MEXICO Law and Practice Contributed by: Eduardo Kleinberg, Adolfo Athié, Claudio Ulloa and Juan Carlos Hernández, Basham, Ringe y Correa S.C.
3.9 Collective Management and Licensing Collecting societies are authorised by the National Copyright Institute to operate as such and collect roy- alties. Typically, they negotiate the licence fees directly with users. Nonetheless, the National Copyright Insti- tute is authorised to determine the tariff in the absence of agreements between users and collecting societies and they have fixed tariffs for specific uses such as the use of music within the common areas of hotels. Mexican collecting societies are non-profit and may only retain from their members the amounts needed for their operation. They are due to treat both their members and users in an equitable manner. They also have agreements with equivalent societies worldwide. 4. Industrial Designs and Trade Dress 4.1 Legal Framework and Protectable Subject Matter The FLPIP and its regulations constitute the primary legal framework governing industrial designs and trade dress in Mexico. International treaties to which Mexico is a party may also be applicable and are inter- preted consistently with domestic law. Industrial designs are protected under two main cate- gories: (i) industrial drawings, which consist of a com- bination of lines, shapes, figures, or colours incorpo- rated into an industrial product to give it a distinctive visual appearance; and (ii) industrial models, which refer to three-dimensional forms that serve as a pat- tern for the manufacture of a product and confer a particular visual appearance. In both cases, protection is limited to aesthetic features and expressly excludes any technical or functional aspects. The protectable aspects of a product’s appearance include, among others, its shape, configuration, sur- face ornamentation, colour combinations, and over- all visual impression. Novelty is assessed based on whether the design has been independently created and whether it produces a significantly different overall impression on an informed user compared to prior known designs. Trade dress, recognised in Mexico as a form of trade mark protection, covers the overall image or appear-
ance of products, packaging, or commercial estab- lishments, provided that such appearance functions
as an indicator of commercial origin. 4.2 Requirements for Protection
According to Mexican law, to be eligible for protec- tion, an industrial design must have novelty and be subject to industrial application. Novelty arises based on whether the design was independently created and if it produces a significant overall impression from any other prior known design. Unregistered designs are not protected. Trade dress is treated as a form of trade mark under Mexican law. Therefore, its requirements for protec- tion are aligned with those applicable to trade marks. In particular, trade dress must be distinctive, ie, capa- ble of identifying the commercial origin of goods or services. Unregistered rights may arise in limited circumstances. Trade dress may acquire protection through use if it becomes distinctive, although regis- tration significantly strengthens enforceability. 4.3 Registration and Term The procedure for registering industrial designs is governed by the same rules applicable to patent applications with respect to filing requirements, formal examination, and substantive examination. Industrial design registrations are granted for an initial term of five years from the filing date. The registration may be renewed for successive five-year periods, up to a maximum term of 25 years. 4.4 Enforcement and Remedies In the case of industrial designs, infringement occurs when a third party uses a design that does not pro- duce a significantly different overall impression on an informed user compared to a previously registered design. Infringement also includes manufacturing, offering for sale, selling, or importing a product incor- porating the protected industrial design without the consent of the titleholder or the licensee. Enforcement actions are brought before the IMPI through administrative proceedings, and civil courts may subsequently be involved for the recovery of damages. Available remedies include administrative
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