The protection of three-dimensional Trademarks, to distinguish products and/or services against competitors, can mark the difference for a company. In accordance with the Intellectual Property Act, registration of a three-dimensional mark requires that the shapes are sufficiently distinctive so as to identify a product or service against others of the same type, that they are not of common use, and that they are not the usual and common shape for the protected products or imposed by their nature or industrial function.
It is common that on trying to achieve a competitive position in the market, companies focus on aspects such as cost reduction, extensive staff training, process simplification and customised service. However, an intangible asset which should not be forgotten for achieving this purpose is the use and protection of three-dimensional shapes to distinguish products and/or services from the competition, in other words, using the legal concept of trade mark registration which can be renewed indefinitely for periods of 10 years.
The competitive advantage for a company of using a three-dimensional trade mark lies in the impact which this has on consumers as it leads to an immediate association of the product or service with a particular company for example, when seeing a soda bottle (e.g. PEPSI), a juice container (e.g. JUGOS DEL VALLE), a perfume bottle (e.g. BARDAHL) or a jar of honey (e.g. CARLOTA) , etc.
In accordance with the Intellectual Property Act, registration of a three-dimensional mark requires that the shapes are sufficiently distinctive so as to identify a product or service against others of the same type, that they are not of common use, and that they are not the usual and common shape for the protected products or imposed by their nature or industrial function.
In addition, legal restrictions are applicable such as descriptive shapes, the existence of previous registrations or applications which are similar leading to confusion, animated or changing three-dimensional shapes, those which mislead the public etc. Similarly, the Act mentions that three-dimensional shapes must not be in the public domain or lack originality, terms which demonstrate the lack of knowledge and legislative technique in this area, with it being appropriate to indicate the lack of distinctiveness, as can be inferred from the legal criteria on defining that originality implies that the three-dimensional shape "because of its set of features or novel application clearly identifies one product from another of the same type” .
In other words, that the shape itself makes it possible to distinguish one product from another one, i.e. that it is distinctive as well as the fact that the nature of the concept of public domain means it cannot be applied to the area of Trademarks.
Similarly, it is necessary to consider the possibility of obtaining accumulated protection such as, artistic works (copyrights), whose protection is aimed at the aesthetic purposes of the three-dimensional shape, or as industrial models, linking the special novel appearance with industrial purposes, or three-dimensional marks, which are sufficiently distinctive so as to differentiate product or services, irrespective of the special and novel appearance with industrial purposes or the aesthetic purposes of the shape.
In light of the above, it is clear that a sufficiently distinctive three-dimensional trade mark can bring a significant competitive advantage as it is immediately associated with a particular product and service and may lead to the intangible asset becoming the companys most valuable asset.
Finally, we should mention that the criteria applied for granting the registration of three-dimensional Trademarks in Mexico by the relevant authorities and, in particular, by the courts, is more flexible with regards the requirements established by the Act. This has lead to an increase in applications and granting of registrations, also leading to this intangible asset being considered as an extremely important element in a companys position in the market.