Artículos

The Trade-Dress

Patricia

By: Ana Esther Urquizo

The commercial image of a product or service -also known as trade-dress- can be registered before the Mexican Institute of Industrial Property as a trademark, being included together with holograms, smells and sounds within the so-called "non-traditional trademarks". These and the traditional trademarks -such as, among others, words, figurative elements, letters, numbers and color combinations- are according to article 171 of the Federal Law for the Protection of Industrial Property “...any sign perceptible by the senses and capable of being represented in a way that allows determining the clear and precise object subject matter of protection, which distinguishes products or services from others of the same kind or class in the market".

Nearshoring is a practice whereby companies transfer, either by themselves or through third parties, the totality or a part of their production or supply chains to either the country that will be their final market or to a third country close to it. . .1 .

Indeed, the set of characteristics of a product or service that, when combined in a certain way, make them unique, allows the consumer to identify them in the market. It is about the appearance of a product or service. It is also about its presentation.

Our Courts have established that "it is usual that the trademark is per se, or is associated with certain appearance, or distinctive look as ornamental elements and complements in general, for example, colors, type, style of lettering, packaging, etc. Thus, this sign or appearance with which the trademark sign is offered or advertised in the market is known as "commercial image", and has a dynamic function and a psychological ingredient, because it evokes or imprints in the mind of the consumer a set of the peculiarities of the product or service, either by inherent distinctiveness or acquired by use. On the other hand, this association is dual, both with the entrepreneur and with the good, to the extent that the more notorious, recognized, and famous is the mark, the better valued, accepted and reputed the products and services are".2 .

A typical example of a trade-dress is a service franchise -gift stores, travel agencies, to name a few- or restaurants whose colors, furniture and layout, decoration, menu, typeface, architectural design, characters, and uniforms, among other peculiarities, make them special.

An internet page or a web site where products and services of all kinds are commercialized because of the expansion in e-commerce operations is not excluded as a trade-dress and is also subject matter of protection under such figure.

The registration of a Commercial Image will be valid for a term of ten years, renewable for periods of equal duration, and its owner must also declare its use after the third year of registration. In addition, its unauthorized use shall be sanctioned as provided for in the law.

Article 386.- The following are administrative offenses:

…

XXIV.- To use the combination of distinctive signs, operative or image elements, which allow the identification of products or services that are the same or similar in degree of confusion to others protected by this Law and which by their use cause or induce the public to believe or assume a non-existent association with the person who accredits the right;

…

When the consuming public is induced to believe or presume that there is a relationship between a duly registered Commercial Image of a product or service with another of which it has no right whatsoever, taking benefits of the competitive advantage in favor of its owner, it shall be considered, therefore, that there is an administrative infringement punishable with:

…

I.- Fine up to the amount of two hundred and fifty thousand units of measurement duly updated, in force at the time the infringement is committed, for each conduct that is performed,

II.- Additional fine up to the amount of one thousand units of measurement duly updated, for each day that the infringement continues,

III.- Temporary closure for up to ninety days, and

IV.- Definitive closure. The sanctions will be applied according to the seriousness of the conduct or omission incurred by the infringer, without any specific priority as to their imposition.3

The Commercial Image of a product or service is therefore, essential to stand out in a saturated market, and its registration is highly recommended. The consumer public will undoubtedly recognize a product or service and distinguish it from another of the same kind or class, due to its configuration, layout, and arrangement. It will be the plurality of all those elements and their combination that will strengthen and determine its Commercial Image, which will lead its owner to obtain a competitive advantage.

[3] Article 388 of the Federal Law for the Protection of Industrial Property

[2] Thesis Digital Registration Number 170512 named "Commercial Image, its characteristics"

[1] Article 172, section VII of the Federal Law for the Protection of Industrial Property

Other Posts
  • Related Articles
  • More from Author

No hay publicaciones relacionadas.

Restructuring

Müggenburg, Gorches and Peñalosa's restructuring practice includes representation of corporate debtors, hedge funds, in various industries, etc., in restructuring proceedings and bankruptcy equivalents (insolvency proceedings).

Mergers & Acquisitions

We provide services in acquisitions, sales, mergers, spin-offs, reorganizations and co-investments, representing national and foreign clients operating in various industrial and commercial sectors.

Corporate /Transactional

At Müggenburg, Gorches y Peñalosa we provide legal services in all aspects of corporate law practice. Our group of professionals in this area has years of experience providing services to both national and international clients, with the most diverse needs and the highest standards of demand and sophistication in the service. Among our clientele are leading companies in their sectors worldwide, such as automotive, cosmetics, hotels and tourism, food industry, aeronautical industry, computer programs and systems, suppliers of the oil industry, technology, among others.

We advise our clients on the constitution of Mexican companies (commercial and civil) and associations, attending to the needs derived from the industry and/or commerce segment in which they focus their activities and their medium and long-term plans, also providing services for compliance with the regulatory requirements that may apply, including those derived from direct foreign investment, economic competition and obtaining the necessary licenses and permits for its operation. Our services also extend to the provision of corporate services within the ordinary course of business of our clients, including advice on the preparation, review and negotiation of all types of civil and commercial contracts, and the custody, updating and maintenance of corporate books. . We also provide services related to the opening and management of branches in Mexico of foreign companies.

We represent national and foreign corporate and/or investment groups in the acquisition of, and/or merger with, Mexican business entities, and on other occasions we also represent acquired Mexican entities. In both cases, we provide legal audit services to foresee possible contingencies of the operation, locate areas of opportunity and help determine the value of the company to be acquired. Likewise, in representing the acquirer, we prepare the legal documentation of the operation (specifically contracts for the sale of shares and/or association, with all its annexes and accessory contracts), and we carry out their negotiation with the counterparty. Likewise, in these cases we participate directly in the processing and obtaining of any authorizations, permits, licenses and concession titles required for the operation of our clients, and we advise on notices and notifications to government entities, including notifications of resolutions and opinions of the Federal Economic Competition Commission.

We provide advisory services for corporate restructuring and reorganization, also including international corporate groups with a presence in Mexico. In these cases we have worked in coordination with groups of financial and accounting advisors both from Mexico and abroad, and we have coordinated legal audits of subsidiaries of entities acquired in several Latin American countries (Argentina, Brazil, Chile, Colombia and Peru, among others, with local legal advisers in each case).

We advise on operations of association in participation, "joint-ventures", preparation and negotiation of agreements between shareholders, merger and spin-off of legal entities, establishment of trusts of any type, constitution of guarantees on any type of property, repurchase of shares by of companies listed on the Mexican Stock Exchange, as well as in the structure of purchase option plans and other types of specialized corporate operations.

We also provide services for the development of mechanisms that allow the efficient and effective anticipation and management of potential conflicts between shareholders; in this regard, we have represented groups of shareholders of Mexican companies in the implementation of corporate actions to defend their interests against the rest of the shareholders and the Company itself on internal corporate control issues, generally in coordination with litigation areas in matters commercial and civil.

Depending on each particular project or operation, we rely on other specialty areas of the Firm, in order to provide comprehensive services, under the highest standards of quality and efficiency.

Mergers & Acquisitions

We provide services in acquisitions, sales, mergers, spin-offs, reorganizations and co-investments, representing national and foreign clients operating in various industrial and commercial sectors.

Restructuring (Corporate and Financial)

Müggenburg, Gorches and Peñalosa's restructuring practice includes representation of corporate debtors, hedge funds, in various industries, etc., in restructuring proceedings and bankruptcy equivalents (insolvency proceedings).