Sometimes companies develop products and packaging , with a shape or physical characteristics that distinguish them from other products of the same nature, making a considerable investment of time and creative activity. Therefore, it is worth obtaining protection for the exclusive use of the shape of these products, containers, or packings. Conveniently, Intellectual Property Law over time has developed various forms of protection that can be applied to such cases.
Three-dimensional trademarks are part of the group known as non-traditional trademarks, which also include sounds such as the MGM® lion's roar, smells such as the aroma of Play-Doh® plasticine, taste such as the fruit flavor for medicines, tactile features such as the texture of Old Parr® whiskey bottles, among others. Some of these trademarks are so well known that just reading the description produces a memory in the minds of consumers, proving the distinctive aptitude of these types of brands.
Regarding three-dimensional marks, it is necessary to mention that they are considered as those that appear on three planes or dimensions, these being: depth, width, and height. The representation of the three-dimensional marks for registration purposes must be done in images or drawings that show the planes or dimensions that make them three-dimensional, showing the marks from different angles or views.
Three-dimensional trademarks must fulfill the functions of trademarks, such as: (i) distinguishing the products or services it protects, (ii) indicating business origin, (iii) integrating business goodwill and (iv) advertising.
In Guatemala, the registration of three-dimensional trademarks is allowed, based on Article 4 of the Industrial Property Law, Decree 57-2000 of the Congress of the Republic, which establishes that “trademark” is understood to be any nominative, figurative sign, three-dimensional, visually perceptible, or combined sign, that can distinguish the products or services of an individual or legal person from those of another.
However, the scope of the specific protection of three-dimensional trademarks is not developed in the Industrial Property Law or in its Regulations, so the same legal provisions apply to them as to traditional trademarks, regarding formal requirements, procedure, causes of inadmissibility for intrinsic reasons and for the rights of third parties, legal actions, among other legal provisions. Likewise, the term of protection is for ten years that can be renewed for equal periods.
It is very important to consider that three-dimensional marks must have a precise and arbitrary shape in relation to the products on the market, which clearly distinguishes them from the usual or expected shape of the products. In other words, the designs that are intended to be protected as three-dimensional marks must be distinguished from what exists in the public domain, whether it is a bottle, box, cookie, etc., its shape must be distinctive and comply with the other requirements that the law establishes.
Here are some examples of three-dimensional trademarks registered in Guatemala before the Intellectual Property Registry. The design on the left side is a product and the design on the right side is a container.
Three-dimensional designs in some circumstances may also be protected by copyright or may be protected as industrial designs. Regarding copyright, Article 3 of the Law on Copyright and Related Rights, Decree 33-98 of the Congress of the Republic provides that: “The enjoyment and exercise of copyright and related rights recognized in this law is not subject to the registration formality or any other and they are independent and compatible with each other, as well as in relation to property and other rights that have as their object the material support to which the work is incorporated, the artistic interpretation, phonographic production or with industrial property rights. Works of art created for industrial purposes will also be protected by this law in terms of their artistic content”. The underlining is proper.
Meanwhile, in relation to industrial designs, Article 148 of the Industrial Property Law establishes that: “The protection conferred on industrial designs does not exclude or affect that which may proceed according to other legal regulations, such as those relating to trademarks. or copyright”.
It should be noted that, as well as three-dimensional trademarks, both copyright and industrial designs have their own regulations and procedures, so it is necessary to analyze each specific case to determine the most appropriate protection for each design.
Finally, it is also necessary to note that the legislation against unfair competition also protects three-dimensional trademarks in a certain way, including them as part of the trade dress or commercial image of the products, according to article 173 of the Industrial Property Law, so it is possible to initiate legal actions against acts of unfair competition that involve unauthorized use of three-dimensional marks. Thus, we can conclude that in Guatemala there are ways to protect the innovative developments of companies in terms of the shape and packaging of products, so that companies can explore these forms of protection to add value to their products.
At Arias we have a team made up of highly trained professionals to advise you on the different forms of protection of three-dimensional designs in Guatemala, as well as on other intellectual property issues. Do not hesitate to contact us for more information.
Author:
Ivón Hernández - Intellectual Property Director, ARIAS Guatemala
ivon.hernandez@ariaslaw.com
The information provided by ARIAS® is presented for informational purposes only. This information is not legal advice and is not intended to create, and does not constitute, an attorney-client relationship. Readers should not act upon this information without seeking advice from professional advisers.