In Mexico, the Industrial Property Law provides for the protection of industrial designs and grants the owner of a registered design the exclusive right to use or exploit the design. In this sense, additional protection can be provided by the Federal Copyright Law. Together, these two laws provide the legal framework for protecting a designer’s creations.
The Industrial Property Law defines an ‘industrial drawing’ as a two-dimensional (2D) industrial design depicting any combination of shapes, lines, geometrical elements or colours that is incorporated in an industrial product for ornamentation purposes and gives it a specific appearance of its own, including essential and characteristic elements. An ‘industrial model’ is conceived of as a three-dimensional (3D) industrial design that serves as a model or pattern for the manufacture of an industrial product, giving it a special appearance that involves no technical effects.
Thus, the Industrial Property Law and its regulations provide for the filing, in-depth examination, prosecution and protection of both the 3D and 2D features of a design.
Under the Industrial Property Law, a party which files an industrial design application acquires only the expectation of rights. Consequently, a filed design is not protected or enforceable until the Mexican Institute of Industrial Property (IMPI) has granted the industrial design. Notably, filed designs are not published; only granted designs are published in the Official Gazette.
According to Mexican practice, an industrial design is registrable if it includes novel features which are not found in the related prior art or identifiable in common and available commercial products. When performing the respective in-depth exam, IMPI relies on the Industrial Property Law’s definition of ‘new’ designs – that is, those that have been created independently of known designs or combinations of known features of designs and differ significantly from them.
Further, the Industrial Property Law establishes that the protection obtained for an industrial design does not cover those elements or features that have been dictated solely by technical or mechanical considerations or the performance of a technical function (eg, electrical modalities), and which do not embody any contribution on the part of the designer. Similarly, it does not cover those elements or features whose exact reproduction is necessary to enable the product incorporating the design to be structurally assembled or sequentially connected to another product or pieces of which it constitutes an integral part or component (unless the design element lies in a shape or form intended to permit the multiple assembly or connection of the goods or their interconnection within a modular system). IMPI will therefore not register design applications that feature only the above excluded elements.
The term of protection for an industrial design in Mexico is 15 years from the date of filing. The protection and claimed geometrical elements of an industrial design are limited to the solid lines of the drawings, while broken lines of the cited figures are often related to optional embodiments; the shapes illustrated by said broken lines are not legally considered to be part of the protected design. However, they represent a geometrical additional element to be considered.
Industrial design applications may be filed by the designer, his or her successor in title or – in many cases – the corresponding representative. Further, where the designer is the applicant, a 50% discount applies to prosecution fees.
The procedure for a design application begins with a formal verification that the application complies with all legal and administrative requirements. After this initial stage, IMPI analyses the design application in terms of novelty and capacity for industrial application.
If both the formal and in-depth examinations are passed, IMPI issues notification of acceptance of the design application.
During the in-depth examination, the IMPI examiner must confirm that the application refers to either a single design or a group of design elements sharing the same inventive concept. If the examiner determines that the application contains two or more unrelated designs, IMPI will issue an official action requesting filing of a divisional application within a two-month deadline. In this case, the separate applications will retain the filing date of the initial parent application or any recognised priority. If the applicant does not submit a divisional application within the two-month period, the application shall be considered abandoned.
If the design application is rejected, it is possible to challenge the decision by appealing to IMPI or filing a nullity proceeding before the Federal Court of Tax and Administrative Justice.
IMPI examiners have become relatively open to studying the geometrical, ornamental and novel features of designs relating to wearable technology (ie, products and market development platforms for technologies worn close to, on or even inside the body). Such graphical elements (eg, apps) are acceptable as part of a 2D industrial drawing application only if the examiner recognises novel shapes, lines or colours. From devices that track the wearer’s heart rate, posture and food consumption to those that monitor mood and surrounding air quality, the ‘quantified self’ is now an everyday reality; fortunately, Mexican practice has adapted to accept industrial model applications for novel geometrical elements of such wearable technologies.
In light of this recent acceptance, it is advisable to use broken lines to indicate the moving elements of wearable technology (eg, a smartwatch band or moveable pieces of smart glasses). IMPI recently began to accept applications for garments including optional flexible or bending embodiments of smart clothing; nevertheless, it is necessary to explain in the specification that the included figures share the same inventive concept and constitute a complementary garment of the same smart clothing, in order to avoid divisional requirements.
In Mexico, the legal protection and enforcement of industrial designs falls under the remit of the Industrial Property Law, which also provides for the corresponding legal procedures.
Once registration of an industrial design has granted, the owner can bring legal proceedings against third parties which copy, imitate, sell or otherwise fraudulently use its design.
Under the Industrial Property Law, the rights holder can preliminarily request IMPI to impose provisional measures against an alleged infringer. In this case, the plaintiff usually provides a bond guaranteeing the payment of damages that the defendant will have suffered, should the plaintiff lose the case.
Next, a copy of the writ and the evidence provided by the plaintiff is served on the defendant, which can then prepare and file a response. In Mexican practice, after IMPI has analysed the evidence provided and the parties have filed corresponding final pleadings, it issues a final ruling. On average, each proceeding takes approximately one or two years. The losing party may lodge an appeal at IMPI, and in some cases nullity proceedings can be appealed at the Federal Court of Tax and Administrative Justice. Finally, a ruling can be demurred with a recurso de amparo (a remedy for the protection of constitutional rights).
Ownership changes and rights transfers
The Industrial Property Law includes no particular provisions for the execution of assignment agreements, and such procedures are generally arranged under Mexican civil law. However, if an assignment is correctly registered with IMPI, it can be executable against individuals.
Regarding licensing, the Industrial Property Law provides that a licensor may use or exploit industrial design protection and that the licensee may execute legal proceedings against third parties in order to preserve the corresponding rights. Importantly, licence agreements must also be certified by IMPI in order to facilitate enforcement against third parties.
Further, in order for IMPI to maintain up-to-date records, it should be informed of all amendments affecting an industrial design file (eg, name or legal regime modifications).
In Mexico, ornamental features contained in industrial design applications, drawings and models can be protected under further IP rights (eg, trademarks). For instance, in some circumstances the novel shapes and representative volumetric parts of an industrial design can be covered by a 3D trademark – provided that the application is in line with Mexican trademark legislation.
Importantly, according to Mexican practice, an industrial design is directed to a specific product – for example, a smartwatch. However, the 3D trademark counterpart to that design can relate to additional products that are commercially related to it – for example, the smartwatch itself and related service features.
For industrial designs, the registration and examination process usually analyses the novelty of the design. This means that the examiner must study and collect similar designs from prior art documents in order to determine whether the new design is different from all prior designs found in IMPI databases, considering the elements and ornamental features that the applicant wishes to protect. On the other hand, in the case of 3D trademark registrations, the mark will be eligible for registration if it performs the essential function of a 3D trademark – that is, the trademark must be:
- different from other marks used to describe similar goods and services;
- not merely descriptive of the type of good or service; and
- recognised as identifying the source of the good or service.
Further, the more distinctive a 3D trademark is, the stronger the protection it receives under trademark law.
For an industrial design, the protection term starts from the filing date and expires 15 years afterwards, with no possibility of extending protection in Mexico. Importantly, the protection term of a divisional application begins to run from the filing date of the parent design and no extension is possible. The protection term for a 3D trademark is 10 years and can be renewed for unlimited additional 10-year periods.
Finally, when an industrial design protection period ends, the design moves into the public domain so that any party may use it. However, if the protection period for a 3D trademark expires and the trademark is not extended, the previous rights holder or a different party may register the same mark again.
Uhthoff, Gomez-Vega & Uhthoff SC