INTELLECTUAL PROPERTY · SCOPE OF TRADEMARK PROTECTION
Does Broader Trademark Coverage Mean Stronger Protection? The Risk of Partial Cancellation for Non-Use
INTELLECTUAL PROPERTY
Does Registering More Goods and Services Provide Greater Trademark Protection?
When filing a trademark application, it is common to begin with an apparently straightforward assumption: the more goods or services covered by the registration, the broader the protection.
That strategy may make sense when the scope of protection reflects the company’s current business activities or a reasonably foreseeable expansion. However, indiscriminately extending an application to goods or services that the company does not actually use may create a false perception of the registration’s true strength.
In Mexico, trademark protection is linked not only to the specific goods and services for which the mark was granted, but also to its actual and effective use.
Current Mexican legislation even allows a trademark registration to lose only part of its scope when the mark is not being used in connection with certain goods or services.
The relevant question, therefore, is not simply:
How many goods or services can we include in the application?
It should also be:
How much of that coverage will we actually be able to maintain and defend through genuine use?
A Trademark Is Not Registered Simply “for a Class”
The international classification system organizes goods and services into different classes, but legally, trademark protection does not extend indiscriminately to an entire class.
Article 176 of the Federal Law for the Protection of Industrial Property provides that trademarks are registered in connection with specific goods or services, determined in accordance with the applicable classification system and rules.
This has an important practical consequence: when designing a trademark application, selecting the correct class is not enough. The applicant must also define precisely which goods or services the trademark is intended to identify.
Is Broad Coverage Therefore Advisable?
In certain cases, yes.
A company with several business lines, or with a reasonably foreseeable commercial expansion, may require sufficiently broad coverage to protect the evolution of its brand.
There is another reason why careful planning from the outset matters: once the trademark application has been filed, the law does not allow the applicant to subsequently increase or replace the goods or services originally identified, even when the additional goods or services would fall within the same class.
The scope may be narrowed, but if the owner later wishes to protect additional goods or services, a new trademark registration will generally be required.
An excessively narrow filing strategy can therefore also be a mistake.
The objective is to find an appropriate balance among:
the company’s current activities, its reasonably foreseeable expansion, and its ability to sustain the requested scope of protection over time.
A Registration Does Not Permanently Preserve Its Entire Original Scope
This is one of the most relevant features of the current trademark regime.
Mexican law requires a trademark to be used in Mexico, and the owner must file a declaration of its actual and effective use, identifying the specific goods or services in connection with which the mark is actually being used.
Article 233 provides that this declaration must be filed within the three months following the third anniversary of the date on which the registration was granted.
It also establishes an important consequence:
protection will continue only with respect to the goods or services for which use has been declared.
If the declaration of use is not filed, the registration lapses by operation of law.
This means that the broad scope appearing on the original trademark certificate will not necessarily remain unchanged throughout the life of the registration.
Declaration of Use and Partial Cancellation for Non-Use Are Not the Same Thing
Two different mechanisms should be distinguished.
First, the declaration of actual and effective use requires the trademark owner itself to identify the goods or services in connection with which the mark is being used.
Under Article 233, protection continues only for the goods or services covered by that declaration.
Second, a third party may initiate an administrative cancellation proceeding based on non-use.
The reform published on April 3, 2026 expressly established in Article 235 that when a trademark has not been used for three consecutive years in connection with the goods or services for which it was registered, the registration may be cancelled or, where appropriate, partially cancelled with respect to those goods or services for which the mark is not in use.
The distinction is significant.
The entire registration does not necessarily have to disappear.
It may remain valid for certain goods or services while losing protection for others.
A Practical Example
Assume that a company obtains a trademark registration covering five different types of goods within the same class.
Over time, the company commercializes only two of them.
The existence of the trademark certificate does not necessarily mean that all five goods will indefinitely retain the same level of protection.
If the statutory requirements are met, the goods for which no use exists may fall outside the effective scope of the registration, while protection continues for those for which actual use can be sustained.
That is precisely the rationale behind the partial cancellation mechanism currently contemplated by Mexican law.
Non-Use Can Also Become a Strategic Tool
The issue is not merely administrative.
When a company seeks to register a new trademark and encounters an earlier registration that apparently blocks its application, it may be relevant to analyze what that earlier registration actually protects and what portion of its scope is genuinely in use.
If the earlier mark has not been used during the statutory period in connection with certain goods or services, partial cancellation may, depending on the circumstances, become a tool for challenging specifically that portion of the registration that no longer has meaningful support in the marketplace.
Article 260 confirms that a registration may be partially cancelled with respect to goods or services for which use cannot be demonstrated, unless a legally justified reason for non-use exists.
This changes the way an earlier registration should be analyzed.
A registration containing a lengthy identification of goods or services does not necessarily have the same strength with respect to every item appearing on its certificate.
Exceptions to Non-Use May Apply
Mexican law also recognizes that circumstances beyond the trademark owner’s control may prevent use of a mark.
Article 235 refers, among other examples, to import restrictions or other governmental requirements applicable to the relevant goods or services as circumstances that may constitute obstacles independent of the owner’s will.
The analysis should therefore not be reduced mechanically to the question of whether sales occurred.
Before concluding that a trademark should be cancelled, the specific circumstances of the business must be examined to determine whether a legally relevant justification for non-use exists.
Use by a Licensee Also Matters
The law expressly contemplates use of the trademark by a party to whom a license has been granted.
Accordingly, in corporate groups, distribution structures, franchise arrangements, or other situations in which the trademark owner is not necessarily the entity directly exploiting the mark, it is important to review how trademark use is structured and documented.
It is not enough to identify the entity named as owner on the registration certificate.
The relevant analysis should determine who is actually using the mark, for which goods or services, and under what legal relationship.
Renewal Brings the Use Requirement Back Into Focus
The analysis of trademark scope does not end after the third-year declaration.
When requesting renewal, Article 237 again requires the owner to declare the actual and effective use of the trademark, specifying the goods or services in connection with which the mark is being used.
The law again provides that protection will continue only with respect to those goods or services for which use has been declared.
This means that renewal should be treated as more than the payment of an official fee every ten years.
For a corporate trademark portfolio, renewal should also provide an opportunity to determine:
a) which goods or services continue to be commercialized;
b) which product or service lines have been discontinued;
c) which new activities have been incorporated into the business;
d) which portions of the registration no longer reflect the company’s operations; and
e) whether new goods or services require additional trademark filings.
Broader Coverage Also Requires Better Portfolio Management
The problem is not having a large number of goods or services covered by a registration.
The problem is not knowing which of them are actually being used.
Across larger trademark portfolios, this disconnect may remain unnoticed for years.
A company may continue to hold apparently broad registrations even though its commercial operations have evolved substantially: discontinued products, new business lines, changes in distributors, corporate reorganizations, licenses among companies within the same group, or expansion into services that were never covered by the original registration.
Trademark portfolio management should therefore not be limited to monitoring renewal deadlines.
There should also be consistency among:
registration → actual use → ownership → licenses → current goods or services → evidence of use.
More Goods Do Not Replace a Proper Multi-Class Strategy
Another common mistake is attempting to obtain, through an extensive description within a single class, protection that the actual nature of the business requires across different classes.
Mexican law provides that trademarks are registered in connection with specific goods or services pursuant to the applicable classification system and that, once granted, their scope cannot later be expanded to incorporate additional goods or services.
A protection strategy should therefore not begin by asking how to “include as much as possible” in a single application.
It should begin by determining:
what the company sells, what services it provides, what it reasonably expects to add, and which of those activities justify separate trademark protection.
What Should a Company Review Across Its Trademark Portfolio?
A preventive portfolio review should address at least the following questions:
For which goods or services is each trademark registered?
For which of those goods or services does actual and effective use currently exist?
Does the declaration of use filed with the Mexican Institute of Industrial Property reflect the company’s actual commercial operations?
Is there sufficient documentation to substantiate that use if it is challenged?
Are there registered goods or services that have not been used for several years?
Is the trademark used directly by the owner, or by related companies, distributors, franchisees, or licensees?
Have new business lines emerged that were not covered by the original registration?
These questions allow a company to move from a simple inventory of trademark certificates to genuine legal management of its trademark portfolio.
Perspective
Registering a trademark with broad coverage may form part of a valid protection strategy.
What is no longer advisable is to assume that the initial breadth of a trademark certificate automatically translates into permanent protection for every good or service identified in the registration.
Mexican trademark law increasingly connects the effective scope of protection with actual and effective use.
The third-year declaration of use, renewal requirements, and the possibility of partial cancellation make it necessary to understand which portions of a trademark portfolio continue to correspond to the owner’s actual business operations.
For a company, this has two distinct implications.
a) As a trademark owner, it requires the company to document, maintain, and periodically review the actual use of its own marks.
b) As a competitor or new applicant, it allows the company to assess more precisely whether an earlier registration genuinely continues to protect the full scope formally appearing on its certificate.
Broader coverage may provide greater room for protection at the outset. Its true strength, however, will depend on a coherent strategy for use, maintenance, portfolio management, and enforcement.