Invalidity Of Trademark Registrations Due To Contravention Of Law: Demystifying Its Interpretation And Scope

1. INTRODUCTION

• Study of former Article 151 of the Industrial Property Law as a precedent to the current nullity action set forth in the Federal Law for the Protection of Industrial Property (LFPPI).
• Links between Article 151 and the registration prohibitions contained in Articles 4 and 90 of the Industrial Property Law.
• Analysis of Article 258, Section I, of the LFPPI and its connection with Articles 12 and 173.

2. ANALYSIS OF THE APPLICATION OF THE MEXICAN SUPREME COURT’S (SCJN) CRITERION

• SCJN criteria on the constitutionality of Section I of Article 151.
• Analysis: Are these criteria still applicable to the current Article 258, Section I, of the LFPPI?
• Study of Article 126 of the Regulations to the Federal Law for the Protection of Industrial Property (RLFPPI).
• Determination of which legal provisions may be considered included within the expression “contravention of law”.
• Examples of nullity for contravention of law not covered by Art. 12 and Art. 173.
• Possible unconstitutionality of Article 126 of the RLFPPI.

3. AMENDMENT TO PARAGRAPH 2 OF SECTION I OF ART. 258 OF THE LFPPI

• Analysis of Section I of Article 258 regarding the phrase: “procedures relating to its granting or validity”.
  • Does it refer to legal representation or to the trademark registration?
• Current IMPI criteria on its interpretation.

4. CONCLUSIONS

Background and Introduction

The exclusivity right that a trademark registration confers on its owner is not an absolute right; the legal system regulates various correction mechanisms built into the different stages of registration, ranging from the filing of a trademark application with its opposition system, to petitions for administrative declarations applied once the registration has been granted and during its term. This means that, although trademark rights are enforceable against third parties and owners have the power to exercise defensive actions for their protection, the law also regulates mechanisms allowing an interested party to challenge an already granted registration on the grounds of a failure to comply with principles established in the Federal Law for the Protection of Industrial Property (LFPPI) or in the law in force at the time of registration.

In particular, Mexican industrial property legislation provides, as one of its legality control mechanisms, the petition for an administrative declaration of invalidity of a trademark registration, an administrative proceeding contemplated as one of the four administrative declaration petitions under Article 328 of the LFPPI, within Title Six on Administrative Declaration Proceedings, Chapter I, which provides as follows:

Article 328.- Petitions for administrative declarations of invalidity, lapse, cancellation, and infringement established by this Law shall be processed and resolved in accordance with the procedure set out in this Chapter and the formalities provided by this Law.

The petition for an administrative declaration of nullity is a contentious administrative proceeding filed before the Mexican Institute of Industrial Property (IMPI), the purpose of which is to “eliminate the flawed right that, for various reasons, has defied the hypothesis for the formation of the right¹,” according to Mauricio Jalife Daher. In other words, the validity of a trademark registration is challenged on the grounds of an original defect that made its granting improper from the outset. For that reason, the authority, either on its own initiative or at the request of an interested party², must analyze the arguments raised and determine whether, at the time it was granted, the registration complied with the regulatory framework then in force. Unlike non-use cancellation actions, which operates towards the future and penalizes non-use³, infringement, which examines conduct that violates industrial property rights⁴, or cancellation, which occurs when an owner allows its trademark to lose distinctiveness, nullity looks to the past, questioning the original legality of the grant.

Thus, if IMPI determines that it is appropriate to declare a trademark registration invalid, one of the main consequences will be that the challenged registration title will cease to have effect retroactively to its date of grant, that is, as if it had never been granted or entered into the legal world^5,6, because the defect predates the grant and constitutes an illegality that the authority failed to notice when examining the application.

The LFPPI does not provide for a single ground of nullity in its Article 258; rather, it sets out a catalog of six sections, each adapted to particular circumstances that may give rise to the nullity of a registration. Some refer to the existence of previously recognized third-party rights, others to false statements made by the applicant itself, and others, like the one discussed in this article, to a generic contravention of the applicable legal framework. Of all of them, Section I is the broadest and, for that reason, the most susceptible to differing interpretations, since it does not provide a numerus clausus list of applicable legal rules.

Background: Article 151 of the Industrial Property Law

Article 151, Section I, of the Industrial Property Law (LPI), provided as follows:

Article 151.- The registration of a trademark shall be invalid when:

I.- It was granted in contravention of the provisions of this Law or of the law in force at the time of its registration. Notwithstanding the provisions of this section, the nullity action may not be based on a challenge to the legal representation of the applicant for the trademark registration

[…]

The remaining five sections regulate invalidity for prior use, for false statements in the declaration of use, for being confusingly similar or identical to a prior, validly registered trademark, for registration made by an agent or distributor, and for bad faith. Section I, by contrast, is built on an open-ended hypothesis that, unlike the other sections, is not self-actualizing but is necessarily tied to the occurrence of, or non-compliance with, another legal provision. The only limitation established by Article 151 was that the ground for nullity could not be based on matters relating to the applicant's legal representation; outside that scenario, it could be interpreted that the invalidity. of a registration could be sought on the basis of any provision of the Industrial Property Law.

The operability of Section I of Article 151 depended on a reference to the provisions establishing the substantive requirements and prohibitions for registration, in accordance with various precedents issued by the Supreme Court of Justice of the Nation (SCJN). First, Article 4 of the LPI, which prohibited granting any right regulated by the law when it contravened public policy or any legal provision; and Article 90, which set out a list of more than twenty absolute prohibitions on registration - such as registering a term in common use - and relative ones - a trademark confusingly similar to another already registered.

In that regard, Professor Efrain Olmedo Velázquez notes that “this section […] makes it possible to correct acts that, under an analysis confined solely to trademark legislation, appeared viable or lawful, but whose validity may be called into question when examined in light of other rights within the Mexican legal, constitutional, or treaty-based system, allowing for the interaction and contrast of trademark rights with other rights and, with that, much more complex balancing than mere likelihood of confusion.”⁷

The ground for nullity enshrined in Section I of Article 151 had a clear purpose compared to the other sections: it sought to regulate a control mechanism allowing for the invalidity of a registration on grounds raised in a rule that, at the time, should have prevented the grant of the registration, but that IMPI nevertheless failed to notice.

Footnotes

1 Jalife Daher, Mauricio, La nueva Ley Federal de Protección a la Propiedad Industrial, 1st ed., Mexico, Tirant lo Blanch, 2020, p. 197.

2 Art. 329, Federal Law for the Protection of Industrial Property. https://portalhcd.diputados.gob.mx/LeyesBiblio/pdf/LFPPI_010720.pdf (accessed: August 12, 2026).

3 Art. 235, Federal Law for the Protection of Industrial Property. https://portalhcd.diputados.gob.mx/LeyesBiblio/pdf/LFPPI_010720.pdf (accessed: August 12, 2026).

4 Art. 386, Federal Law for the Protection of Industrial Property. https://portalhcd.diputados.gob.mx/LeyesBiblio/pdf/LFPPI_010720.pdf (accessed: August 12, 2026).

5 Art. 263, Federal Law for the Protection of Industrial Property. https://portalhcd.diputados.gob.mx/LeyesBiblio/pdf/LFPPI_010720.pdf (accessed: August 12, 2026).

6 Otero Muñoz, Ignacio and Ortiz Bahena, Miguel Ángel, Propiedad Intelectual. Simetrías y Asimetrías entre el Derecho de Autor y la Propiedad Industrial. El Caso de México, Mexico, Porrúa, 2011, p. 547.

7 Ortiz Bahena, Miguel Ángel and Estrada González, Itzel (coords.), Ley Federal de Protección a la Propiedad Industrial comentada por AMPPI, Mexico City, AMPPI-Tirant lo Blanch, 2022, p. 560.

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