Designs and Trade Dress
As global competition continues to rise, it is increasingly common for consumers to choose a product or service based on its design and overall appearance. It is very likely that a well-designed product or service stands out from the competition, therefore, design has become a valuable source of differentiation, and a powerful ally for businesses and brands’ positioning. In Mexico, the Industrial Property Law (IPL) and the Federal Copyright Law provides for the protection of these assets through industrial design and trademark registrations, and copyright.
According to the IPL, industrial designs include:
- Industrial drawings, defined as any combination of figures, lines or colors that are incorporated into an industrial or craft product for ornamental purposes and that gives it a peculiar and proper appearance.
- Industrial models, made up of any three-dimensional form that serves as a type or pattern for the manufacture of an industrial or craft product, that gives it a special appearance, and which 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 IPL 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 recognized priority, and it must also differ in a significant degree from prior designs or from known combinations of features of design. As with the patents process, an inventor who publicly discloses their design has a 1-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.
Furthermore, 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.
It is important to consider that the protection of an industrial design is limited. The validity of an industrial design is of 5 years, counting from the application date, and renewable for equal periods until reaching a maximum of 25 years. After this time the design enters to public domain and any party may use it.
Designs can also be protected through trademark registrations. In Mexico, the exclusive rights over a trademark are only obtained by means of its registration, and the legal standard for registration of trademarks is inherent distinctiveness.
Trademark registrations have a 10-year renewable period of protection, so, unlike industrial designs, as long as the mark is used in commerce by its owner or registered licensee, in connection with the covered products or services, and timely renewed, the term of protection for trademarks could be indefinite.
The amendments to the Mexican IPL in 2018, incorporated major changes referring to trademarks’ protection, including a broader definition and the recognition and protection of non-traditional trademarks, such as sounds, scents, holograms and trade dress.
Currently, Article 88 of the IPL defines a trademark asany sign perceptible by the senses and able to be represented in a way that allows to determine 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 IPL lists the signs that may constitute a trademark, being able to register a design under the categories of device trademarks, three-dimensional trademarks, composite trademarks, and now trade dress as well.
Prior to the amendments of 2018, Article 213 of the IPL attempted to protect trade dress through unfair competition by establishing as an infringement “the use the 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 trademarks, 3D trademarks, composite trademarks, and industrial designs.
Although, the above-mentioned provision granted some kind of protection for trade dress, this figure was not expressly recognized as a trademark. This situation represented a challenge when filing an infringement action based on unfair competition, since the applicant would have to prove the property of IP rights over each distinctive sign, operative and image elements involved.
In view of the above, the recognition and protection of trade dress as a type of trademark represents a great achievement in the IP system in which provides certainty to the holders about the rights conferred by a trade dress registration. Article 89, section VII of the IPL 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.
In order to file a trade dress application in Mexico, the following are required:
- Name and address of the applicant.
- Goods or services to be covered.
- Photograph or drawing of showing width, height and volume, in black and white or in color, as applicable.
- A clear and precise description of the operative and distinctive image elements that form the trade dress.
- The date of the 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. This information is only required when an applicant claims a date of first use in Mexico.
- If the applicant claims priority rights, it is only necessary to indicate the country of the base application, filing date, and serial number.
Notwithstanding the above, the rules and criteria applied to trade dress in Mexico are not perfectly clear yet, especially since the Regulations to the amended IPL are still pending of issuance. For example, one of the first trade dress registrations granted by IMPI was Reg. 1966712 “VALENTINA” with the following 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.”, and showing the following image:
Afterwards, in similar applications the examiners issued official actions requesting the applicants to exclude from the images and the description provided, all elements that did not constitute an operative element or distinctive image of the goods or services to be protected, such as the wordmark to which the trade dress was associated. Under this criterion, the above referenced registration should not have been granted due to the inclusion of the trademark VALENTINA.
Contrary to Mexico, the United States of America provides further elements to be considered in order to determine if the combination of elements may be subject of protection by trade dress, for instance, examining attorney must separately consider two substantive issues: (1) functionality; and (2) 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 prevent the owner of a trademark from appropriating a functional feature for an undetermined time.
Moreover, regarding distinctiveness, the USA system makes a distinction 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, since 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 in the IPL represents a huge step forward for the Industrial Property system in Mexico, the above-mentioned references are basic concepts that show that trade dress is a complex figure which regulation must go far beyond two Articles in the IPL. In this regard, it is of vital importance and urgency that the Regulations to the Law establish the corresponding and sufficient rules for an efficient protection of this type of marks.
Giselle Ruiz Balcázar
Giselle is an associate at trademark specialist firm Uhthoff Gómez Vega & Uhthoff. She holds a Law degree from Universidad Panamericana, Faculty of Law, and a Master’s degree in Business Law from Centro Universitario Villanueva in Madrid, Spain. Ms. Giselle is an active member of the Mexican Association for the Protection of Industrial Property and is fluent in Spanish and English.