Trademark license or assignment in Mexico: authorize use or sell your brand

You can let someone else use your registered trademark, or you can sell it outright. This comes up when a business opens a location with a partner or when someone wants to franchise. It also comes up when the founder registered the brand in their own name and it now needs to move to the company.

Each agreement has different recording rules before the Mexican Institute of Industrial Property (IMPI). An assignment must be recorded to have effect against third parties. A license can be recorded to document the agreement, although the law does not make recording a condition of its validity. Before signing, check the file and each party's obligations.

This article follows Mexico's Federal Law for the Protection of Industrial Property as amended by the reform published in the Federal Official Gazette on April 3, 2026. The reform has been in force since April 4, 2026. This article also follows the law's Regulations, published on April 28, 2026, which took effect sixty business days later, on July 23, 2026. Applications already pending on those dates are, in principle, concluded under the rules in force when they were filed.

What is the difference between a trademark license and an assignment?

With a license, the owner keeps the trademark and authorizes someone else to use it. The licensee uses the sign for the agreed goods or services, for the agreed term, and ownership does not change hands.

With an assignment, the trademark changes owners. The law calls it a transfer of rights. After the assignment, the new owner decides about the trademark, renews it and defends it.

The difference matters because each act follows its own rules. A license can cover only some of the trademark's goods or services. An assignment has a limit of its own: when trademarks are linked, one of them cannot be assigned alone, as explained below.

Can a pending trademark be licensed?

Yes. The law allows the owner of a registered or pending trademark to grant a license to use it to one or more people. The agreement is governed by ordinary civil law, meaning the general rules on contracts.

If the application is never registered, the recorded license is cancelled. The same happens if the registration is invalidated, lapses or is cancelled. That is why the contract should say what happens between the parties in those cases.

Two kinds of trademark cannot be licensed: the collective mark, which belongs to an association or company for its members' use, and the certification mark. Both follow their own rules of use.

What should a trademark license agreement cover?

The law leaves much of the content to the parties, but it sets some rules the contract should take into account.

• Quality. Goods or services offered by the licensee must be of the same quality as the owner's.
• Details on the product or premises. The goods, or the establishment where the services are provided, must show the name and address of the owner and of the licensee. They must also state that the use is under license.
• Defending the trademark. Unless agreed otherwise, the licensee may bring legal actions to protect the trademark as if it were the owner. If you want to be the only one who can sue, the contract must say so.
• Use. Use by the licensee is deemed to be use by the owner. This helps keep the trademark alive, as long as the use can be proven.

Beyond those rules, set out in writing the goods or services covered, the territory, the term, whether the license is exclusive, the royalties and how it ends.

When does a license become a franchise?

A franchise exists when, together with a written license to use a trademark, technical knowledge is transferred or technical assistance is provided. The goal is for the franchisee to sell goods or provide services uniformly, using the owner's methods.

Franchises carry additional rules. The franchisor must deliver information about its business at least thirty days before signing. The contract must be in writing and contain a minimum set of terms listed in the law, such as the geographic area and the inventory and advertising policies.

Recording a franchise with IMPI follows the same rules and the same two-month decision period as a license, as explained in the next section.

If the business you are planning looks more like a franchise than a simple license, it is worth reviewing it under those rules from the start. If the information delivered is false, the franchisee may seek to have the contract declared void. During the first year after signing, it may also claim damages.

How is a license recorded with IMPI?

Either party may file the request. It must state the name of the licensor and the licensee, as well as the licensee's nationality and address.

The request must include one counterpart of the agreement, either the original or a certified copy, signed by the parties. The Regulations allow the clauses on royalties and other payments, confidential information on distribution and marketing, and technical annexes to be left out.

If several trademarks are involved and the parties are the same in all of them, recording can be requested in a single filing. Each registration or application must be identified, and the fee is paid for each one.

Since the April 2026 reform, the law sets a maximum of two months for IMPI to rule on the recording. The period runs from filing, or from the date the last request for information is answered. In principle, it applies to requests filed from April 4, 2026.

The recorded license is also cancelled when the owner and the licensee jointly request it, when its term ends or by court order.

Unlike an assignment, the law does not make a license's validity conditional on recording it. Recording is also not required for the licensee to defend the trademark or for its use to count in the owner's favor. Recording documents the agreement in the IMPI file, making it easier to prove before third parties and in litigation.

How is a trademark assigned, and why must it be recorded?

The assignment follows the formalities of ordinary civil law. For it to have effect against third parties, the law requires recording it with IMPI. Without that recording, the file still shows the previous owner.

The new owner or its representative files the request. It must include one counterpart of the assignment document, either the original or a certified copy, signed by the parties. It must also give an address for service and an email address for notices. If a representative acts on the new owner's behalf, the representative must be identified in the file.

A registered trademark or a pending application can be assigned. If several are assigned between the same parties, recording can be requested in a single filing, identifying each file and paying the fee for each one. The request must state the new owner's name and nationality and, if there were earlier unrecorded assignments, those of the intermediate owners. If the trademark will belong to two or more people, their agreed rules for using, licensing, transferring and defending it must be included. A collective mark cannot be assigned.

The law does not set the two-month decision period for assignments that it provides for licenses.

Before signing an assignment, check three rules:

• Earlier unrecorded assignments. If the trademark passed through other hands and those transfers were not recorded, they must also be proven and recorded.
• Expired registration. If the registration is no longer in force, IMPI refuses to record the assignment or the license. The grace period allows a renewal request, but the registration must be renewed before the agreement can be recorded.
• Linked trademarks. Registered or pending trademarks of the same owner are deemed linked when they are identical or confusingly similar and cover the same or similar goods or services. In that case, the assignment is recorded only if all of them are transferred to the same person.

The owner may request dissolution of the link in writing if it considers there is no confusion, providing its express consent. IMPI makes the final decision. This is not available for identical trademarks covering identical goods or services.

What happens to the trademark if the company changes its name or merges?

When the owning company changes its corporate name or converts to another legal form, that change must also be recorded with IMPI. If it is not recorded, it has no effect against third parties. This rule was added by the April 2026 reform.

In a merger of companies, the law treats registered trademarks as transferred, unless agreed otherwise. That transfer must also be recorded.

A separate case is a trademark registered in the founder's name before the company was formed. If the trademark should belong to the company, what is needed is a recorded assignment. In our article on forming a S.A.S. in Mexico we explain why it pays to decide early whose name the trademark will be in, and how it differs from the corporate name.

How does this relate to renewal and use of the trademark?

A license or an assignment does not change the term of the registration. A registered trademark lasts ten years from the date it was granted and can be renewed for equal periods.

The owner must declare actual and effective use of the trademark within the three months following the third anniversary of the registration. This rule applies to registrations granted on or after August 10, 2018.

If that declaration is not filed on time, the registration lapses without IMPI having to declare it. Protection continues only for the goods or services whose use is declared, so the owner needs to know which ones the licensee uses the trademark for.

For every registration, use must also be declared when requesting renewal. If only the licensee uses the trademark, that use counts in the owner's favor. That is why the contract should require keeping invoices, photographs and advertising that prove it.

In an assignment, the buyer should check before signing when the registration expires. If the three-year declaration of use applies to it, the buyer should also check whether it has been filed.

Renewal is requested within the six months before expiry, and IMPI also processes requests filed within the following six months. If the registration has already expired, IMPI will not record the assignment until it is renewed; the person shown as owner files the renewal. If the assignment is signed close to expiry, the contract should say who will renew and when.

If you have not registered your trademark yet, start there. We explain it in our article on registering a trademark in Mexico.

Questions before licensing or assigning a trademark

• Do I want the other party to use the trademark, or to keep it?
• Is the trademark registered, pending, or has its registration expired?
• Who appears today as owner in the IMPI file, and were there earlier unrecorded assignments?
• Do I own other similar trademarks that may be linked to the one I want to assign?
• What goods or services, territory and term will the license cover, and will it be exclusive?
• Who will be able to sue an infringer: me, the licensee, or both?
• Besides the trademark, will I transfer methods or technical assistance, as in a franchise?
• How will use of the trademark be proven when it must be declared or renewed?

Start with the first three. They determine whether the act is a license or an assignment, whether IMPI can record it and what must be fixed before signing.

Official sources

The rules come from the current text of the Federal Law for the Protection of Industrial Property (Ley Federal de Protección a la Propiedad Industrial), as amended by the reform published in the Federal Official Gazette on April 3, 2026. Licensing a registered or pending trademark is in article 239. Recording, single filings and the two-month period are in article 240. Cancellation of the recording is in article 241. Quality and licensee details are in article 242. The licensee's power to defend the trademark is in article 243. Use by the licensee is in article 244. Franchises are in articles 245 and 246, and the one-year period to claim damages is in the third paragraph of article 245. The ban on licensing or assigning collective marks is in article 182, and the ban on licensing certification marks is in article 187. Transfers and their recording are in article 250, and mergers in article 252. Linked trademarks are in articles 253, 254 and 255. Earlier unrecorded transfers are in article 256, and registrations no longer in force in article 257. Changes of corporate name or legal form are in articles 257 Bis and 257 Ter. The term of the registration is in article 178. The declaration of use, its scope and the lapse caused by failing to file it are in article 233. Renewal and its grace period are in article 237. Registrations granted before August 10, 2018 do not file the article 233 declaration, under the law's eleventh transitional article. The reform's entry into force is in the decree's first transitional article, and its application to pending matters in the second. From the Regulations of the Federal Law for the Protection of Industrial Property, we used article 20, on recording transfers, details of the new and intermediate owners and of the representative, and the rules for joint owners, and article 21, on recording licenses and franchises. We also used article 22, on several trademarks in one filing, and article 123, on the details that must appear on goods and premises. Pre-contract franchise information is in its article 124. The Regulations' entry into force is in their first transitional article, and their application to pending matters in the third.

This content is informational and does not constitute legal advice. How to license or assign a trademark depends on the status of the file, the owner's other trademarks and the business you want to do with it.