April 16, 2010
In Mexico, the Mexican Trademark Office (TMO) has been reluctant to grant registrations for composite trade marks, especially those involving the protection of the shape of bottles. Arguably, this is because the TMO improperly focuses its analysis solely on the shape of the bottle, without studying the collection of elements as a whole.
In one case, a registration for a composite trade mark for alcoholic drinks, consisting of a three-dimensional bottle shape, as well as the brand name and a label design, was denied on the basis that the bottle shape was not unique. The TMO thus ignored the product’s brand name, design, combination of colors and the distinct arrangement of these elements.
This resolution was ultimately revoked by a circuit court, which established that the elements of a composite trade mark must be analysed jointly. The court said that, even though the bottle in question was common, the elements that comprise it taken as a whole provide distinctiveness, so the registration must be granted.
This resolution constitutes an important precedent for these types of composite trade mark applications. Although it is not mandatory for the TMO to follow the decision, it represents an improvement in the protection of trade marks in Mexico.
This decision suggests that it is possible to secure a registration for a composite trade mark, as long as the shape is tied in with the other distinctive elements of the mark, although administrative litigation may be necessary.
Source: Managing Intellectual Property Magazine, Jan 2009.