The Mexican Law of Industrial Property (law) does not provide for specific protection for what it is known as trade dress; however, if we understand the term trade dress in its more modern sense meaning not only the packaging and labeling of a product but also including the shape and design of the product itself, the law expressly provides for protection of three-dimensional trademarks (see endnote 1), that can be considered as an indirect protection for trade dress in Mexico.

Besides the specific protection allowed by the law with respect to three-dimensional trademarks (see endnote 2), there are other forms that also should be considered as trade dress and that are around in relation to products as well as services; for instance with respect to the former one we could think of the owner of a product adopting a distinctive color design to distinguish the product, besides adopting a trademark that would identify the product also. In this particular case the trade dress of the product can in many times be protected by obtaining a trademark registration usually for the label affixed to the product that will show the design color features.

With respect to services, it is a common practice to adopt series of elements that if are considered as a whole could trigger an special overall appearance identifying a place where services are rendered such as a restaurant. In this case also indirect protection could be obtained for certain elements of the overall appearance or elements that could qualify as three-dimensional trademarks.

In addition to the above, even if there is no trademark protection or a trade dress can not be registered as a trademark, there is protection available within the concept of unfair competition, and for the purposes of the law unfair competition in general is understood as to perform, during the exercise of industrial or commercial activities, acts which confuse or lead the public to confusion, error or deceit.

Of course, before initiating an action based on unfair competition plaintiff should be assured that his trade dress was adopted before use of the unauthorised use of a similar or confusingly similar trade dress adopted by defendent; said use by defendent should be in the manner of producing confusion among the consumer public.

A trade dress infringement considered as an act of unfair competition is an administrative violation to the law and the infringement action for unauthorised use of a trade dress similar or confusingly similar to one adopted by plaintiff is taken with the Mexican Institute of Industrial Property, formerly the Mexican Trademark Office and not before a Court of Law. However, the decision of IMPI can be appealed to a District Court and the decision of this Court can be furtherly appealed to a Circuit Court.

The sanctions for this type of infringement considered as a violation to the law range from fines for up to $67,500 US Cy approximately, to temporary or definite closure of the infringing business and even administrative arrest for 36 hours. IMPI usually imposes fines, however, if defendant continues committing the infringement the fines will double the amount mentioned before and if the illicit conduct continues, notwithstanding that a decision of IMPI on the merits of the administrative infringement claim became firm, that it beyond shadow of appeal, it is then a conduct considered as a crime, so penal actions can be taken against defendant.

We should finally comment that the Law provides also for the so-called provisional injunctions whereby IMPI can take certain important measures against defendants prior to the filling of the infringement claim.

Endnotes

1. Article 89, Section II of the Mexican Law of Industrial Property

2. Article 53 of the Regulations of the Mexican Law of Industrial Property, specifically identifies as three-dimensional forms wrappings, packages, containers and the forms of how a product is presented.

This article is intended to provide a general guide to the subject matter and should NOT be treated as legal advice. Specific legal advice should be sought by you about your particular case and special circumstances.