The potential obligations arising out of international law may become a great opportunity to tackle the underdevelopment of non-traditional trademarks
According to the Survey on Non-traditional Trademarks published by the Asia-Pacific Economic Cooperation (APEC) IP Experts Group, the vast majority of APEC members – including Mexico – consider any sign or combination of signs that can distinguish the goods or services of one company from those of others to constitute a trademark, as established in Article 15 of the Agreement on Trade-Related Aspects of Intellectual Property Rights.
Despite this, the vertiginous development of commercial relationships and the transformations and innovations affecting the market have promoted evolution in IP schemes worldwide, including those for trademarks.
Traders and marketing specialists have been working together for a long time to build stronger brands in order to captivate their consumers. Traditionally, brands communicated the origin and quality of a product or service. However, now they are also used to communicate complex information, invoke certain places or feelings and generate memories.
While traditional trademarks fulfilled their goal in the pre-globalisation era, many rights holders now seek to expand the scope of trademark law to encompass different aspects of their brands. Sounds, colours, shapes, textures, scents and even motions can distinguish the goods or services of one company from those of others and are a quintessential part of companies’ marketing strategies. However, these categories of mark are more difficult to register than traditional trademarks.
Non-traditional trademarks in Mexico
Although non-traditional trademarks are a reality in most countries, not all jurisdictions have evolved to include them in their regulations.
In Mexico, Article 88 of the Industrial Property Law defines a ‘trademark’ as any visible sign that distinguishes products or services from others of the same type or category on the market. Further, Article 89 narrows the definition of trademarks to visible words, names and designs, as well as three-dimensional (3D) forms.
Thus, only traditional trademarks (ie, signs that are distinctive and can be perceived visually) can be protected through registration with the Mexican Industrial Property Institute (IMPI). Single colours, 3D forms and motion marks are also mentioned in the Industrial Property Law, but their registration is not necessarily approved.
The Industrial Property Law allows 3D forms, but establishes limits that make trademark protection difficult to obtain in practice. Hence, a 3D sign may not:
- be in the public domain;
- have fallen into common use;
- lack sufficient originality to be easily distinguished; or
- consist of the shape of products or a shape imposed by the nature or industrial function of the goods.
Since 3D forms must be perfectly capable of distinguishing the products or services to be commercialised, and due to strict criteria applied by the IMPI, fulfilling the requirement of inherent distinctiveness is a great challenge.
According to Article 90(V) of the Industrial Property Law, single colours are not registrable unless they are combined with or accompanied by elements such as symbols, designs or denominations that give them a distinctive character. Further, motion marks are expressly prohibited by Article 90(I) of the Industrial Property Law.
Alternative means of protection
In the case of sound marks, applicants may turn to Article 13 of the Federal Copyright Law, which protects musical works. Consequently, if a sound mark consists of a harmonic composition that can be reproduced identically each time, copyright protection is feasible.
Trade secrets law may provide an alternative means of protection for smells, scents, tastes and textures. Article 82 of the Industrial Property Law defines a ‘trade secret’ as industrially or commercially applicable information:
- which is kept by an individual or company;
- which is confidential in nature and associated with securing or retaining a competitive or economic advantage over third parties; and
- regarding which the individual or company has adopted sufficient means or systems to preserve its confidentiality and restrict access.
In this sense, provided that the smells, scents, tastes and textures are preserved as the Industrial Property Law sets out, the rights holder can seek protection.
Further, although the Industrial Property Law does not grant registration over most non-traditional trademarks, Article 213(IX) of the law provides that an administrative infringement occurs when a party exercising an industrial or commercial activity commits acts which deceive the public or induce them to confusion, error or deceit, leading them falsely to believe or assume that:
- there is a relationship or association between an establishment and a third party;
- the products concerned are manufactured or sold under specification, licence or authorisation of a third party;
- the services concerned are rendered under specification, licence or authorisation of a third party; or
- the product concerned originates from a territory, region or location other than its true place of origin.
Accordingly, despite not having a registered trademark, if the plaintiff can demonstrate that consumers identify its goods or services through its non-traditional trademark and that the unauthorised use of the sign constitutes an act of unfair competition, it may bring an administrative action based on Article 213(IX).
Mexico grants protection over non-traditional trademarks consisting of colours, letters or numbers and 3D forms, provided that the mark:
- satisfies the requirement of graphic representation; and
- can act as a badge of origin, since it is not devoid of any distinctive character.
Considering that no other types of non-traditional trademark enjoy formal protection under the Mexican trademark system, legislative reform to promote the acceptance of non-traditional trademarks is desired. Indeed, reform may occur sooner than expected in Mexico, due to the possible entry into force of the Trans-Pacific Partnership Agreement (TPP). Chapter 18 of the TPP covers IP-related matters, including patents, trademarks, copyright, industrial designs, geographical indications and trade secrets, as well as enforcement of IP rights.
All signatory countries will be required to harmonise their domestic laws and policies with the TPP. Thus, if the text is ratified as it stands, Mexico will have to carry out major amendments to its IP system so that it includes the protection of sound marks, among other things.
The potential obligations arising out of international law may become a great opportunity to tackle the underdevelopment of non-traditional trademarks in Mexico. Hopefully this will lead to the establishment of a clear set of rules that correspond to the present reality of marketing strategies and the way in which products and services are being targeted to consumers.
Jimena Chi is an attorney in the trademarks department of Uhthoff, Gómez Vega & Uhthoff SC. She holds an LLM in international trade law from the University of Turin (2012) and an LLB from Panamericana University (2010), as well as an IP research fellowship from the Japanese government at the Osaka Institute of Technology (2014).