In Mexico exclusive rights for using a trademark are acquired only through registration. The Mexican Law of Industrial Property (LIP) classifies trademarks in four categories for the purposes of registration, namely: word marks; design marks; composite marks (words in combination with a design) and three-dimensional marks.
In a general manner the LIP establishes that tree-dimensional forms may qualify for trademark protection. In turn the Regulations thereof specify that wrappings, packing, bottles, containers and the presentation or form of the products themselves will be deemed as three-dimensional forms.
Prior to the LIP only bottle shapes qualifies for protection, though there was no specific recognition in the law for three-dimensional marks. Accordingly, since the LIP became effective on June 28, 1991, applications for three-dimensional forms have kept the Trademark Office's examiners very busy.
Apart from the general prohibitions applicable to all type of marks, the LIP establishes four specific restrictions into the registrability of three-dimensional forms, namely: (1) when the form is part of the public domain; (2) when the form has become of common use ; (3) when it lacks sufficient originality easily to distinguish it ; (4) when it is the normal and ordinary form of the products or that imposed by their nature or industrial function.
While most of the restrictions are easily understood by trademark practitioners, the one concerning the public domain has proved to be an issue on which no consensus has been reached yet. While in other intellectual property areas such as patents and copyrights the public domain is a well-defined concept in Mexican Law, the public domain for trademarks, particularly for three-dimensional forms, appears to be hard to conceive. It seems clear, however, that lawmakers' reasons for including this restriction were to prevent granting exclusive rights over three-dimensional forms whose use has been generalized, thus the common use restriction should had been sufficient. In conclusion the public domain restriction should be abolished in the next revision of the LIP for the benefit of legal certainty.
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.