. The Lanham Act governs US trade dress, while in the United Kingdom it can be protected through the law of passing off (the right to enforce unregistered trademark rights). Of course, product labels, wrappers, containers and shapes can be protected in Mexico, but 3D trademarks can be covered only in isolation and not as a whole.
The only provision in Mexican legislation foreseeing indirect protection over trade dress is found in the list of conducts that, pursuant to Article 213 of the Industrial Property Law, constitute an administrative infringement against industrial property rights. Paragraph 26 of Article 213 provides the following:
“Using the combination of distinctive signs, operating elements and images which identify products or services identical or confusingly similar to others protected by this Law and which, through their use, mislead or confuse the public, in error or through deception, by causing them to believe or assume that a link exists between the owner of the protected rights and the unauthorised user. The use of such operating elements and image in the form indicated shall constitute unfair competition under the terms of subparagraph I of this Article;… (subparagraph I. Engaging in acts contrary to proper practice and custom in industry, commerce and services, which amount to unfair competition and which relate to the subject matter regulated by this Law;).”
Mexican law penalises the association of identical or confusingly similar goods or services with others that are already protected, where such association may lead the consumer to believe, or to be deceived into believing, that there is a relationship between the rights holder and the unauthorised user. However, the law makes no mention of trade dress.
The law foresees indirect trade dress protection since in order to enforce any right against the unauthorised use of distinctive elements, operational elements and images, the owner of the combination of such elements and images should have protected each of them through an industrial design, trademark or copyright (ie, it will be unable to enforce its rights if it is not a rights holder).
Even though the 2006 amendment to the Mexican Industrial Property Law, cited in Article 213, attempted to offer some protection to the concept of trade dress by empowering the owner of distinctive elements, operational elements and images to protect those elements as a whole, it is difficult to prove such a violation when filing an infringement action against a party using identical or confusingly similar elements or images. Therefore, since the use of such elements and images is considered as unfair competition (an act against goodwill), this area of the law relies heavily on the Commercial Code, the rules established in Article 213(26) of the Industrial Property Law and the Paris Convention.
Any violation of trade dress in Mexico should be supported by the Paris Convention, to which Mexico is a party. Article 10bis of the treaty states that unfair competition should be considered to be an act of competition contrary to honest practices in industrial or commercial matters. It also states that the following must be prohibited:
- all acts of such nature as to create confusion by any means with the establishment, goods or industrial or commercial activities of a competitor;
- false allegations in the course of trade of such nature as to discredit the establishment, goods or industrial or commercial activities of a competitor; and
- indications or allegations which, when used in the course of trade, are liable to mislead the public as to the nature, manufacturing process, characteristics, suitability for purpose or quantity of goods.
Notwithstanding this, it is important to remember that the amendments made to the Industrial Property Law are recent. Thus, it has become more difficult to prove that a third party has been involved in acts of unfair competition, even more so since at the time of filing a lawsuit based on unfair competition, the applicant must prove that an IP right has been violated. The applicant must always have an industrial design or trademark registration in order to commence such action.
Trade dress in Mexico must be addressed immediately in order for it to be protected. Taking into consideration that trade dress is in daily use, additional legislative and judicial developments are expected soon in order to bring about more consistent and formal protection and enforcement.
In Mexico, it is easier to protect designs than it is to protect trade dress. Designs can be protected by requesting the registration of an industrial design, trademark or copyright. However, the real problem is the lack of explicit legislation concerning trade dress; its protection depends on the creativity of IP lawyers and the protection of all the elements making up trade dress, even in isolation.
Mexican legislation does not prohibit the accumulation of rights; thus, a rights holder should seek protection for all the elements contained in its trade dress in order to cover as much as possible. A design can be protected at the same time as an industrial design, trademark or copyright.
Carolina Ponce
Associate
Carolina Ponce is an associate at trademark specialist firm Uhthoff, Gomez Vega & Uhthoff SC. She holds a law degree from the Universidad Iberoamericana, Faculty of Law, 2008 and is a member of the Mexican Association for the Protection of Intellectual Property. Ms Ponce is fluent in Spanish, English and French.