Industrial Designs | Trade Secrets | Legal Advice in Mexico

What is a Registered Design?

Legal definition of “design”

A Registered Design is a legal right which protects the overall visual appearance of a product or a part of a product in the country or countries a person registers it.

For the purposes of registration, a design is legally defined as being “the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or ornamentation

This means that protection is given to the way a product looks. The appearance of the product may result from a combination of elements such as shapes, colours and materials

References to texture and materials does not mean that protection may be granted for the feel of a texture, or what the product is actually made from; only that these features may influence what the overall product looks like. Equally, design registration cannot protect non-stylised wording (ie. basic text), the way something works, or the idea or concept behind a product

What is a "product"?

People can register a three-dimensional product such as an industrial or handicraft item (other than a computer program), or two-dimensional ornamentation alone, eg. a pattern intended for display upon a product, or a stylised logo. In all cases, the term “product” can mean things like packaging, get-up, graphic symbols, typographic typefaces, and parts of products intended to be assembled into a more complex product.

In respect of ‘get-up’, protection may be granted to the overall presentation of those products

which comprise multiple components but which are sold as one single item, eg. a board game complete with playing pieces, or a product in its packaging. ‘Get-up’ does not include sets of items which may be bought individually, such as cutlery or suites of furniture

What does a Registered Design do?

A Registered Design can be a valuable intellectual property right. It can form the basis of an infringement action against other parties, and will help the owner in stopping others from creating designs which are too similar to the one they own (within the same geographical area of protection of the design).

Requirements for a registered design

For its registration to be valid, a design must:

Be new
Have individual character

A design is considered to be ‘new’ if no identical (or very similar) design has been published or publicly disclosed in Mexico for the purposes of Mexican designs and in Spain or the European Economic Area (EEA) for a Spanish or Community Design. However, people can apply to register a design in the country where people seeks protection up to 12 months after the designer first discloses it

The term ‘identical’ covers designs whose features differ only in ‘immaterial details’

Individual character means that the appearance of the design (known as the overall impression)

Is different from the appearance of other already known designs

This is assessed from the view of the “informed user”, a person who is familiar with the kind of product in question, and the amount of design freedom will be taken into account

Are there any exclusions?

People may not be able to register their designs if:

It is not a design by legal definition as described above

It is offensive

It consists of, or includes, certain protected flags and international emblems

It is solely dictated by the product’s technical function

Trade Secrets

People should consider keeping something as a trade secret if:

It is not appropriate for intellectual property (IP) protection

They want to keep it secret or

They want protection to extend beyond the term of a patent

If it would be difficult to copy the process, construction or formulation from the product itself, a trade secret may give the protection people need

However, a trade secret does not stop anyone from inventing the same process or product independently, and can be difficult to keep.

The law protects trade secrets. (Industrial Property Act and Criminal Code) To keep trade secrets protected, people must establish that the information is confidential, and ensure that anyone inventors tell about it signs a Non-Disclosure agreement (NDA). If they then tell anyone about it, this is a breach of confidence and it is possible to take legal action against them.