Trade dress protection enhanced

July 12, 2010

BY GABRIELA GONZALEZ

On January 25, 2006, the Mexican Law of Industrial Property (LIP) was amended concerning the legal framework of franchises in Mexico to incorporate a new infringing cause based on the unauthorized use by a third party of the image of a product, best known as trade dress (Article 213 XXVI LIP).
Before this change, unfair competition acts were only regulated in the LIP under three causes:

1. The use of distinctive signs in comparative advertising (Article 213 X LPI).
2. Commercial or industrial activity that can lead to a risk of confusion or association by making the public believe that there is a relationship between two establishments and that the third party manufactures products or offers services under authorization or licence from the owner of the IP rights or that the products in question originate in a different territory (Article 213 IX LPI).
3. Any commercial or industrial activity contrary to good use and customs that imply unfair competition (Article 213 fracción I de la LPI).

 

In practice, any unfair competition act, other than the ones mentioned in clauses (1) and (2), was executed under the general unfair competition cause (clause 3).
However, with this reform, the owners of IP rights will have a specific legal framework that prohibits the use of similar or identical trade dress. Due to the recent reform, there are no legal precedents or jurisprudence on its interpretation. Therefore the owners of these rights will have to refer to the exact of this infringement action, that is:
Article 213: The following constitute administrative infringements:
…
XXVI. To use a combination of distinctive signs, operative and image elements, that allows the identification of identical or confusingly similar products or services from others protected under this Law and that by means of its use caused or might lead the public to confusion, error or deceit, by making them believe or presume the existence of a relationship between the owner of the protected rights and the non-authorized user. The use of such operative and image elements in the above mentioned form constitutes unfair competition in accordance with clause I of this Article…
Source: Managing Intellectual Property Magazine, Mar 2006.