1. INTRODUCTION
The renewal of a trademark registration and the recordal of a declaration of use are generally regarded as ordinary actions within the framework of trademark registry administration, and little attention is usually paid to the impact they may have. As long as they are filed in a timely manner, the Mexican Institute of Industrial Property (Instituto Mexicano de la Propiedad Industrial, or IMPI) will generally grant them favorably. However, when such actions are based on inaccurate information or are issued without compliance with the applicable legal requirements, an important question arises: whether the office actions recognizing such actions constitute definitive administrative acts subject to challenge and, if so, who may challenge them, through what mechanism, and within what timeframe. This article examines the legal nature of both acts, the effects they produce in light of the trademark owner and third parties, and the adequacy of the remedies currently provided under Mexican law to subject potential defects in such actions to judicial review.
2. TRADEMARK RENEWAL
- Legal Nature of the Renewal Procedure and the Renewal Office Action
To begin with, it is useful to define the concept of an administrative act. Various legal scholars, including Lucero Espinosa and Delgadillo Gutiérrez, have stated that an administrative act consists of five elements: a unilateral and specific declaration issued by an administrative body and intended to produce legal effects1.
Based on the foregoing, an administrative act may be understood as “the unilateral and external manifestation of intent through which an administrative authority, in the exercise of public powers, adopts a decision”2 Furthermore, for such manifestation of authority to produce legal effects, it must necessarily be made in writing. Consequently, a merely verbal manifestation does not produce any legal effect.
At this point, it is important to clarify that the controversy addressed in this article arises from determining the legal nature of both the renewal procedure and the Renewal Office Action. In particular, it must be established whether the renewal procedure qualifies as an administrative proceeding, understood as the “set of administrative acts directed toward the issuance of a decision by the authority that is capable of positively or negatively affecting the legal sphere of the individual concerned.”3
Within this framework, can the renewal procedure be regarded as an interlocutory or procedural administrative act4, insofar as it is aimed at the issuance of a final decision, or should it instead be regarded as a definitive resolution? Certain judicial precedents expressly establish that renewal proceedings do not constitute administrative procedures that culminate in a definitive resolution, since they merely require the owner of a registered trademark to satisfy the requirements and formalities established under the Federal Law for the Protection of Industrial Property. Accordingly, such proceedings constitute procedural acts that serve as instruments of the final decision, that final decision being the Renewal Office Action itself.
However, the Renewal Office Action5 constitutes a definitive administrative act because it satisfies the elements and requirements recognized by applicable legislation and doctrine. Indeed, the Renewal Office Action is a declaration issued by the competent authority through a public official; it is unilateral and specific, addressing a particular legal situation; it is expressed in writing and materialized through an official communication; and it is intended to produce legal effects within the legal sphere of the individual concerned. If the statutory requirements are met, the request may be granted; otherwise, the registration lapses by operation of law.
In short, the distinction between the renewal procedure and the Renewal Office Action is not merely conceptual. It carries significant legal consequences. While the renewal procedure is limited to compliance with legal requirements and formalities and does not, in itself, constitute an autonomous administrative proceeding, the Renewal Office Action satisfies all the elements that legal doctrine requires in order to qualify as a genuine administrative act.
Consequently, it should be capable of being challenged as such. This distinction is fundamental because it is precisely through the Renewal Office Action that the relevant legal effects materialize, whether favorable to the trademark owner or, alternatively, resulting in the lapse of the registration. These effects directly impact the legal sphere of the trademark owner. Accordingly, it is this act, rather than the procedure that precedes it, that must be analyzed in light of the principles and guarantees applicable to all administrative acts.
- Legal Status Maintained or Generated as a Consequence of Renewal
If the Renewal Office Action is regarded as an administrative act, this would imply that it is subject to challenge pursuant to Article 3 of the Organic Law of the Federal Court of Administrative Justice. This conclusion becomes even clearer when one considers that the failure to renew a trademark registration results in the registration ceasing to exist. Conversely, if a trademark is not renewed, the consequence provided under the Federal Law for the Protection of Industrial Property is its lapse:
Article 260. A registration shall lapse in the following cases:
(...)
I. When it is not renewed in accordance with the terms of this Law;
Accordingly, the Renewal Office Action, as an administrative act, is presumed valid under the principle of legality embodied in Article 7 of the Federal Administrative Procedure Law, since an administrative act remains valid until its invalidity is declared by the competent authority:
Article 8. An administrative act shall remain valid until its invalidity has been declared by an administrative or judicial authority, as applicable.
Consequently, the nature of the Renewal Office Action as an administrative act not only renders it challengeable before the Federal Court of Administrative Justice, but also determines the legal framework under which its validity must be assessed. So long as it remains in force and has not been declared invalid by the competent authority, the Renewal Office Action benefits from the presumption of legality granted by the Federal Administrative Procedure Law, thereby producing full legal effects with respect to the trademark registration and potentially serving as the basis for various actions brought against third parties.
Conversely, the absence of such an act, that is, the failure to renew a registration within the legally prescribed terms and deadlines, does not constitute a mere procedural omission. Rather, it results in the automatic lapse of the registration by operation of law, as expressly provided by Article 260, Section I, of the Federal Law for the Protection of Industrial Property.
Thus, the legal position of the trademark owner ultimately depends upon the existence and validity of the Renewal Office Action as an administrative act, rather than upon the renewal procedure that gives rise to it.
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Footnotes
1. Luis Humberto Delgadillo Gutiérrez y Manuel Lucero Espinosa, "Compendio de derecho administrativo: primer curso", Porrúa, México (con varias ediciones vigentes, desde la 5a hasta la 9a).
2. Cfr. Nava Vázquez, César, "El procedimiento administrativo" [clase], Derecho Administrativo II, Universidad Panamericana, campus Mixcoac, séptimo semestre, 5 de agosto de 2025.
3. Cfr. Nava Vázquez, César, "El procedimiento administrativo" [clase], Derecho Administrativo II, Universidad Panamericana, campus Mixcoac, séptimo semestre, 19 de agosto de 2025.
4. Rodríguez García, Nelson E., "Los actos administrativos", Revista de Derecho Público, Caracas, núm. 24, 1985, pp. 47 y 48. http://ulpiano.org.ve/revistas/bases/artic/texto/RDPUB/24/rdpub_1985_24_43-50.pdf (fecha de consulta: 2 de septiembre de 2026).
5. Art. 237, Ley Federal de Protección a la Propiedad Industrial. https://www.diputados.gob.mx/LeyesBiblio/pdf/LFPPI.pdf (fecha de consulta: 2 de septiembre de 2026)
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
