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NAFTA Update on Industrial Design Protection

NAFTA Update on Industrial Design Protection. MEXICO Industrial Design Protection, Annulment and Enforcement. Registrability conditions. They must be new New means: Of independent creation and differ significantly from known designs, or from combinations of known characteristics of designs

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NAFTA Update on Industrial Design Protection

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  1. NAFTAUpdate on Industrial Design Protection MEXICO Industrial Design Protection, Annulment and Enforcement

  2. Registrability conditions • They must be new • New means: • Of independent creation and differ significantly from known designs, or from combinations of known characteristics of designs • Susceptible of industrial application

  3. No protection will be given to • Elements or characteristics dictated only by technical considerations or to achieve a technical effect when: • They incorporate not an arbitrary contribution of the designer • Elements or characteristics which exact reproduction is needed to allow the product to be mechanically mounted or connected to other product • Expect when • The design per se consists in a form created to allow the mounting or multiple connections within a modular system

  4. Industrial Designs are divided into: • Industrial drawings • Combinations of figures, lines or colors incorporated into an industrial product for purposes of ornamentation which provides a peculiar and own aspect • Industrial Models • Three-dimensional forms which may serve as a type or pattern in the manufacture of an industrial product, which gives it an special appearence not involving technical effects

  5. Causes for the administrative annulment of Industrial Designs • When granted in contravention to the provisions related to the requirements and conditions for registration • When granted in contravention to the provisions of the law in force when the registration was registered • When during prosecution the application was abandoned • When the grant was issued based on gross error or inadvertence or when the registration was allowed in favor of someone not having the right to obtain it

  6. What constitutes infringement of Industrial Designs? • The manufacturing of products protected by an Industrial Design Registration, without owner’s consent or without a license • Offer for sale or putting into circulation products protected by an Industrial Design Registration knowing that they were manufactured without Registrant’s consent or without a license

  7. What constitutes infringement of Industrial Designs? • To reproduce or imitate industrial designs protected with a Registration without Registrant’s consent or without a license • Other violations to the provisions of this Law that are not considered felonies

  8. Nullity action: Ladrillera Mecanizada, S.A. de C.V. vs. Quintanilla Villarreal • Mexican Industrial Model Reg. No. 5751 Curved Roof Tile • Prior Art

  9. Nullity action: Ladrillera Mecanizada, S.A. de C.V. vs. Quintanilla Villarreal • Legal standing to sue: Ladrillera is a manufacturer of curved roof tiles • Evidence filed: cataloges and photographs • Grounds: the curved roof tile object of Registration No. 5751was not new nor novel when the application was filed (year 1991) • Novelty standard fixed by the Mexican PTO: • that the evidence filed had to be in the public domain and must divulge the invention explicitly • Mexican PTO decision: • Registration No. 5751 was declared null because the evidence filed showed that it was known well before 1991.

  10. Mexican Industrial Model Reg. No. 5734 Tire for wheelbarrow Prior Art Nullity action: Herramientas Truper, S.A. de C.V. vs. Cia. Hulera Tornel, S.A. de C.V.

  11. Nullity action: Herramientas Truper, S.A. de C.V. vs. Cia. Hulera Tornel, S.A. de C.V. • Legal standing to sue: Truper imports tires for wheelbarrows and was sued for the unauthorize use of the tire for wheelbarrow object of Registration No. 5734 • Evidence filed: cataloges showing tires for wheelbarrows • Grounds: the tire for wheelbarrows object of Registration No. 5734 lacked originality when the application was filed (year 1992) • Novelty standard fixed by the Mexican PTO: • Universal novelty • Mexican PTO decision: • Registration No. 5734 was declared null because the evidence filed showed that it was not original back in 1992.

  12. FRONT FRONT BACK BACK Infringement and Nullity actions: Mold-Tec Cuernavaca, S.A. de C.V. vs. Industrias Internacionales de Plásticos, S.A. de C.V. • Mexican Industrial Model Reg. No. 10,882 Collapsible spoon • Infringer’s spoon and prior Art

  13. BACK Infringement and Nullity actions: Mold-Tec Cuernavaca, S.A. de C.V. vs. Industrias Internacionales de Plásticos, S.A. de C.V. • Mexican Industrial Model Reg. No. 10,882 Collapsible spoon • US Patent No. 4,615,120 Prior art

  14. FRONT BACK Infringement and Nullity actions: Mold-Tec Cuernavaca, S.A. de C.V. vs. Industrias Internacionales de Plásticos, S.A. de C.V. • Mexican Industrial Model Reg. No. 10,882 Collapsible spoon • US Design Patent No. 336,047 Prior art

  15. Infringement and Nullity actions: Mold-Tec Cuernavaca, S.A. de C.V. vs. Industrias Internacionales de Plásticos, S.A. de C.V. • Legal standing to sue: Industrias is an importer and reseller of collapsible spoons • Evidence filed: • Invoices • Correspondence • US Patent No. 4615120 • US Design Patent No. 336047 • Grounds: the collapsible spoon lacks novelty because it had been sold in Mexico by Industrias before the filing date of Registration No. 10,882 (Year 1998), and was Registered in the U.S. before.

  16. Infringement and Nullity actions: Mold-Tec Cuernavaca, S.A. de C.V. vs. Industrias Internacionales de Plásticos, S.A. de C.V. • Mexican PTO decisions: • Registration No. 5734 was NOT declared null because the evidence filed shows that the prior art collapsible spoon is different. The head of the Registered Design has the shape of a shovel, and the head of the Designs of the prior art have the shape of a spoon • Besides, earlier US Patent 4615120 can not be used to support a declaration of annulment because it protects the utility of the product and not its shape. • No infringement was found since the collapsible spoons in question are different.

  17. Infringement and Nullity actions: Plasti-Envases, S.A. de C.V. vs. Visaplast, S.A. de C.V. • Mexican Industrial Model Reg. 10129 Container for liquids • UK Industrial Design No. 1042657 Prior art

  18. Infringement and Nullity actions: Plasti-Envases, S.A. de C.V. vs. Visaplast, S.A. de C.V. • Mexican Industrial Model Reg. 10129 Container for liquids • UK Industrial Design No. 2029523 Prior art

  19. Infringement and Nullity actions: Plasti-Envases, S.A. de C.V. vs. Visaplast, S.A. de C.V. • UK Industrial Design No. 2072838 Prior art UK Industrial Design No. 2072838 Prior art • Mexican Industrial Model Reg. 10129 Container for liquids

  20. Infringement and Nullity actions: Plasti-Envases, S.A. de C.V. vs. Visaplast, S.A. de C.V. • Plasti-Envases filed an administrative infringement declaration request against Visaplast. • Evidence filed: • Physical evidence • Visit of inspection • Grounds: Visaplast manufactures and commercializes the container object of Mexican Industrial Model Registration No. 10129 without the owner’s authorization and without a license.

  21. Infringement and Nullity actions: Plasti-Envases, S.A. de C.V. vs. Visaplast, S.A. de C.V. • Legal standing supporting the nullity action: Visaplast was sued for infringement • Evidence filed: • Cataloges • UK Design No. 1042657 • UK Design No. 2029523 • UK Design No. 2072838 • Grounds: the container lacks novelty because it is anticipated by several UK Design Registrations and was exploited by third parties before the filing date of Registration No. 10129 (Year 1997).

  22. Infringement and Nullity actions: Plasti-Envases, S.A. de C.V. vs. Visaplast, S.A. de C.V. • Mexican PTO decisions: • Registration No. 10129 was declared NULL because the evidence filed showed it is similar to the containers found in the prior art, meaning that it lacked novelty at the time of its filing date. • No infringement was found since Industrial Model Registration No. 10129 was declared null.

  23. Nullity action: Industrias Alen, S.A. de C.V. vs. Química Goncal, S.A. de C.V. • Mexican TM Registration # 396865 Prior Art • Mexican Industrial Model Reg. No. 8009 Cleaning products container

  24. Nullity action: Industrias Alen, S.A. de C.V. vs. Química Goncal, S.A. de C.V. • Legal standing to sue: Alen manufactures and sells cleaning preparations with a container almost identical to the one object of Industrial Model Registration No. 8009. • Evidence filed: Certified copy of Mexican TM Reg. No. 396865 with a filing date of September 28, 1990 • Grounds: The container object of Registration No. 8009 lacks novelty (Year 1995) because it is anticipated by the 3-D Registered Trademark of Alen (Year 1990) • Mexican PTO decision: • Registration No. 8009 was declared null because the evidence filed showed that Goncal’s container differs not significantly from Alen’s container, and consequently lacks novelty.

  25. MEXICOIndustrial Design Protection, Annulment and Enforcement • Thank you • Rafael Beltran • Beltran Fortuny y Beltran Rivera, S.C. • rbeltran@beltran.com.mx

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