A Mexican bakery created a product and gave it a name. The product became a phenomenon. And then a far larger company filed an application with IMPI to register that name in its own favor.
It sounds exceptional. It is not. With variations, it is one of the situations I see most.
Why it happens
Because in Mexico the right over a trademark arises from registration, not from use. You can have invented the product, the name and the recipe and still hold no title proving it.
And because the filing date determines priority against third parties (article 220). Whoever reaches the Institute first has the advantage, regardless of who was using the name before.
That is why success on its own is dangerous: it makes visible and desirable a name that is not yet protected.
What can be done once it has happened
Not everything is lost. The law provides several routes, and it is worth knowing them before you need them.
- Opposition. Once the application is published in the Gazette, any interested party may oppose within the following month on the grounds of the impediments in article 173. The deadline cannot be extended.
- Bad faith. Article 173, section XXII, bars the registration of signs applied for in bad faith, understood as filing in order to obtain an undue benefit or advantage to the detriment of the legitimate owner.
- Prior trade name. Section XIX protects a trade name used earlier in the same line of business where the applied-for sign is identical or confusingly similar.
- Good-faith prior user. Article 175, section I, recognizes whoever was exploiting the mark in good faith before the application, and allows them to apply for registration within five years of publication, having first obtained a declaration of nullity of the other registration.
- Nullity. If the registration has already been granted, an administrative declaration of nullity can be sought.
What those routes cost
They all exist. They all work. And they are all more expensive, slower and less certain than having filed in time.
A well-founded opposition requires evidence of prior use: invoices, dated advertising, packaging, press coverage. Assembling that file after the conflict is far harder than registering beforehand.
The practical rule
The moment to register a name is not when it starts working. It is before, while nobody else is interested and the filing is routine.
If your product is growing and the name is not yet registered, write to us: we will check at no cost whether it is still available.