Editorial reading
Equality, legal certainty, and trademark renewal in Mexico: two recent Supreme Court precedents
The expiration of a trademark registration does not automatically open free ground for third parties.
The grace period for renewing an expired trademark is not new. It has been in the law for years, anyone practicing in the field has used it more than once, and it is not a Mexican invention. It belongs to a widely recognized logic in the international industrial property system.
What is new are two recent binding precedents from the Plenary of the Mexican Supreme Court (SCJN), arising from the same case, that close two constitutional fronts against a fairly ordinary figure: the six-month period after expiration of a trademark registration to request its renewal.
The rule appears in Article 237 of Mexico's Federal Law for the Protection of Industrial Property (Ley Federal de Protección a la Propiedad Industrial, LFPPI). Renewal must be requested within the six months preceding expiration of the registration; however, the Mexican Institute of Industrial Property (IMPI), Mexico's patent and trademark authority, must process applications filed within the six months after that expiration. In practical terms, that interval works as a grace period to preserve a previously acquired right.
The Paris Convention for the Protection of Industrial Property and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks each recognize, within its own scope, the importance of maintaining mechanisms of continuity in trademark protection.
That is why the interesting point in the new precedents is not that the Court discovered the grace period. The interesting point is that it had to explain why that figure violates neither equality nor legal certainty.
An applied-for mark against an expired mark
The facts of the dispute were straightforward.
A person applied to register a trademark. IMPI denied the application because a prior registration existed and its renewal had been filed within the grace period established in Article 237 LFPPI. The applicant challenged the decision, and the case ultimately reached direct constitutional review in an amparoproceeding.
The amparo rested on two central arguments. The first was equality: once the registration term had expired, the former owner and any new applicant would be in the same legal position. If both stood before an expired mark, the logic went, there would be no reason to prefer the prior owner.
The second focused on legal certainty. Under that reading, giving effect to a registration whose term had already ended would be contradictory because, if the registration expired, how could it still block third parties?
Both arguments have a degree of creativity. But they are not enough against the structure of the trademark system.
The equality argument before the Court
In binding precedent P./J. 115/2026, digital record 2032239, the Plenary held that Article 237 LFPPI does not violate the right to equality. The central reason was not that the differentiated treatment survived a complex justification analysis, but that the compared subjects were not in legally equivalent situations.
That, for me, is the most refined part of the holding.
Equality analysis does not begin by asking whether a normative difference is reasonable. It begins by asking whether there is a valid parameter of comparison, that is, whether the subjects being compared are truly in a similar position before the rule.
Here, the Court concluded they were not.
The owner renewing within the grace period is not filing a new application in the strict sense. The owner is exercising a statutory faculty linked to a previously acquired right that the legislature decided to keep temporarily protected and opposable against third parties.
The new applicant, by contrast, does not yet have a right over the sign. The applicant has an expectation conditioned on meeting the statutory requirements and on the absence of an earlier impediment.
That difference changes everything.
This is not a case of two persons competing on equal terms for a free mark. It is a case of an owner still within a statutory period for preserving the right and a third party attempting to obtain a new registration. They are not comparable situations, so if comparability is absent, the equality claim collapses before the justification of the treatment is even reached.
Put differently, the problem was not trademark renewal. It was the comparison.
Legal certainty: only an apparent contradiction
The second front was even more intuitive.
If the registration term has already ended, how can that registration continue to produce effects? Does that not create uncertainty for third parties? Should the expiration date not be enough to know whether a mark is available?
The Court answered the other way in binding precedent P./J. 116/2026, digital record 2032240. The regime is not uncertain; on the contrary, it is designed precisely to provide certainty.
Articles 173, 178, 237, and 238 LFPPI form a normative sequence that covers the registration term, the possibility of renewal, the grace period, and lapse. Read together, they allow parties to know in advance what happens before expiration, what happens during the following six months, and what happens if that period runs without renewal.
In other words, the grace period is not "resurrecting" a dead mark, nor does it allow discretionary action by IMPI. It is a statutory stage, and during that period the owner keeps a temporary legal position. If renewal is filed in time, the registration remains alive; if not, lapse operates automatically once the period is exhausted, without the need for an additional declaration by the authority.
That architecture may be debated as legislative policy, but it does not seem problematic from the standpoint of legal certainty because the consequences are foreseeable.
An "expired" mark is not always free
A practical consequence follows from these two precedents and should not be lost in availability searches, risk analysis, and filing strategies, especially for those starting out in the field.
Treating these marks as non-opposable based only on the expiration date risks a false positive. It is not enough to see that the registration reached the end of its term. One must verify whether it is still within the grace period and whether the owner filed, or may still file, the renewal.
This matters especially when a client wants to file quickly over a sign that appears available, now even more so with Mexico's reform to the Federal Law for the Protection of Industrial Property, its Regulation, and IMPI's current movement on response times.
My reading is that both precedents are correct and, above all, orderly.
They do not change the rule, alter IMPI practice, or transform trademark renewal. They simply explain, with a certain constitutional precision, an institution that was already part of the system.
The expiration of a mark does not automatically open free ground for third parties. It opens a transitional stage, and during that stage, the earlier right preserves enough protection to prevent a new applicant from occupying the same position as the registration owner.
Perhaps that is why these binding precedents produce a particular sensation: they seem to confirm something many specialists already took for granted. But that is precisely where their usefulness lies.
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