Industrial Designs and 3D Brands as Accumulated Protection

In an era marked by the predominance of digital marketing, copying products from any industry has become easy and common. Companies investing in new product development must also invest in protecting such developments more broadly. As such, it is important to understand how to achieve accumulated protection.

What do we mean by accumulated protection? It is the protection of a product under more than one industrial figure; that is, a product can be protected as an invention (patent), utility model, industrial design or brand (traditional or nontraditional). 

The most common way to achieve accumulated protection is industrial design (industrial model) rather than a 3D brand; however, situations can be evaluated to consider the feasibility of such protection. It is important to understand how each of these protection figures is defined:

• Industrial models, made up of any 3D shape that serves as a type or pattern for the manufacture of an industrial or artisan product, which gives it a special appearance as long as it does not imply technical effects (Article 66. LFPPI *).
• A trademark is understood to be any sign perceptible by the senses and capable of being represented in a way that allows determining the clear and precise object of the protection, which distinguishes products or services from others of the same kind or class in the market (Article 171. LFPPI).

*LFPPI (LEY FEDERAL DE PROTECCIÓN A LA PROPIEDAD INDUSTRIAL, vigente 5 nov 2020)

For this reason, industrial designs seek to foster creativity around product designs and investments to produce innovative consumer goods that incorporate these designs, with the purpose that the products offer an aesthetic as well as functional interest to consumers with the goal of increasing its commercial value. This structure has the scope of preventing the manufacturing and distribution of any product in which the design is incorporated. It should be noted that this impediment or exclusive right is valid for five years from the date of presentation of the application, renewable for successive periods of the same duration up to a maximum of 25 years.

On the other hand, brands and especially 3D brands seek to promote transparency and the spirit of competition in the market and channel consumer demand, allowing consumers to distinguish the products that carry the brand from other equivalent products of the competition; exclusive rights to trademarks can be granted for an unlimited period if the registration is periodically renewed.

The shape of a product may have an intrinsic, distinctive character as a trademark or have acquired that character. With the diffusion of the product by digital media or any mass media, the user becomes aware that a particular shape is not accidental but rather constitutes a brand used by a company to differentiate its products (perfume and beverage packaging, for example). Such shapes are eligible for trademark protection as soon as consumers clearly appreciate that the product has a well-defined commercial origin and that the shape is not merely the style of the product.

Therefore, it may happen that over time, the shape or configuration of a product, originally conceived as an industrial design, becomes a trademark of that product. In those cases, the shape or configuration would enjoy cumulative protection; that is, the design and trademarks acquire a sufficiently distinctive character.

Additionally, there are important advantages to having these two protections or accumulated protection. On the one hand, the fact that it is possible to have protection to avoid the manufacturing and distribution of the product for a period of up to 25 years is very useful to achieve its commercial positioning and at the same time, once it has been positioned, this protection can be maintained in an unlimited way by having the 3D trademark registration.

One of the requirements to consider for the protection of a new industrial design is that it must be new and susceptible to industrial application.

As we have shared, if our design is new according to the criteria of industrial property, for the design to be considered new it must be independently created and differ significantly from the rest:

• An independent creation is considered when no other identical industrial design has been made public before the filing date of the registration application. Industrial designs whose characteristics differ only in irrelevant details will be considered identical.
• On the other hand, the significant degree is the general impression that the industrial design produces on a technician in the field and that differs from the general impression produced by any other industrial design, which has been made public before the date of presentation of the registration request.

Regarding 3D brands, it is understood that wrapping, packaging and the shape or presentation of the products are included as 3D shapes. It is important in the registration of trademarks in general to determine the specific products to be protected, to define the class (Nice Classification, this is an international classification of products and services that applies to the registration of trademarks) in which it must be registered to have adequate product protection.

As mentioned, industrial property allows us to receive protection under more than one form or figure and this is the case of industrial designs and 3D trademarks, providing accumulated protection.