MEXICO Law and Practice Contributed by: Eduardo Kleinberg, Adolfo Athié, Claudio Ulloa and Juan Carlos Hernández, Basham, Ringe y Correa S.C.
8.4 Trade Marks, Trade Dress and Industrial Designs The distinction lies in that an industrial design needs to be new, while a trade mark needs only to be dis - tinctive. It does not need novelty in respect to existing designs, but only to be able to identify products or services. A trade dress is a specific kind of trade mark in Mexico and it can be registered if it is distinctive. These forms of protection are cumulative and an industrial design could be potentially registered as a trade mark if it is distinctive. This is common for bot- tle shapes, for example. However, if the trade mark is filed or disclosed before the industrial design applica- tion is filed, this may destroy the novelty requirement. 8.5 Copyright and Trade Marks The law expressly forbids the use and registration as trade marks of the titles and elements of copyrighted that are highly known in Mexico without authorisation of the copyright holder. A trade mark copying a work is therefore not registrable in Mexico. If the trade mark is pursued by the lawful owner of the copyright, then both protections can be accumulated. It is a common practice for copyright owners to register the titles and other relevant elements of their works as trade marks. 8.6 Enforcement and Remedies Across Multiple IP Rights Most forms of infringement claims are brought before the IMPI, which determines each infringement alleged by the plaintiff. For each infringement found, a fine would be imposed on the infringer, plus additional fines for each day that the infringement persists. Damages may be sought in an ancillary proceeding upon conclusion of the main infringement proceed- ing or separately before a civil court with jurisdiction over the defendant. There is no prohibition on double recovery and the plaintiff may be entitled to damages for each IP right infringed. 8.7 International and Cross-Border Considerations Conflicts between national and international IP regimes in cross-border disputes are generally man- aged through the principle of territoriality. As a gen- eral rule, IP rights must be protected or recognised in Mexico in order to be enforceable against alleged
to appropriate functional or previously protected tech- nical or aesthetic features. Mexican law also restricts the registration or use of certain copyrighted titles or well-known elements as trade marks without authorisation from the copyright holder. In practice, courts and administrative authorities assess overlapping claims by examining validity, scope, functionality, and temporal priority, ensuring that each right remains within its statutory limits and that enforcement does not result in unjustified monop- olisation of the same protected subject matter across different IP regimes. 8.3 Patents and Trade Secrets Confidential know-how or technical information can be protected as a trade secret before a patent appli- cation is filed, provided it meets the requirements of secrecy, economic value derived from confidentiality, and reasonable measures to maintain its protection. During the patent application process, however, the disclosure required in the specification and claims means that the technical information is no longer confidential to the extent it is published or otherwise made accessible to the public. Once a patent appli- cation is published, the disclosed content generally loses its trade secret status, as public availability is incompatible with the requirement of secrecy. As a result, patent protection and trade secret pro- tection are, in practice, largely mutually exclusive for the same disclosed subject matter. Any know-how that is fully disclosed in a patent application will no longer qualify as a trade secret once it becomes public through publication. After grant, expiry, or invalidation of a patent, trade secret protection does not revive for the disclosed subject matter. However, trade secret protection may continue to exist independently for any related infor- mation that was not disclosed in the patent applica- tion, provided that it remains confidential and contin- ues to meet the legal requirements for trade secret protection.
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