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Co-published editorial

Uhthoff, Gomez Vega & Uhthoff A design for protection

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 distinctive as they merely described the which it identifies and distinguishes its lines, colours and/or patterns brought nature and purpose of the goods seeking goods or services and the way in which it together to create a new design or three- protection. wishes consumers to identify them. dimensional form (3D). In Mexico, designs Bearing in mind that it is obvious that a Unlike designs, trade dress cannot be are covered by various pieces of legislation, design must contain similar features to protected through copyright, since trade and can be protected under the laws relating others of the same type or category in the dress comprises a combination of various to industrial designs, copyright or market to assist in its functionality, this elements. Therefore, if a rights holder trademarks. approach cannot be justified. Therefore, it wishes to apply for a copyright in order to The Patent Law establishes that designs has become unreasonable for the Mexican protect its trade dress or the elements can be protected through industrial design Trademark Office to consider that the therewith, it must request protection for registrations and may be eligible for distinctive elements of most 3D forms that each individual element and not the item as protection as industrial blueprints, provided have sought registration are insufficient to a whole. Thus, copyright will not serve to that they: allow them to enjoy proper legal protection. protect trade dress per se. • are industrially applicable; If a trademark owner requests protection In countries governed by common law, • are novel; and for a 3D form that will be used, for example, to where trade dress is part of the applicable law, • constitute any combination of shapes, commercialise vodka, it is obvious that it will product labels, wrappers, containers and lines or colours for ornamental not only request protection under designs, shapes, single colours, colour purposes that would give the design its International Class 33 of the International combinations, points of sale materials, own specific appearance. Catalogue of Goods and Services, but may also exterior building designs, sound, smell, request protection in Class 21 or 32. These flavour, motion and hologram marks can all Designs can also be protected as classes may be selected if the trademark be protected. The Lanham Act governs US industrial models that are made up of any holder wishes to prevent a third party from trade dress, while in the United Kingdom it 3D form that serves as a model or pattern using a bottle identical to its own to can be protected through the law of passing for the manufacture of an industrial commercialise, for example, soda or perfume. off (the right to enforce unregistered product, giving it a particular appearance In countries ruled by common law, such trademark rights). Of course, product labels, which involves no technical effects. as the United States, a combination of wrappers, containers and shapes can be Designs such as drawings or plastic designs can be protected as trade dress. In protected in Mexico, but 3D trademarks can be models can be protected by copyright in line such countries the design will be protected covered only in isolation and not as a whole. with the original and artistic characteristics as an IP right. The only provision in Mexican or elements represented therein. Trade dress can comprise, for example, legislation foreseeing indirect protection The law considers the protection of an element of a product’s design or over trade dress is found in the list of designs as 3D trademarks, but only if the packaging, the colours used in the layout of conducts that, pursuant to Article 213 of the design distinguishes the goods or services a store, forms or works of art, an image of Industrial Property Law, constitute an that it is intended to protect. the merchant or elements of a company. administrative infringement against Unfortunately, in respect of copyrights These elements will be used to identify and industrial property rights. Paragraph 26 of and trademarks, the decision as to whether distinguish goods or services from others of Article 213 provides the following: a party is eligible to obtain a registration the same type or category in the market. “Using the combination of distinctive depends on subjective criteria. For instance, However, the Mexican IP legislation does signs, operating elements and images which in recent years, the Mexican Trademark not consider the protection of trade dress to identify products or services identical or Office has adopted criteria according to be an IP right; hence, a rights holder should confusingly similar to others protected by which it has objected to – and subsequently seek protection for an industrial design or this Law and which, through their use, rejected – most applications requesting the trademark to protect some of the elements mislead or confuse the public, in error or protection of a 3D form. The office argued that form its trade dress. In this way, it can through deception, by causing them to that the intended 3D forms were non- cover as much as possible of the way in believe or assume that a link exists between

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Country correspondent: Mexico

the owner of the protected rights and the explicit legislation concerning trade dress; its unauthorised user. The use of such operating protection depends on the creativity of IP elements and image in the form indicated lawyers and the protection of all the elements shall constitute unfair competition under the making up trade dress, even in isolation. terms of subparagraph I of this Article;… Mexican legislation does not prohibit the (subparagraph I. Engaging in acts contrary accumulation of rights; thus, a rights holder to proper practice and custom in industry, should seek protection for all the elements commerce and services, which amount to contained in its trade dress in order to cover unfair competition and which relate to the as much as possible. A design can be subject matter regulated by this Law;).” protected at the same time as an industrial Mexican law penalises the association of design, trademark or copyright. WTR 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 Carolina Ponce unauthorised user. However, the law makes Associate no mention of trade dress. [email protected] The law foresees indirect trade dress protection since in order to enforce any Carolina Ponce is an associate at trademark right against the unauthorised use of specialist firm Uhthoff, Gomez Vega & distinctive elements, operational elements Uhthoff SC. She holds a law degree from and images, the owner of the combination the Universidad Iberoamericana, Faculty of of such elements and images should have Law, 2008 and is a member of the Mexican protected each of them through an Association for the Protection of industrial design, trademark or copyright Intellectual Property. Ms Ponce is fluent in (ie, it will be unable to enforce its rights if it Spanish, English and French. is not a rights holder). Even though the 2006 amendment to the Mexican Industrial Property Law, cited in commercial activities of a competitor; and Article 213, attempted to offer some • indications or allegations which, when protection to the concept of trade dress by used in the course of trade, are liable to empowering the owner of distinctive mislead the public as to the nature, elements, operational elements and images manufacturing process, characteristics, to protect those elements as a whole, it is suitability for purpose or quantity of difficult to prove such a violation when filing goods. an infringement action against a party using identical or confusingly similar elements or Notwithstanding this, it is important to images. Therefore, since the use of such remember that the amendments made to elements and images is considered as unfair the Industrial Property Law are recent. Thus, competition (an act against goodwill), this it has become more difficult to prove that a area of the law relies heavily on the third party has been involved in acts of Commercial Code, the rules established in unfair competition, even more so since at Article 213(26) of the Industrial Property Law the time of filing a lawsuit based on unfair and the Paris Convention. competition, the applicant must prove that Any violation of trade dress in Mexico an IP right has been violated. The applicant should be supported by the Paris must always have an industrial design or Convention, to which Mexico is a party. trademark registration in order to Article 10bis of the treaty states that unfair commence such action. competition should be considered to be an Trade dress in Mexico must be addressed act of competition contrary to honest immediately in order for it to be protected. practices in industrial or commercial Taking into consideration that trade dress is in matters. It also states that the following daily use, additional legislative and judicial must be prohibited: developments are expected soon in order to • all acts of such nature as to create bring about more consistent and formal confusion by any means with the protection and enforcement. establishment, goods or industrial or In Mexico, it is easier to protect designs commercial activities of a competitor; than it is to protect trade dress. Designs can be • false allegations in the course of trade of protected by requesting the registration of an such nature as to discredit the industrial design, trademark or copyright. establishment, goods or industrial or However, the real problem is the lack of

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