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. Supplementary 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 or colours that will be incorporated in an industrial product for ornamentation purposes and give it a specific appearance of its own. An ‘industrial model’ is defined 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, prosecution and protection of both the 3D and 2D geometrical characteristics of a design.
Under the Industrial Property Law, a party which files an industrial design application acquires only the expectation of rights. The corresponding design is not protected or enforceable until the Mexican Institute of Industrial Property (IMPI) has granted the industrial design.
In Mexican practice, an industrial design is registrable if it contains new elements which are not discoverable in the prior art or identifiable in common commercial products. In evaluating an application, 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, according to the Industrial Property Law, the protection conferred on an industrial design does not cover those elements or features that have been dictated solely by technical considerations or the performance of a technical function, and which involve no 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 assembled mechanically or connected to another product 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. In addition, as in many other jurisdictions, the protection of an industrial design is limited to the solid lines of the drawings as filed. The 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.
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 period. 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.
Recent practice indicates that IMPI’s directors and examiners have become increasingly open to analysing the ornamental elements and novel features of designs included in mobile devices, among other computer-implemented inventions. These elements can now be analysed as part of a 2D industrial drawing application if they include novel shapes, lines or colours.
Presently, although there is no clear or formally acceptable way to obtain design protection in the field of computer-implemented inventions and mobile devices in Mexico, the probability of grant can be improved in certain ways. The illustrations included in the corresponding industrial drawing application must relate to the essential and main windows or screenshots of the related application; protection rests on the novel geometrical elements and shapes illustrated. Therefore, it is helpful to include broken lines directed to the moving or emerging elements at the screen. In connection with multiple windows or the sequence of emerging windows of the app, IMPI has recently begun to accept several screenshots of the same sequence. The only requirement is that the applicant explain explicitly in the specification that the related illustrations are part of the same sequence and share the same inventive concept, thus minimising the risk of receiving a divisional requirement.
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 an industrial design has been registered, the owner can bring legal proceedings against third parties which copy, imitate, sell or otherwise fraudulently use its design.
Under the Industrial Property Law, a 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 on 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 geometrical and ornamental features 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 bottle for an energy drink. However, the 3D trademark counterpart to that design can be related to additional products that are commercially related to it – for example, the energy drink itself.
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 goods or service; and
- recognised as identifying the source of the goods or services.
Further, the more distinctive a 3D trademark is, the stronger the protection it receives from 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.