What is Commercial Image?
Pursuant to Article 172, Section VII of the Federal Law for the Protection of Industrial Property, the commercial image, also known as the commercial image of a company, may be used for the following purposes trade dress refers to the plurality of operational or image elements, including, among others, size, design, color, shape arrangement, label, packaging, decoration or any other, which when combined, distinguish products or services in the market and it was as of 2018, that these elements as a whole, are susceptible to be registered as a trademark in Mexico.
Once the brand name has been registered, should the trade dress also be registered?
The answer is yes. In case your product or service is recognized in the market by more than just the name, the ideal is to register it, in order to guarantee the exclusive use of the commercial image that identifies your product or service in the market and thus prevent a third party from using it to take advantage of the commercialization of your product or service, making use of the commercial image that has already been previously positioned in the market.
It is worth clarifying that although registering the name of your trademark gives you benefits on its use, this is limited only to the name of the trademark and design in its case, and it cannot be understood that such registration extends to everything that allows the consumer to identify the product or service. It is therefore of relevant importance to identify if your product or service has a commercial image in order to register it and enjoy the benefits granted by its registration.
The commercial image is considered as a "non-traditional" trademark, but this does not mean that they are uncommon, on the contrary, there are many products and services in the market that the consumer can identify and not precisely by the name of the trademark, but by the presentation and / or appearance of the product or service, which is why its registration is recommended.
Aspects to consider in the commercial image
EXPIRATION OF A TRADEMARK
In Mexico, trademarks are registered before the Mexican Institute of Industrial Property (IMPI) and through its registration, the holder of the trademark is granted the exclusive use of the same, however, this is not definitive.
Although the trademark registration granted by the IMPI grants the exclusive right of use for a term of ten years, this can only be considered as the first step to obtain such exclusivity, since as of the publication of the new Federal Law for the Protection of Industrial Property, published in the Official Gazette of the Federation on July 1, 2020, abrogating the Industrial Property Law, the holder of a trademark must carry out a series of additional procedures to maintain the validity of the same.
Thus, as of the entry into force of the new law, Article 233 of the LFPPI states that if the owner of a trademark does not declare the real and effective use of the trademark every 3 years during its term, it is subject to the expiration of the registration, having as a consequence the loss of the right to its exclusive use.
However, it is sufficient for the holder of the trademark to carry out, every three years during the term of the trademark, the corresponding procedure to the Statement of actual and effective use The Institute is not required to issue an Administrative Declaration in terms of Article 233 of the LFPPI, indicating the specific products or services to which it applies, accompanied by the payment of the corresponding fee (currently $985.67); otherwise, it is automatically forfeited, i.e., the Institute is not required to issue an Administrative Declaration in this regard.
It should be noted that the scope of protection of the registration will continue exclusively on those products or services on which the use has been declared and, in addition, must be limited to those that have been indicated since the initial application for registration. In other words, the Declaration of Use may not increase o change the goods/services for which the trademark is registered.
In this sense, does the revocation of a trademark (for failure to declare its real and effective use) cause that there may be a new registration that is identical or confusingly similar?
The answer is affirmative; when revocation occurs due to the lack of declaration of use, this opens the possibility that such trademarks may be susceptible to a new registration by a third party.
By virtue of the above, if you are the owner of a trademark that was registered after the entry into force of the new Law and you are interested in keeping its ownership, it is worthwhile to monitor the time since its registration was granted and thus, carry out the corresponding procedures to keep it.
