Since 2006, Mexico’s Industrial Property Law (Ley de la Propiedad Industrial) has provided, in article 213, section XXVI, protection to the so called “trade dress.” In this manner, the law provides that the “use of a combination of distinctive symbols, operative elements and images, which allows for equal or similar products or services to be confused with others protected by this Law and by their use cause or induce confusion, mistake or deceive the general public, for having believed or assumed the existence of a relationship between the owner of protected intellectual property rights and unauthorized users,” is considered to be an administrative violation. Therefore, a party is subject to penalties in Mexico if such party uses a “similar” mark to another registered mark, even if such party could independently argue and determine that such does not cause confusion with another registered mark, but who at the same time uses such mark in images and in an operative form that confuses consumers (what in some countries is known as “trade dress”). The foregoing is based on the referenced article in the law, which characterizes such conduct as “unfair competition” and establishes that “the use of such operative elements and images in this manner constitutes unfair competition according to the terms of section I of this article,” and section I provides that “ any act that is contrary to the proper use and custom in industry, trade and services implies unfair competition and shall be subject to the matters regulated by this law,” which is also considered to be an administrative violation of Mexican intellectual property law. In conclusion, the use of combinations of distinctive symbols with images and operative elements in Mexico, which then cause confusion to the general public, is considered to be unfair competition and is subject to legal penalties.

Sources of information and legal notice: In preparing this document, the following sources of information, among others, have been utilized: Diario Oficial de la Federación, Bank of Mexico, Suprema Corte de Justicia de la Nación, Secretaría de Hacienda y Crédito Público, Consulta Mitofski, The Economist. The CCN Mexico Report should not be considered as legal or tax advice or used for any purposes other than as a source of information for the public at large.  For more information about the CCN Mexico Report, the topics contained therein or to inquire about legal services, please contact Robert M. Barnett (rbarnett@ccn-law.com) or Mario Melgar (mmelgar@ccn-law.com) at (210) 222-1642.

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