Uhthoff, Gómez Vega & Uhthoff
While trade dress is not protected in Mexico, trademark and industrial design registrations can be used to demonstrate that unauthorised use of trade dress constitutes unfair competition
‘Trade dress’ refers to the combination of elements which distinguish goods or services and their owners from others. However, the elements that make up trade dress are not defined the same way in all countries. While trade dress may encompass designs, shapes, sizes, colours, textures, graphics, packaging and even uniforms in some cases, in others it refers to the form of presentation of goods and services, and might include not only the goods and services, but also the company and the external aspects used to identify these.
In Mexico, there is no direct protection for trade dress as a specific type of distinctive sign or mark, as there is in some other jurisdictions. However, according to some regulations, ‘trade dress’ can be defined as:
the overall appearance through which the products or services are placed on the market, and which make it possible to quickly distinguish them among others from the same species; not only for the use of a brand but for the combination of its forms, packaging, colours, designs and operative elements; It being understood that this integral aspect generates in the minds of the consumer public a direct and agile association to acquire the desired satisfaction from a diversity existing in the market. (Mexican Industrial Property Law, commentary by the Mexican Association for Intellectual Property Protection, pp 480-481, Article 213(XXVI), Christian Jozue Bernal Alvarado, edited Porrua, Mexico, 2015.)
Design elements can be protected in Mexico as trademarks, industrial models or designs and even as works of art. However, such protection relates to only one of the elements that constitute trade dress.
Over the past few decades efforts have been made to extend protection to trade dress elements which consumers perceive and associate with goods and services, marks and their owners. As a result, today trade dress may be protected under the Industrial Property Law as an industrial design or a three-dimensional (3D) mark, with some infringement actions based on unfair competition and unauthorised use of the combination of distinctive signs, operational and image elements which identify goods or services. Protection may also be acquired under the Copyright Law if the trade dress qualifies as a work of applied art.
Notwithstanding amendments to the Industrial Property Law – as well as some guidance issued by the federal courts – the question of how best to provide protection remains unresolved.
Indirect protection is available given that any conduct which qualifies as an act of unfair competition (eg, copying the trade dress of another) is prohibited by the Industrial Property Law, since the alleged infringer is not using its own resources to offer its product, but rather imitating those of its competitors, which may lead to consumer confusion. Given that promoting consumer confusion is an administrative infringement, this should be enforceable even if the IP object has no valid registration.
However, demonstrating an act of unfair competition can be challenging and provisional measures are often denied where there is no registration in place. Consequently, it is crucial to secure registration over the design elements or colour combinations which comprise trade dress, either as a trademark, industrial model or design, or a work of applied art, in order to facilitate such enforcement.
Choose your right
While it is possible to obtain protection by registering trade dress as a 3D mark, there is no definition or limit as to which elements qualify as 3D marks. What is registrable is generally qualified by interpreting the prohibitions against registration and applying these general criteria. However, the Regulations for the Industrial Property Law provide that 3D marks may include the wrapping, packaging, containers, forms and presentation of products (Industrial Property Law, commentary by the Mexican Association for Intellectual Property Protection, pp 148-157, Article 90(III), Armando Arenas Reyes, edited Porrua, Mexico, 2015).
Therefore, a 3D mark must be distinctive and non-functional, and not merely describe the goods or services it protects. In addition, 3D marks refer mainly to forms and presentation of products and do not expressly include services, although these may be considered where they are presented through a 3D form – for instance, some restaurants are identified by the general public by way of certain construction elements.
An industrial design may be obtained when the requirements of novelty and industrial application are met. However, such a registration cannot be renewed.
A trademark should serve to distinguish goods or services and identify the source of these among others in commerce. Such rights can be renewed indefinitely every 10 years. An industrial design protects novelty and the industrial application of a 3D invention and has a non-extendible life of 15 years. Consequently, these rights cover quite different protection.
Another alternative could be to try to register the trade dress as a work of applied art. While such protection would relate only to artistic original elements and not the whole form, it would at least serve to prove a client’s right to enforce an infringement action based on unauthorised use.
As mentioned, the Industrial Property Law includes provisions dealing with unfair competition, including a specific section on the unauthorised use of combinations of distinctive signs, operational and image elements which identify goods or services, expressly indicating that use of these without permission will constitute unfair competition.
In order for such an action to be enforceable, certain elements must be present:
- the unauthorised use of a combination of distinctive signs, operational and image elements which identify goods or services; and
- such use must cause or promote confusion, error or deceit caused as a result of such use, making consumers believe or assume a relationship between the owner and the unauthorised user.
In order to achieve adequate protection for trade dress in Mexico, it is advisable to obtain registrations for 3D marks, as well as for any element which can be protected as an industrial design or work of applicable art – all of which would enable the prosecution of infringements derived from unauthorised use of the trade dress of goods or services, by means of actions upon the corresponding registrations and unfair competition.
Under these circumstances, it is vital that brand owners and their counsel work closely together to determine the best way to protect the appearance of the products and services that they manufacture, sell or otherwise provide in order to ensure that sufficient elements exist should it become necessary to take action against those trying to free ride.
Marcela Bolland has been a partner at Uhthoff, Gómez Vega & Uhthoff since January 1 2007. She is the author of the Considerations of the Supplementary Application of the Federal Code of Civil Procedure to the Administrative Proceedings contained in the Law of Industrial Property (2001) and has written several papers on the handling of trademark notoriety and fame in Mexico.
Ms Bolland is an active member of the Mexican Association for the Protection of Industrial Property, the Mexican Bar Association, the International Trademark Association and the Intellectual Property Owners Association.
Gabriela Armas has over 10 years of experience in intellectual property and has been an associate at Uhthoff Gómez Vega & Uhthoff since June 2015. She has a law degree with a diploma in intellectual and industrial property from the Panamericana University Law School and is studying for a master’s in intellectual property and new technologies at Panamericana University.
Ms Armas is a member of the Mexican Association for the Protection of Industrial Property and is fluent in Spanish, English and Italian.