• Trade Dress in Mexico, Limited but at Least Some Protection
  • August 24, 2006 | Author: Carlos Trujillo Castellanos
  • Law Firm: Uhthoff, Gomez Vega & Uhthoff, S.C. - Mexico, D.F. Office


    By Carlos Trujillo


    Uhthoff, Gomez Vega & Uhthoff, S.C.



    The manner in which a product or service is “dressed up” to go to market and, in general, its overall appearance[1] was not in the past within the scope of protection by statutory law in Mexico, through the recognition of the existence of additional protectable value for the distinctiveness of the external non-functional characteristics, for its packaging materials or for the layout or overall appearance in the case of a commercial establishment.


    It was not until 1991, when the Law for the Promotion and Protection of Industrial Property was enacted[2], when the deceive to consumers to believe the existence of a link or relationship of a product or establishment with another, has been considered as an infringement against the Law. But this conception only encompasses the “palming off” conduct by the alleged infringer disregarding the existence of trade dress protection by virtue of the distinctiveness per se inherent or through a secondary meaning, present in a product or establishment.


    A recent amendment to the Industrial Property law has finally granted certain protection to trade dress in view of the distinctiveness of a product or service.


    On January 25, 2006 the Official Gazette of the Federation published an amendment to the Industrial Property Law whose contents mainly refer to franchising, but it also incorporates a new section XXVI to Article 213.  Article 213 is descriptive of those conducts that constitute a violation of the Industrial Property Law and which are legally punishable generally through a fine, seizure of infringing goods and closing of establishments.  The newly added section considers as an infringement to the law: "the use of combination of distinctive signs, operational and image elements, identifying products or services identical or confusingly similar to others protected by this Law,  whose use causes or induces the public to confusion, error or mistake, for making the wrong belief or assumption of the existence of a relationship between the titleholder of the protected rights and the non-authorized user. The use of such operative and image elements in the indicated manner constitutes unfair competition in terms of section I of this article."[3]


    Based on the mentioned addition to the Law, inherent distinctiveness present in marks and other distinctive signs and in operational or image elements of products or services has been recognized as the basis to support an action of unfair competition against a party using those elements as the basis to apparent a link or sponsorship of its own products or services with the ones placed in the Mexican market by another party.  In other words, there is recognition of protection in statutory law for those external elements giving a product or service a distinctive overall appearance.  Everything could makes us consider that the Mexican legislature had contemplated trade dress based on inherent distinctiveness as a requisite for protection. This is at least the interpretative spirit that may be present in the amendment.


    However, an unfortunate redaction in the new section XXVI compromises the extent to which trade dress could be enforced.  The first part of the text establishes that the deceptive "use of distinctive signs, operational AND (emphasis added) image elements…" likely to cause confusion in the commerce, is a conduct against the law.  Interpretative principles in Mexico are very formalistic and in many occasions, words can turn out the meaning of an article in a sense different than the original one pretended by the legislature.  In this regard, the word "and" in the newly added section can be interpreted in the sense that each and every one of the elements mentioned before the word "and" must be present, as a requisite for the conduct by an alleged infringer to constitute an infringement against the law.  Following this line of speculation, it would be necessary the concurrence in the deceptive use of the distinctive signs, the operational and the image elements to configure the law violation.  Different would have been if the legislature had used the conjunction "or" instead.  In this latter assumption a trade dress violation would take place through the deceptive use of just one of the mentioned elements.  This leads us to conclude that in fact the new section in Article 213 is providing trade dress protection taking the inherent distinctiveness into consideration.  But this protection could not be applied over a product overall appearance since an operational distinctive element would be impossible to find.  Therefore, this new disposition is focused to protect trade dress in services or establishments or for products sold when providing a service, such as for the case of franchised businesses, in which the three elements foreseen in the new section XXVI will converge altogether. 


    It could be concluded that the product appearance falls out from the scope of protection through the newly added section and immediately the following question raises: what should be done in Mexico to establish trade dress protection for the overall appearance of a product, if available?


    Unfortunately and until the imprecision in section XXVI is corrected or until we have a final judicial criteria in the interpretation of this provision, it would be very risky to be confident in the contents of the commented section to consider that protection of the overall appearance of a product is achieved by operation of law just for its original and distinctive external characteristics. Additional protective elements available in the industrial property and the copyright fields in Mexico should be obtained in an effort to establish trade dress protection for the overall appearance of a product.


    From a trademark perspective, the registration of a so-called “three-dimensional” trademark for a product of its packaging materials should be considered as an alternative of protection in Mexico.  Nevertheless, the Mexican Institute of Industrial Property (MIIP) has the criteria of not granting the registration of this kind of trademarks, when the mark consisting of the shape of the product is intended to cover the product in question.  The argument for denying the registration is that the mark under the mentioned circumstances is descriptive of the product, not being subject matter of registration for such reason.[4]  Notwithstanding the above, a recent judicial decision from a Circuit Court has overturned a denial issued by the MIIP to register the shape of a product as a three-dimensional mark under the descriptiveness argument.  The Court ruled that the MIIP must not deny the granting of the trademark registration by just arguing that the "product is descriptive of the product".  The MIIP must take into consideration as to whether the shape and external configuration have distinctive elements making the product different from others of the same nature and if such is the case the MIIP must grant the registration of the three-dimensional trademark. Although this court decision is still not forming Mexican jurisprudence[5], it can be taken as an advance in the trade dress protection in Mexico, for the judicial recognition of the value of the inherent distinctiveness in the configuration of a product and the need to protect this on behalf of its legitimate owner and in fact, the MIIP has started to grant registration of three-dimensional marks.


    The external shape of a product or of its packaging materials is not considered as subject matter of copyright protection in Mexico.  However, with the enactment of the Federal Copyright Law in 1997 in Mexico, copyright protection was extended to cover applied-art works. It is possible, therefore, to protect under the copyright in Mexico, the combination of colors and designs applied over a product or over the labeling thereof.


    In the patent field, it is possible to protect the distinctive shape of a product or of a packaging, as well as the combination of colors and designs used for ornamental purposes, through the obtention of an industrial design registration.


    Along the contents of this paper, it can be seen that trade dress is still requiring to be better known and understood in Mexico. Nevertheless and based on existing legislation and practices, trade dress protection is a reality and in years to come we expect to have additional legislative and judicial development to enable a more consistent and formal trade dress protection and enforcement.


    About the author


    Born in Mexico City, Carlos Trujillo is an attorney specialized in the field of intellectual property, holding a Law Degree conferred by the Universidad Iberoamericana, with several graduate diplomas in different areas of law issued by the Universidad Panamericana.  Carlos Trujillo has focused his practice in the area of Transfer vof Techonology and Copyrights.  He is an active member of several organizations including the Mexican Association for the Protection of Intellectual Property (AMPPI), Mexican Bar Association, International Trademark Association (INTA) and Licensing Executive Society (LES).


    Carlos Trujillo has been a member of Uhthoff, Gomez Vega & Uhthoff, S.C. for 11 years and was appointed partner of the firm in 2002.


    [1] Glenn Mitchell et al. U.S. Trade Dress Law. A Primer for the New Millennium.  INTA Practice Series. 2002.

    [2] Being such law amended in year 1994 to become the present and in force Industrial Property Law.

    [3] Official Gazette of the Federation of January 25, 2006.

    [4] Descriptive trademarks cannot be registered in Mexico according with section IV of Article 92 of the Industrial Property Law.

    [5] Jurisprudence in Mexico in general is conformed by the concurrence of five continuous decisions from competent courts in the same sense.