Trademark Priority in Mexico: Why Filing Late Costs a Decade

The attributive system and what an application does give you

Mexico belongs to the family of attributive systems. The exclusive right to use a trademark is not born from use but from registration: Article 170 of Mexico's Federal Law for the Protection of Industrial Property (Ley Federal de Protección a la Propiedad Industrial, LFPPI) reserves that right for whoever registers, and Article 171 defines a trademark as "any sign perceptible by the senses and capable of being represented in a manner that allows the clear and precise scope of protection to be determined, which distinguishes goods or services from others of the same kind or class in the market." Priority — the better right against later applications — is determined by the date and time of filing. Whoever reaches the counter first, physically or electronically, has the better expectation.

I say expectation, not right, on purpose. The application is not the certificate (as was incorrectly reported in the Merlin Duck case). The application only opens a turn, fixes a priority date, and submits the sign to examination; in other words, it grants a place in line, not the certainty of registration. The registration certificate — which arrives months later if examination is favorable and no one opposes — is what consolidates the exclusive right of use for ten renewable years.

Confusing the filing receipt with the certificate — a mistake made even by companies with considerable revenue — is the first link in almost every story that ends in litigation. Owning the internet domain, the articles of incorporation, or thousands of followers does not make you the owner; the only document that proves ownership of the mark is the certificate issued by the Institute.

The procedure

The trademark procedure has an architecture that, properly understood, is a tool rather than a mere formality. Once the application is received, the Institute publishes it in the Gazette. From the moment that publication takes effect, a non-extendable one-month period runs for opposition. Article 221, as amended by the decree published in the Federal Official Gazette on April 3, 2026, is explicit about who may oppose: "any person with an interest."

There is, however, an important caveat: Article 259 bars a later cancellation action based on the same cause and the same evidence already weighed in the opposition once the Institute has ruled. In other words, a badly used opposition can be more dangerous than filing nothing at all.

Once the month ends, the Institute conducts formal and substantive examination under Article 225 and, if there are office actions, bars to registration, or an opposition, it communicates everything in a single office action and gives the applicant two months to respond. In substantive examination the Institute cites earlier rights ex officio: it confronts the sign with what was previously applied for or registered. The April 2026 reform set, for the first time, a maximum decision period for distinctive signs: Article 111 bis fixes it at five months when there are no office actions or oppositions — against the one year that governs patents, utility models, and designs — with a three-month cap for renewals, as I documented when commenting on the decree itself.

The point I want to stress is a different one: your own application not only secures priority, it also builds the legal standing you will later need to seek an administrative declaration against someone else's registration.

Prior-use cancellation, seen from the evidence

Article 258 lists six grounds for cancelling a trademark registration, and the second contains the statutory hypothesis for prior-use cases. Its current wording allows cancellation when the registered mark "is identical or confusingly similar to another that has been used in the country or abroad before the filing date of the application for the registered mark," and adds a hard evidentiary condition: that "whoever asserts the better right based on prior use proves having used a mark uninterruptedly in the country or abroad, before the filing date or, where applicable, the date of first use declared by the party that registered it."

That word — uninterruptedly — is the whole game. Proving prior use since 1986, as in the first file, is not done with testimony or a sworn statement; it is done with dated invoices, dated advertising, sales receipts, supplier contracts, notarized attestations of fact, catalogs with printer and year, and a documentary narrative covering decades without gaps. Every year without a supporting document is a crack the opposing party will use to try to destroy the action. That is why these disputes are long and expensive: not because the law is obscure, but because proving prior use requires monumental, well-executed work.

It is like a building raised brick by brick that the adversary will try to knock down at every instance.

There is also a deadline to keep in mind. Article 258 draws a clear line: cancellation actions under sections II, III, and IV may be brought within five years from the date the publication of the registration in the Gazette takes effect; those under sections I, V, and VI may be brought at any time. A prior user who discovers a third-party registration does not have unlimited time under section II: the clock runs out in five years (a period that proves too short for some owners, who tend to realize it when it is already too late).

A common mistake I see is confusing section II with section IV. Section IV does not deal with a party's prior use but with the authority's error: it applies when the registration was granted "through error, inadvertence, or difference of judgment" despite an earlier pending application or an existing registration considered to be encroached upon. The Mexican Supreme Court (SCJN), in binding precedent P./J. 135/2026 — deciding direct amparo review 6714/2025 on February 24, 2026, and publishing the thesis on June 19 — upheld the constitutionality of section IV against the claim that "error," "inadvertence," and "difference of judgment" were undefined concepts; it held that IMPI's power is constrained because it can only be exercised in a trial-like proceeding, with evidence and argument. Invoking section IV when what you have is prior use, or section II when what happened was an examination error against a registered right, usually costs the case.

Bad faith, agents, and unfaithful distributors

Sections V and VI of Article 258 are the ones that rescue those betrayed by their own commercial chain. Section V cancels the registration obtained by "the agent, legal representative, user, or distributor of the owner, or any other person who has had a direct or indirect relationship with the owner of a mark registered abroad," when that person applies for and obtains the registration in its own name without the foreign owner's express consent. Section VI, broader, cancels the registration obtained in bad faith. Both can be asserted at any time, without the five-year lock, which makes them the natural instrument for the second file.

In that second case, the distributor who registered its supplier's mark fits the hypothesis of section V with textbook precision: there was a distribution relationship, there was a registration in the distributor's own name, and there was no consent from the owner. Even so, recovery took years, because it is one thing for the ground to exist and another for the evidence of the relationship — the contracts, the purchase orders, the correspondence — to be analyzed with the speed it deserves.

Non-use cancellation as a prior strategy

Before suing for cancellation, it is worth asking a question that can save years and, above all, money: is the earlier mark actually in use? Because if it is not, there is a shorter and cheaper route. Article 235 establishes the lapse of the registration when the mark has not been used for three consecutive years, and Article 233 also imposes an obligation whose breach is fatal: declaring real and effective use within the three months following the third anniversary of the grant, on pain of automatic lapse, with no need for a decision by the Institute. Many registrations die on their own through this omission, and a registry pruned in time reveals opportunities the hurried litigant does not see.

The procedural advantage of non-use cancellation lies in the burden of proof. When lapse for non-use is sought, the petitioner does not have to prove an impossible negative fact; it asserts non-use and triggers a presumption the law places on the registrant, who must show that it did use the mark during the relevant period. It is a rebuttable presumption, but it flips the weight — the registrant carries the burden of proving use. That reversal makes non-use cancellation lighter, faster, and cheaper than prior-use cancellation, since it is the challenged registrant who must prove it has used the mark during the last three years.

That said, it is a double-edged sword: if the mark is in use, the non-use action fails, and the time spent trying it runs against the five-year window for prior-use cancellation. Choosing the wrong route does not just cost the lost proceeding; it can cost the action that would have worked (the cancellation).

Well-known marks and publicly known facts

There remains the card of well-known status, which those unfamiliar with the field tend to misunderstand. Article 190 distinguishes two degrees. The well-known markis one known to "a specific sector of the public or of the country's commercial circles" as a result of commercial activities or advertising, in Mexico or abroad. The famous mark is one known "by the majority of the consuming public" or with diffusion or recognition in global commerce.

The first protects within its sector; the second, against opportunistic uses in any class. Both can be assessed by the Institute or formally declared through the proceeding whose documentation is detailed in Article 192 — though it should be said that the declaration is not cheap: issuing a famous-mark declaration costs MXN $45,873.28, and a well-known-mark declaration MXN $975.34 per recognized class, plus VAT, under the Institute's Fee Schedule — without counting the professional fees and expenses needed to assemble the required evidence.

Well-known status, however, is a pre-existing fact: a mark does not become well known because the Institute declares it; the Institute declares it because the mark was already well known.

Hence well-known status operates on two distinct planes: as a bar that the substantive examiner must consider ex officio when confronting a new application — sections XVI and XVII of Article 173 prohibit registering signs confusable with well-known or famous marks — and as an anticipated institutional pronouncement the owner obtains in advance.

In that sense, I return to the Merlin Duck: in that case the mark has not been declared well known; what the authority has said is that it is a publicly known fact that ownership belongs to the family.

The economics of priority

In the end, everything returns to the beginning. The true cost of not registering is not the registration you avoided; it is the uncertainty you signed up for without knowing it. Whoever registers on time invests in the security that priority grants, an examination with better odds of being favorable, an enforceable certificate, and the standing to act. Whoever declines, considering it an "expense," buys a ticket to a six-to-twelve-year circuit whose outcome, even if favorable, may arrive after the market is already lost. If you arrived late, the way out exists but it is narrow: check first whether the earlier registration is in use, because non-use cancellation can be cheaper; if it is in use, watch the five-year clock of section II and build the evidence of prior use before suing; if there was an agent, a distributor, or bad faith, remember that sections V and VI are not time-barred. And if you are still on time, the conclusion is uncomfortable because it is obvious: file the application today, because the date and time that look like a formality today will be, a few years from now, the only evidence that admits no discussion.

Questions we hear at the firm

What happens if someone registers my trademark in Mexico before I do?

In Mexico, exclusive trademark rights come from registration, not use (Article 170 LFPPI), so if a third party registered first, you are not the owner even if you used the mark earlier. You may seek cancellation of that registration based on prior use if you can prove earlier, uninterrupted use (Article 258, section II), but you have only five years from publication of the registration in the Gazette.

Someone took my trademark in Mexico — what can I do?

Check first whether the third-party registration is actually being used: if not, cancellation for non-use (Article 235 LFPPI) is faster, and the burden of proving use falls on the registrant. If the person who registered was your agent, representative, or distributor, or acted in bad faith, sections V and VI of Article 258 apply, and they can be asserted at any time.

Does filing a trademark application make me the owner?

The application fixes your priority by date and time of filing, but it is not the certificate; exclusive rights are consolidated with the registration granted after examination (Article 170 LFPPI). Owning the internet domain, the articles of incorporation, or social media accounts does not prove ownership.

How much does it cost to register a trademark in Mexico in 2026?

IMPI's official fee is MXN $2,695.18 plus VAT (MXN $3,126.41 with VAT) per class, under Article 14 of the Institute's Fee Schedule, with a 10% discount (MXN $2,813.77 with VAT) for filings made through the online platform; professional fees are added on top. It is a tiny fraction of what recovery litigation costs.

How long does a trademark cancellation case take in Mexico?

The full cycle can run through IMPI, administrative litigation before the TFJA, and a direct amparo before the Collegiate Circuit Courts (plus interim appeals and challenges), with the possibility of the proceeding being sent back to start over. In my experience, exhausting every instance rarely takes less than six years and can approach twelve.

Can I oppose a trademark application if I have my own application on file?

Yes. Article 221 LFPPI allows "any person with an interest" to file an opposition within one month after publication in the Gazette. The only limit is that you cannot base a later cancellation action on the same cause and evidence already decided in the opposition (Article 259).

What is the difference between cancellation for prior use and cancellation for an examination error?

Section II of Article 258 protects the party that used the mark first; section IV corrects IMPI's error, inadvertence, or difference of judgment in granting a registration despite an earlier pending application or an existing registration. The Mexican Supreme Court confirmed the constitutionality of section IV in binding precedent P./J. 135/2026. Confusing the two usually costs the case.

What is trademark squatting in Mexico and how is it fought?

It is the registration by a third party of a mark it knows belongs to someone else, to block, extort, or free-ride on goodwill. When committed by an agent or distributor without the foreign owner's consent, it falls under section V of Article 258; any other disloyal scenario falls under section VI (bad faith). Neither is subject to a limitations period.