Series of decisions on 3D marks issued

The federal circuit courts have issued a series of decisions on three-dimensional trademarks. The decisions were based mainly on the judicial interpretation of Articles 88 and 90(16) of the Industrial Property Law.
Article 88 of the law establishes that “a mark is understood as being any visible sign that distinguishes products or services from others of the same type or category on the market”.
Article 90(16) provides that the following may not be registered as a trademark:

"a mark that is identical or confusingly similar to another in respect of which an application has already been filed and is awaiting registration, or to another that is already registered and in force, and is applied to the same or similar products or services. However, a mark identical to one previously registered may be registered if the application is made by the same owner for use in connection with similar products or services."
According to the decisions, the shape of a bottle may be registered as a three-dimensional trademark if it is sufficiently distinctive. The courts provided the following guidelines: 
  • The shape of goods may be registered as a three-dimensional trademark where:
    • it is not in common use;
    • it is sufficiently original; and
    • it is not the ordinary form of the goods or that imposed by their nature or industrial function.
  • Functional and utilitarian features are irrelevant to the assessment of distinctiveness.
  • The scope of protection afforded to three-dimensional marks is different from that afforded to industrial designs - trademarks must be distinctive, while industrial designs are governed by the principles of creativity and functionality.
Roberto Arochi, Arochi Marroquín & Lindner SC, Mexico City

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