Firms To Watch: Intellectual property

Partners Emilio Torres and Alejandro Hernández co-head the IP practice at boutique firm, Nerubay Abogados which has a a particular niche specialism in the cannabis industry, assisting players, particularly Canadian companies, looking to come to Mexico under the new legislation; the practice also has a notable focus on litigation.

Intellectual property in Mexico

Basham, Ringe y Correa, S.C.

The ‘responsive, timely, and comprehensive’ offering provided by Basham, Ringe y Correa, S.C. covers the full range of filing, prosecution and litigation in intellectual property. The firm’s client base includes household names in a host of industries, from Chanel and CVS Pharmacy, to Netflix and Disney; and the practice is often counsel on precedent setting matters in Mexico. A recent case-in-point saw practice co-heads Adolfo Athie and Eduardo Castañeda lead the representation of Bayer in a case before the Supreme Court seeking the extension of a patent due to unreasonable delays by the Patent Office. The six-strong line-up coordinating the practice is completed by managing partner Eduardo Kleinberg; patent group leader Claudio Ulloa; Juan Carlos Hernández, who assists with planning and consulting across the IP field; and Mariana Vargas, who focuses on trade mark protection, the international registration of marks under the Madrid Protocol, and various registration matters. Martín Michaus retired from practice in March 2023, since when the firm has promoted Santiago Zubikarai to the partnership (July 2023) and further reinforced its senior team with the September hire of Mariana González from BC&B Law and Business.

Responsables de la pratique:

Adolfo Athié; Eduardo Kleinberg; Claudio Ulloa; Juan Carlos Hernández; Eduardo Castañeda; Mariana Vargas


Les références

Basham provides sterling service by being responsive, timely, and comprehensive. They took on a significant volume of work in a short time without any issues, and advised on some quick-turn complex matters in a proactive manner that motivated our transfer of additional work to them.

Eduardo Kleinberg takes significant ownership over his team’s work and ensures consistency across our various case managers and quarterback outside law firms.

The office not only has a solid structure with personnel, but also IT tools, developed to provide true monitoring and support to rights holders in order to generate teamwork and proper development.

Principaux clients

CVS Pharmacy


Chanel


NFL Properties


NBC/Telemundo|NBCUniversal Telemundo Enterprise


Netflix Studios


Disney Enterprises


Diageo


Glanbia Performance Nutrition


Gripple


Auditorio Nacional


Casa Lumbre


Contraluz Cristalino


Mezcal Contraluz


Pittsburgh Steelers Football Club


Bayer


Principaux dossiers


  • Acting for Chanel in trade mark oppositions, resulting in the granting of an estimation of fame.
  • Advised NFL Properties on the opposition to class 14 registrations of its marks.
  • Acted for NBC/Telemundo on the successful appeal against the initial refusal of the trade mark “NATURAL BORN NARCO”.

Olivares

A giant of Mexico’s IP law market, Olivares is a dedicated IP specialist firm with a client base that includes some of the best-known multinationals operating in the country. The practice is a go-to for the full spectrum of advice. As regards patents, the firm regularly counsels in litigation, as well as filing claims across the chemistry, nanotechnology, electronics, biotech, bioinformatics, computer programs and mechanical sectors. The trade mark team assists a blue chip client base with regulatory and enforcement matters; while on the copyright front, work highlights include distribution and licensing of creative works, copyright transactions and litigation, and software protection. Contacts to note in the sizeable team include: veteran copyright and entertainment law specialist Luis Schmidt; founding partner Sergio Olivares, who advises on the prosecution and litigation of the full range of IP rights; co-chair of the life sciences and pharmaceuticals industry group and coordinator of the litigation department, Alejandro Luna; trade mark counsel to many of the firm’s key clients, Alonso Camargo; and Abraham Díaz, who is the main contact for privacy matters and heads the IT industry group. Further key partners include, Daniel Sánchez, Gustavo Alcocer, Víctor Ramírez and Armando Arenas. Rommy Morales and Jaime Rodríguez represent the next generation of the partnership at the firm, while associate Karla Olvera stands out for her support on litigious matters.

Responsables de la pratique:

Sergio Olivares; Luis Schmidt; Gustavo Alcocer; Alejandro Luna Alonso Camargo; Armando Arenas; Daniel Sanchez; Abraham Diaz; Víctor Ramírez


Principaux clients

Roche


Biogen


GSK


Novartis


Lilly


Grupo Modelo


Mattel


PepsiCo


Netflix


Unilever


Principaux dossiers


  • Advised Roche on regulatory issues pertaining to the the patent linkage system.
  • Acting for Novartis in a patent validity claim filed against it by Glenmark.
  • Advising Sanofi on patent term compensation litigation.

Uhthoff, Gómez Vega & Uhthoff, SC

Renowned IP boutique Uhthoff, Gómez Vega & Uhthoff, SC is valued for its ‘high level of expertise in the field’ and is ‘always looking for innovative ways to deliver services’. The firm is a go-to destination for patent and trade mark filing for major multinationals operating in Mexico, and has a robust offering in enforcement of IP rights through litigation. The client roster reflects a broad spectrum of sectors, with the practice evidencing particular depth in pharmaceuticals, healthcare, biotech, the education sector, and food and beverages. Senior partner and head of the patent department Javier Uhthoff O. is one of the elder statesmen of IP law in Mexico and continues to lead advice to key clients on major patent matters. Fellow senior partner Connie González is the main contact for trade mark mandates, with Eryck Castillo and Marcella Bolland being further key contacts in that field. Saúl Santoyo leads the litigation department, while also co-chairing the entertainment law and copyright practice groups alongside Castillo. Xavier Hadad supports on the full range of litigious work, and Eugenio Pérez adds expertise on the technical side of patent matters. At the senior associate level, José Luis Ramos stands out for litigation and IP protection, and Janett Lumbreras supports on patent instructions.

Responsables de la pratique:

Javier Uhthoff Orive


Les références

The firm has a high level of expertise in the field and is always looking for ways to work and provide efficient and cost effective services for clients. They are always looking for innovative ways to deliver services and seek favorable results.

The personalised attention of Saúl Santoyo in particular and of the entire litigation team in general, are always present and available to directly attend to the needs of their client.

A very dynamic firm with many international clients.

Arochi & Lindner, SC

A strong and comprehensive intellectual property practice is the cornerstone of Arochi & Lindner, SC  and a trusted choice for the protection, enforcement and/or commercialisation of any type of IP rights. In addition to the broad range of advisory support, the practice has vast experience in litigation, particularly in actions brought before the Mexican Institute of Industrial Property (IMPI), the Attorney General’s Office (FGR), and the customs authority. The contacts to note include founder and managing partner Roberto Arochi, who draws on four decades of experience to assist with advertising and marketing, trade marks, copyright, and trade secrets law, as well as disputes, licensing, and foreign IP protection strategies. Fellow senior partner Heidi Lindner heads the patent litigation department and is especially strong in the life sciences space, and the deeply experienced Jorge Mier y Concha leads the patent and copyright group.

Baker McKenzie Abogados, S.C.

Baker McKenzie Abogados, S.C. acts on the full suite of IP matters, from disputes to transactional support, with the combination of its international presence and practitioners on the ground across Mexico constituting a significant plus for its international client base. The department is organised along industry lines, with partners focused on up to two sectors. Fernando Robles-Pesqueira is especially strong in the consumer goods and retail sectors and coordinates the IP litigation sub-group of the department. For patent matters, Marina Hurtado-Cruz is the lead contact; an expert on health, advertising and consumer law, she excels in healthcare and life sciences. Carlos Dávila-Peniche is in charge of the copyright and media, and the enforcement groups; his practice covers the drafting, negotiation, review and enforcement of licensing and franchising agreements, as well as technology and intangible asset transfers. The four-strong leadership group is rounded out by counsel Gresly Marcano, the name to note for brand management matters. All above named lawyers are based in Mexico City, while in Guadalajara, Daniel Villanueva-Plasencia and associate Sebastian Salido-Aguilera are the key names.

Responsables de la pratique:

Fernando Robles-Pesquierao; Marina Hurtado-Cruz; Carlos Davila-Peniche: Gresly Marcano


Les références

The advantage of working with Baker & McKenzie is the fact of being able to have the support of any other branch of law involved in a matter in the same firm, which shares and follows the same quality standards. Therefore, working with them, generating a collaboration with the IT team, M&A, etc., means that your affairs are safe and managed in one place with the same vision of protection for the company above all things.

Carlos Dávila Peniche, as an intellectual property partner, has a very different vision from other law firms regarding intellectual property, since he is always aware of the approach as a company, the impact that actions can have, and above all, what the company needs to be able to achieve greater growth and performance. Added to that, Carlos is always available to us, that gives us security and confidence to understand that he really is a support for us.

Very good company.

Principaux clients

British American Tobacco


Meta Platforms


Hasbro


Spotify


Jumeriah Beach Hotel


Unilever


AMR Collection


Finvivir


Google México


Principaux dossiers


  • Assisting British American Tobacco with the defence of its mark “BOOTS”, involving 12 cancellation actions and defending its registration.
  • Advising Meta Platforms on copyright matters, including content moderation and takedown notices under the Mexican Copyright Act, as well as licensing and negotiations and general advisory with the Mexican collective management societies.
  • Assisting Hasbro with the defence of its trade mark “MONOPOLY”.

BC&B Law and Business

Boutique firm BC&B Law and Business is a strong choice across the board for intellectual property matters, with capabilities in patent and trade mark prosecution, litigation and strategy, designs and copyright, technology transfer, licensing, and business management. Juan Carlos Amaro is in charge of the practice groups for IP litigation, trade mark and copyright, along with corporate and commercial law; he coordinates the wider IP team with Octavio Espejo, the main contact for patents and technology. Carlos Hernández handles contentious IP matters and litigation; however, Mariana González left the firm in August 2023.

Responsables de la pratique:

Juan Carlos Amaro; Octavio Espejo


Les références

I’d highlight the service, knowledge and professionalism; the quality of the lawyers and their response times.

Dumont

Longstanding IP boutique Dumont is a well-regarded name in the full-range of patent work, as well as offering a complete service to clients in trade mark prosecution and opposition, and also handling anti-counterfeiting mandates. Recent work in the patents segment has included overcoming PTO registration objections on behalf of Saint-Gobain Glass France and Unilever, matters which were jointly led by Laura Collada and Victor Garrido. Collada is one of the standout names in the market, with experience across the spectrum of IP matters. She is co-head of the practice with Garrido, the firm's head of patents; trade marks group leader Christian Thomae; and head of litigation Israel Escobedo.

Responsables de la pratique:

Laura Collada; Victor Garrido; Christian Thomae; Israel Escobedo


Les références

Highly capable team with skillset across IP rights. Very high level of English and good responsiveness.

I truly appreciate working with Christian Thomae. He has a calm and friendly approach, high IP knowledge and capabilities, good at seeing the real business interests of our business in light of recommendations and assessments etc. Trustworthy!

Principaux clients

Unilever


Kraft Foods Group Brands


Mitsubishi Chemical UK


Casio Computer


Samsung Electronics


Saint-Gobain


Boehringer Ingelheim International


H Lundbeck


Essity Hygiene and Health Aktiebolag


Sandvik Hyperion


Principaux dossiers


  • Acting for a multinational cigarette and tobacco manufacturing company before the Mexican Institute of Industrial Property on two infringement cases related to shipments of cigarettes.
  • Representing Boehringer Ingelheim International in a request for compensation regarding four patents.
  • Advised a client on a challenge to a patent application dismissal based on the alleged failure of the applicant to submit the necessary documentation within a 30-month period.

Hogan Lovells

Bernardo Herrerías has led Hogan Lovells’ intellectual property offering in Mexico for over 15 years and directs a practice that is relied on by a wealth of multinationals for portfolio management, prosecution and IP litigation. Focusing on the protection, registration, and preservation of all types of IP rights, the department is familiar with a range of sectors, from the patent and design landscape of pharmaceutical products, to copyright in the entertainment industry. Herrerías’s experience in the market covers all types of IP and he has cultivated strong relationships with the patent and trademark office, customs, the office of the attorney general, and other IP-related authorities. In January 2023, Edgar Mata was promoted to counsel and he is the most senior team member after Herrerías. He acts across the full range of the practice group’s workload and has particular experience in cross-border portfolio management. Senior associates José Casillas and Valentina Schmid are also experienced practitioners of note.

Responsables de la pratique:

Bernardo Herrerías Franco


Les références

They have very good experience and a robust and diverse team.

They act quickly and know how to involve key people.

Principaux clients

Walmart Apollo


Mars


Duracell US Operations


Sony Interactive Entertainment


HP Inc and Hewlett Packard Enterprise


Rich Products


Vorwerk


Mondelez Global


Peermusic


Nissan


Intuitive Surgical Operations


Yamaha Marine Systems


Dick’s Sporting Goods


Principaux dossiers


  • Advised Mondelez on its acquisition of GrupoBimbo’s Ricolino confectionery business.
  • Acted for Dick’s Sporting Goods on the protection of its trade mark portfolio in Mexico.
  • Advised Sony Interactive Entertainment on the maintenance of its video game trade mark portfolio.

TMI Abogados

Boutique IP firm TMI Abogados provides ‘excellent solutions’ on the gamut of IP issues and stands out for its litigation offering, which takes on some of the most complex contentious challenges in the Mexican market. More specifically, it is in information technology (IT)-sector litigation that the practice is especially well known, taking a high share of the market’s digital copyright cases. The practice is led by Kiyoshi Tsuru, a reference in the market for IP and technology protection and who regularly represents clients in complex cases before courts, tribunals and panels. IP strategist and administrative and constitutional litigator Rodolfo Rangel is another key figure; he acts on cross-border trade mark franchising and licensing matters. Irely Aquique draws on experience working at the Mexican Institute for Intellectual Property to advising on the administrative litigation of trade marks, patents and copyright. Senior associate Cristian Aviña has public sector professional experience having worked at the Mexican PTO; his practice is focused on the safeguarding and enforcement of trade marks and patents.

Responsables de la pratique:

Kiyoshi Tsuru; Rodolfo Rangel; Irely Aquique


Les références

It is a team that is very committed to the client, which always responds on time, with excellent solutions.

I work directly with Nestor Villegas, on legal marketing issues. His commitment and professionalism with incredible.

The lawyers and paralegals are solvent, have a good knowledge of the legislative framework of intellectual property in Mexico on which to base their opinions, which are always relevant.

Principaux clients

Business Software Alliance


Cervezas Cuauhtémoc Moctezuma (Heineken Mexico)


Reckitt Benckiser


Cadena Comercial Oxxo – FEMSA (Coca-Cola)


Industria De Diseño Textil, Inditex


Motion Picture Association Latin America


The Entertainment Software Association


Comercializadora Farmacéutica IP (Farmacias del Ahorro)


Proyectos Atso


Galia Textil


Principaux dossiers


  • Assisted Cervezas Cuauhtémoc Moctezuma with applying for the declaration of fame for several of its beer trade marks.
  • Assisted Reckitt Benckiser with the declaration of fame for its trade mark LYSOL.
  • Advising Proyectos Atso on the prosecution of a medical patent application.

Bello, Gallardo, Bonequi y García, S.C.

Known for its ‘deep knowledge on the subject’ and housing ‘lawyers specialised in intellectual property, focused on the practice of advising national and foreign clients’, the IP department at Bello, Gallardo, Bonequi y García, S.C. is a reliable choice for portfolio management and protection. In August 2022 the team bolstered the breadth of its offering with the hire of senior associate Romeo Chora from Dumont, who has taken on leadership of the patent subgroup, as well as adding litigation strength regarding patent infringement. Chora joins a sizeable team that includes the ‘very diligent’ client favourite, Jonathan Rangel, one of the go-to experts in Mexico for the use of IP rights in the digital field; he frequently works in close conjunction with the firm’s TMT sector group. Rangel co-leads the IP team with Lilia Aguilar, whose practice focuses on IP portfolio management and protection for both domestic and international companies. Senior associate Juan Carlos Salazar has a strong focus on litigation regarding trade marks, domain names and copyright. Since publication, the firm has hired copyright and IT specialist Ricardo Sánchez Gil (formerly at González Rossi Abogados) as overall practice head - effective as of January 2023.

Responsables de la pratique:

Jonathan Rangel; Lilia Aguilar


Les références

The level of strategy that this firm manages for aspects of industrial property and specifically counterfeit matters, is on another level. In one matter, we went through 2 firms that did not have the level of expertise until we arrived at BGBG.

Jonathan Rangel has advised us with a level of closeness that is not seen from other partners. It does not mean that he does not delegate tasks, but he shows his face and is in charge of every detail of the strategies that we are implementing.

It is an office that provides personalized attention to each company, always taking into account the needs of its client.

Principaux clients

Hisense Group Holdings


ERSA


ENPV


Toyoda Van Moppes


Livelong Pet Nutrition


Jansport Apparel


Promoción Y Operación


Hispasat


Korea United Pharm


Gea Group


The North Face Apparel


Kipling Apparel


Ifit


Dufry


The Swatch Group


Omega


Kaeser Kompressoren


Qualitas Compañia De Seguros


Remarkable


VF Corporation


Aon Mexico Business Support


Engencap Holding


Datahome


Universidad Latinoamericana


Principaux dossiers


  • Advised Swiss Confederation on the analysis and response of a provisional refusal issued by the Mexican Trademark Office (MTO) regarding its mark “SWISS MILITARY”.
  • Assisted ERSA with filing several patents before the Mexican Patents Office (MPO).
  • Advised Hitch on two invalidation actions against a Mexican company regarding its “HITCH” mark.

Gonzalez Calvillo

The breadth of the IP practice at Gonzalez Calvillo makes it reliable counsel for companies operating in Mexico, whether they need ongoing advice on rights protection or representation in court on specific issues. A large client base of both domestic and international market-leaders instruct the team, and as the practice has become increasingly recognised, it has acted on more cross-border matters, co-ordinating counsel across Latin America. In a near 30-year career, Pablo Hooper has established himself as one of the market’s leading names across trade mark, copyright, franchising and entertainment matters; he particularly stands out for strategic litigation regarding the protection of intellectual property rights. Co-leading the department alongside Hooper is Alberto Pliego, whose broad slate of work currently encompasses the real estate, energy and technology sectors. In support, associate Lirio Salgado (‘the knowledge she has on the subject is evident’), is the main contact for patents work; and fellow associate Constantino Aquique supports on litigation.

Responsables de la pratique:

Pablo Hooper; Alberto Pliego


Les références

Excellent Work!

High knowledge about IP.

The González Calvillo team with whom I have a relationship is highly efficient and the response time is very fast, in addition to being very friendly and experts on the topics they know about.

Principaux clients

Accor


Aldo Group International


Cloud Kitchens


CME


Compass


Crumbl Cookies


Harcourts


MarbleLife


Margaritaville


Mary Browns


Plave Koch (Jack In The Box)


SayaBio


Sight Diagnostics UK


Sonestas


Thor Urbana


Wyndham


Principaux dossiers


  • Advising Thor Urbana on all IP portfolio matters in Mexico.
  • Acting for Wyndham on infringement actions against former franchisees that are still using Wyndham’s intellectual property, or any other use by a third party.
  • Advising Crumbl Cookies on trade mark prosecution and other IP related matters seeking to protect exclusive rights arising out of its expanding operations.

Goodrich, Riquelme y Asociados

A skilled, safe pair of hands on trade mark matters’, filing, prosecution and litigation in that field are the focus of Goodrich, Riquelme y Asociados’ IP team, which acts for a diverse client list both in terms of sector and size. The team is as comfortable advising major multinationals as it is start-ups looking for security establishing themselves in the Mexican market. ‘Trusted advisorEnrique Diaz is the main contact for advisory and prosecution matters; senior partner Guillermo Sosa is the name to note for litigation; Julio Cesar Prieto advises on regulatory matters; while for patent matters, Juan Carlos Suárez is the go-to figure. Senior associate Maria Rosa Diaz is an IP litigation specialist; and from the broader pool of associates, Natalia Merino stands out in trade mark and copyright strategy.

Responsables de la pratique:

Enrique Diaz; Guillermo Sosa; Julio Cesar Prieto; Juan Carlos Suarez


Les références

Goodrich Riquelme y Asociados has consistently provided exceptional legal services to us in Mexico on our trademark matters. The firm is extremely client centered and has always provides us with practical, efficient and cost-effective advice which is very important to an in-house legal department.

Enrique Diaz is always available for his clients. He goes above and beyond to build a relationship with his clients and to learn about their industries so that he can tailor his advice to worth within budgetary constraints but also work with the long-term strategy of the business. Enrique is always willing to go the extra mile to make certain that all our trademark matters are well taken care of. In fact, I recently had what I believed to be an emergency request, and Enrique did not blink and handled the matter most expeditiously. The filing was done, and confirmation was sent within a matter of hours so that we could rest assured that he had everything under control. I have recommended Enrique to both other in-house professionals and other law firms and will continue to do so.

Reliable and quick support on prosecution and litigation level. The team is seeking for quick and effective solutions.

Principaux clients

Cisco Systems


Tao Licensing


Bayer Consumer Care


Comité Interprofessionnel du Vin de Champagne (CIVC)


Institut National de l’Origine et de la qualité (INAO)


Masimo


Beauty Essence


Capital Brands Distribution


Arctic Cat


Samsung Electronics


Amazon


Principaux dossiers


  • Advising Bayer on an infringement action against a company that made unauthorised use of the “REDOXON” trade dress.
  • Assisting Masimo Corporation with a filing negotiation and settling multiple disputes in Mexico and Brazil against Massimo Dutti.
  • Assisting Tao Group with filing and prosecuting an infringement action against a resort in Mexico.

Iberbrand S.C.

Iberbrand S.C. is an IP boutique that focuses on contentious matters and is recognised for its ‘bench strength in the subjects of trade mark prosecution and enforcement’. The practice regularly advises on investigations, oppositions,  cancellation and nullity trials, infringement actions and appeals. Moreover, the team is accustomed to representing clients before the Mexican Trademark Office, and administrative and federal courts. Ana Vargas leads the litigation department but is equally strong on strategic trade mark and enforcement advice to support marketing and advertising campaigns in Mexico. Firm co-founder Gilberto Martinez (‘personally attentive to all matters’), heads the trade marks and copyright team and undertakes the full range of matters in those segments. Fellow founding partner Diego Rossi has approaching three decades in the market and assists across the gamut of matters handled by the firm. Senior associates Samantha González and Christian Nava assist with IP litigation and prosecution, respectively.

Responsables de la pratique:

Ana Vargas


Les références

It is a great work team, it is seen that there is integration. They invest in technology and that facilitates collaboration between firms. They are always friendly and follow the same line of work.

They are very professional and prepared people in the matter, their responses are quick and the work with them is very dynamic.

The Iberbrand team that I deal with, led by Gilberto Martinez, allow me to feel at ease that my clients needs are always met. The Iberbrand team is responsive, reliable and have bench strength in the subjects of trademark prosecution and enforcement.

Principaux dossiers


  • Acted for Vicente Pérez Villalobos in filing an infringement action against Operadora de Franquicias Alsea, a Burger King Master Franchisee in Mexico, due to the unauthorised use of the trade mark “KING DOG” from 2012 to 2014.

Müggenburg, Gorches y Peñalosa, S.C. (MGPS)

The intellectual property and entertainment law practice at Müggenburg, Gorches y Peñalosa, S.C. (MGPS) is one of the key pillars of the firm. The ‘very knowledgeable and responsive’ practice is co-led by Esteban Gorches, one of the firm’s founding partners and who is known for his prowess in litigation; and of counsel Ana Esther Urquizo, a dedicated IP professional who concentrates on the development of prior search processes, strategies for trade mark and patent protection, and obtaining rights and maintenance actions. The pair are closely supported by senior associate Fernando Sánchez Tarasco, whose practice centres on litigation; and on the IP prosecution and protection side, the ‘knowledgeable and helpfulRicardo Gómez Hernández. José Antonio Navarro Reyes and Bernardo López Smith are further associate-level contacts on the litigation side.

Responsables de la pratique:

Esteban Gorches; Ana Esther Urquizo


Les références

The legal team at Müggenburg, Gorches y Peñalosa is very knowledgeable and responsive. They explain the legal issues very clearly. Their analysis is very thorough and their legal recommendations are made after a careful consideration of what is in the client’s best interests.

I work primarily with Ana Esther Urquizo regarding trademarks and other intellectual property. Ana is very experienced and knowledgeable about these legal issues. She is very practical and provides clear and concise recommendations after carefully reviewing the situation. I can tell that she cares about the clients and wants to make sure that they achieve the best results.

Esteban Gorches and Ricardo Gómez Hernández are very knowledgeable and helpful.

Santamarina y Steta

A very modern team’ at Santamarina y Steta assists its the clients with registration of sizeable IP portfolios, as well as ongoing protection, prosecution and IP litigation. As a full-service firm, multi-practice teams can coordinate on transactional matters, with the IP team available to support on associate IP and intangible-asset issues. José Pablo Pérez Zea is well-versed in advising national and international companies on franchising and licensing, and also has specialisms in both patent and trade mark prosecution, copyright, unfair competition and plant variety matters, among other areas. Pérez Zea co-heads the practice with Daniel Legaspi, a partner since January 2022, who has drawn in a number of new clients since his appointment to the promotion, and works across the trade marks, patents, plant varieties, appellation of origin, copyright, industrial secrets, licensing and litigation areas. Counsel Efraín Olmedo is admired by clients as ‘a great litigation lawyer’ and acts on all contentious IP matters.

Responsables de la pratique:

José Pablo Pérez Zea; Daniel Legaspi


Les références

Santamarina, being a law firm with several areas of law, generates harmony in the development of the actions and the implementation of the cases.

Efraín Olmedo, apart from being a great litigation lawyer, is someone who is always available for clients, he takes the exact time to explain in detail each of the actions to be carried out in order to establish the path to follow. Likewise, it has developed in a short time, a great team, which is always willing to provide an excellent service, and above all, it shows that each one of them is truly committed to the work to be developed and above all, to being part of this team, this is sometimes unusual.

It is a very modern team, with initiatives to explore new trends such as blockchain, protection of secrets, metaverse, etc.

Principaux clients

Servicios Condumex


Merama


Modec


Camara Nacional de Comercio de la Ciudad de México


Alan Estrada


Recreativos Franco


Mondelez de México


Brown-Forman


Principaux dossiers


  • Assisted Servicios Condumex with a strategy to protect its IP in Latin America, North America, Europe and Asia, through the filing of new trade mark applications and maintenance of its intangible assets.
  • Advising Merama on several due diligence processes in different countries of Latin and North America in order to determine the status of its pre-existent assets or companies.
  • Assisting Modec with all its IP matters in Mexico.

Von Wobeser y Sierra, SC

Von Wobeser y Sierra, SC’s ‘highly attentive team’ for intellectual property matters remains a strong choice for a host of issues, whether as counsel on the IP components of M&A and joint ventures, or regarding portfolio management and the registration of trade marks and patents. Clients include both domestic sector leaders and household multinational names, with Nike Innovation being a recent addition to the client roster; the team is advising the company on patent matters. Practice head Patricia Kaim is an up-and-coming partner in the Mexican IP market; she has experience in constitutional and administrative IP proceedings, along with the IP aspects of transactional matters and IP-related dispute resolution. Kahn is supported by a five-strong associate team from which copyright specialist Silverio Sandate has been particularly active, recently.

Responsables de la pratique:

Patricia Kaim


Les références

A dedicated and experienced trade mark practice.

Clear and concise communication (not long winded with lots of legalese). Applies practical advice and approach to solve issues without going to the most extreme and expensive options. Very effective at quickly negotiating resolutions with third-parties to manage costs and still achieve desired outcomes.

It is a highly attentive team, it is involved in the information that it must review and it gives the pertinent follow-up quickly and concretely.

Principaux clients

AB InBev / Grupo Modelo


Grupo Orlegi


The Procter & Gamble Company


Diageo México Comercializadora


Effem México Inc. y Compañía


Reinvex Integra


Procesar


T69


Galaxy UK OPCO


Jenny’s Rose


Nike Innovative


Pernord Ricard


Taylor Commercial Foodservice


Principaux dossiers


  • Acted for Grupo Modelo on a joint venture with Canadian software company VSBLTY and Mexican marketing company Retailigent for developing and installing a network of digital media in stores.
  • Advised Pernord Ricard on the intellectual property matters involved in its acquisition of a majority shareholding of Codigo 1530 tequila and mezcal.
  • Acting for Nike Innovate on preparing and filing Mexican patent applications or the Mexican phase of International PCT Patent applications.

BGAL Asociados

Boutique firm BGAL Asociados is a prolific advisor on specialist IP matters, from trade mark applications to opposition and cancellation actions. One satisfied client notes its ‘confidence that the most varied issues will be handled in the most professional manner’ and the team receives repeat business from a host of domestic and international companies. Managing partner Inti Alva and the ‘extremely reliableFlor Bermúdez co-lead the team; Alva has a focus on the litigation side of the practice and other IP controversies, while Bermúdez is the main contact for trade mark advisory matters.

Responsables de la pratique:

Inti Alva Espinoza; Flor Bermúdez


Les références

It is a firm with which we have had a relationship for several years, they have attended our affairs in Mexico in a professional manner, always providing us with effective and immediate assistance in terms of intellectual property matters, the team is prepared to respond to any problem raised. It is a team formed for any type of need that the client may have, ranging from filing to the most complex litigation and investigations on counterfeiting and IP-related crimes.

One of the main qualities is the way in which BGAL assists its clients, since they seek to provide solutions to problems in an effective and realistic manner. Flor Bermudez and Inti Alva are partners and leaders of a team that generates solutions and assists in a professional manner with the various issues and problems regarding intellectual property for clients and give us total confidence that the most varied issues will be handled in the most professional manner.

They are a very skilled, thorough, responsive and organized team. They deliver quality work.

Principaux clients

Sesame Workshop


Airbnb


Grupo Alpura


Sistema Radiópolis (SR)


ALO


Assa Abloy


Tresalia Capital


Textron


Principaux dossiers


  • Acted for ALO in an infringement action filed against it by Grupo Ismark based on the alleged unauthorised use of the trade mark “ALO”.
  • Advising Lincoln Electric Company on a counterfeit goods investigation.
  • Assisted Sistemas Radiópolis with filing trade mark oppositions and a cancellation action against a copyright registration.

C&L Attorneys

Clients appreciate the ‘excellent legal service’ from Ana Castañeda and Jorge León, the heads of the IP team at specialist boutique C&L Attorneys. Founding partners both, Castañeda’s strengths lie in both patent and trade mark work, including opposition, cancellation, registration and litigation in both areas; while León focuses on litigation (patents and trade marks) and copyright matters, and is accustomed to acting in cases involving major multinational companies. Senior associate Maria Fernanda Rodriguez is a further key contact who is particularly experienced in copyright dispute resolution.

Responsables de la pratique:

Jorge Leon; Ana Castaneda


Les références

Jorge Leon and Ana Castaneda provide excellent legal service. They work with you to attain a business-friendly outcome. They handle all of our TM work in Mexico, from searching and clear, through the TM filing, and including TM opposition and cancellation work in the Mexican TM office. Their work is clear and easy to understand and follow. and their fees are extremely reasonable. I am quite happy with the work C&L provides, and have used them for many years.

Jorge Leon and Ana Castaneda are both experienced attorneys, but always willing to sit down and discuss the matters at hand. For such experienced attorneys, their fees are quite fair. they are both stand-outs in their field, and I look forward to working with them for some time to come.

Principaux clients

Starbucks


Teva Pharmaceutical Industries


Sony Interactive Entertainment


Virgin Enterprises


Sega Games


Chocoladefabriken Lindt & Sprüngli


Estafeta Mexicana


Turtle Wax


TRT Holdings


Bandai Namco Entertainment


Doterra Holdings


Fujitsu


Canali Ireland


Pirelli


Nissin Foods Holdings


Rad Power Bikes


Principaux dossiers


  • Acting for Starbucks in prosecuting over 30 infringement actions throughout Mexico to combat unauthorised use of the “FRAPPUCCINO” mark.
  • Advised Virgin Enterprises on a cross border case in connection with potential breach to license agreement entered with Alaska Airlines involving the mark “VIRGIN AMERICA” in Mexico.
  • Advised, prosecuted and obtained registration for Inner Mongolia Yili Industrial Group trade mark applications for YILI, despite Eli Lilly and The Coca Cola Company oppositions.

Calderón & De La Sierra

With 40 years in the market, specialist firm Calderón & De La Sierra’s  'full-service' IP practice covers matters ranging from the initial stages of research, and the preparation and design of IP strategies; across all processing and surveillance stages; through to the defence of intellectual property before the Mexican Institute of Industrial Property, the National Institute of Copyright, and at all court levels. The main team contacts are Carlos Perez De La Sierra, Alberto Huerta Bleck, Mariel Velez, Marimar Bordes and Paloma Contreras.

ClarkeModet México

ClarkeModet México’s IP team is part of a network that has a large presence across Spanish and Portuguese-speaking countries; it has particular niche strength when it comes to patent applications. Clients value the practice for its ‘exceptional work’ that is ‘very well outlined and clear’, and the department won the mandates to manage and defend the rights' portfolios of a healthy array of multinationals. The sizeable group of experts includes regional managing director Lorena Rodríguez, who has a focus on IP strategy as part of a wider business model; Angélica Pardavell, who has been the firm’s patent director for over 20 years; Claudia Márquez, whose recent focus has been on growing the practice’s trade mark offering; and patent specialist Tania López, an expert on technology transfer. Patricia Conelly, Eder Gutiérrez and Luis Andrés González are all further contacts to note.

Responsables de la pratique:

Lorena Rodriguez; Angelica Pardavell; Claudia Márquez; Roman Soto; Victor Manuel González; Tania López; Patricia Conelly; Mónica Badillo


Les références

Clarke Modet & Co, is the only law firm with which we process the registration of trademarks and/or industrial designs, and to date we have had excellent communication with their lawyers since both parties have cleared doubts every time we start a new process.

All the lawyers with whom we have had contact have always been cordial, attentive and responsible.

As internal lawyers, we seek that the firms with which we collaborate have a good organization, traceability of their processes, quality of the work provided, immediacy and clarity in our communications with the external and prices according to the type of work received; so ClarkeModet definitely meets all our requirements. Compared to other law firms, we consider that we have received exceptional work, very well outlined and clear in the processes and procedures, very attentive to our doubts or needs, we consider that most of the law firms leave the relationship between client-firm and they focus more on quantity of work-dispatch, which is completely the other way around with Clarke, which is why we love being able to work together with them.

Principaux clients

Colgate-Palmolive Company


Owens-Brockway Glass Container


Allogene Therapeutics


Panel Rey


Procesamiento Estocástico de Datos


Rigoberto Amarillas


Principaux dossiers


  • Advised Procesamiento Estocástico de Datos on a patent prosecution.
  • Advised an independent inventor on water container industrial designs’ applications.
  • Assisting an independent inventor with the prosecution of an application to the point of patent granting.

Creel, García-Cuéllar, Aiza y Enríquez, S.C.

Creel, García-Cuéllar, Aiza y Enríquez, S.C. maintains a robust intellectual property offering that regularly assists clients with filing and prosecution of applications to obtain, maintain, and renew its intellectual property rights and protection. The team is equipped to handle the full array of intangible assets, including patents, trade marks, utility models, industrial designs, slogans and copyrights. Counsel Gaby Finkel heads the department and draws on considerable experience in an in-house position that gives her and the team a strong commercial aspect. Associate Sofía Castañón assists on the full range of matters.

Responsables de la pratique:

Gaby Finkel


Les références

Technically the firm is of the best level. They know how to respond through a single point of contact to all aspects related to a query, an issue that in Mexico is still difficult to obtain.

Business orientation. They don’t just give their opinion as lawyers, but they make sure that their point of view is understood from a business perspective.

The team is very attentive. Always with timely answers to our questions, finding the way in which the projects are achieved. Deep understanding of the importance of projects with social causes, and the impact that their work has for the better functioning of these projects. The relationship with the team is always very professional, but at the same time friendly. They make sure that complex terms and situations are easy to understand and cope with.

Principaux clients

Vista Oil & Gas


Spin Ventures


Teach for All


Riot Games


Scala


Idesa


Violetta


Organización Juvenil Mexico


Consejo Consultivo de Finanzas Sostenibles


Inroads


Principaux dossiers


  • Assisting Vista Oil & Gas with a legal strategy to prepare and submit 85 trade mark registration applications to better position the client in the energy sector by rebranding efforts.
  • Advised Spin Ventures on reviewing its terms and conditions on projects with third parties to guarantee that they have proper authorisations to use third-party IP rights, and the registration of their main trade marks and logos.
  • Advised Premier Paint Roller on an appeal against the denial of a declaration of use.

Cuesta Campos y Asociados S.C.

The recent focus of the intellectual property department at Cuesta Campos y Asociados S.C. has been on the pharmaceutical, personal care and retail sectors. The practice advises both domestic and foreign clients on trade mark portfolios, including representation in trade mark litigation cases before the administrative and judicial courts. Practice head Mauricio Chozas is an accomplished litigator across the various areas of IP and is highlighted by one client as a ‘knowledgeable and pragmatic lawyer’. Key support comes from associate Lorena Pinto, particularly regarding the registration and renewal of trade marks, oppositions, and the management and administration of IP portfolios.

Responsables de la pratique:

Mauricio Chozas


Les références

Mauricio Chozas: Knowledgeable and pragmatic lawyer who is proactive and pleasant to work with.

Principaux clients

Subway


Cloe


La Pulga Spirits


Biofarma Natural


Vagabond Spirits


Hoy Health


Industrias Oxan


Agrosoil


Axon Enterprises


American Global Maritime


Principaux dossiers


  • Assisted Subway with obtaining trade mark protection for its marks in connection with services that will be used in the metaverse.
  • Advised Wiegand on obtaining an annulment on three work of art registrations.
  • Advised Agrosoil on obtaining the inclusion of several vegetable varieties in the national catalogue of vegetable varieties.

Jáuregui y Del Valle, S.C.

Jáuregui y Del Valle, S.C.’s work in IP has a distinct strength in anti-counterfeiting, piracy and online infringements, and demonstrates experience across a broad range of sectors - it has a notably strong client bases in pharmaceuticals, technology, telecoms and consumer goods. The firm also has an IP litigation offering that covers IP infringement actions on administrative, civil and criminal courts in matters related to trade marks, copyrights, plant varieties and patents. Israel Ledesma Meléndez leads the department and has particular expertise in administrative, civil and criminal litigation, specifically in cancellation, infringement, lapse and enforcement actions. Associate Marta Celis further bolsters the IP litigation offering.

Responsables de la pratique:

Israel Ledesma Meléndez


Les références

The intellectual property team of Jauregui and Del Valle led by Israel Ledesma is a proactive team that provides personalised attention. Their services stand out in the areas of intellectual property litigation and actions against counterfeiting and piracy. They try to put themselves in the client’s position to resolve cases.

Israel Ledesma lawyer with very solid knowledge in IP litigation, especially trade marks and copyrights. He is proactive and a good team leader. Good management of clients and global brands.’

The team’s technical skills are very robust. The level of service and speed is highly recommended. The service is even superior to other highly prestigious offices.

Principaux clients

Moderna


Lego


Tiffany


Epson


Great Healthworks


Supreme


Pfizer


Grupo Jumex


Adidas


Remka


Principaux dossiers


  • Advising Apotex on executing a settlement and coexistence agreement for Latin America with a Colombian pharmaceutical company.
  • Advised Lego on a counterfeit goods raid.
  • Represented Adidas in filing preliminary injunctions against a factory in Guadalajara.

MCOY Abogados

Trade mark prosecution is the standout strength of the intellectual property practice at MCOY Abogados, the offering of which encompasses portfolio management on behalf of  several international companies operating in Mexico. The firm also fields a litigation team that handles a range of cases from industrial design conflicts to trade mark disputes. The main contact for contentious matters is Alejandro Cárdenas, the team’s litigation practice head who has a background in trade mark prosecution and litigation. Pablo Migoya is another key contact for litigation, while seasoned IP lawyer Eduardo Miravete is experienced in trade mark portfolio management in a variety of sectors.

Les références

It is a very good intellectual property team that provides a high quality and personalized service to its clients.

Experience in intellectual property matters and personalized customer service.

Alejandro Cardenas is extremely knowledgeable and experienced in Mexican IP law and a solid litigator. He knows his stuff and explains it well.

Principaux clients

Pisa Farmaceutica


Nissan Mexicana


Constellation Brands


Hormel Foods


Toyota Motor Sales de Mexico


Lundbeck


Federación Nacional de Cafeteros de Colombia


Schindler Group


Embotelladora AGA de Mexico


Kinetic Sport


Principaux dossiers


  • Acting for several entities of the Pisa Farmacuetica group in trade mark infringement action launched by Zoetis Services.
  • Advised Constellation Brands on the IP aspects of several negotiations for the retail sale of beverages blended with tequila.
  • Advised Schindler on responses to provisional refusals, oppositions, declarations of use, and renewals for its trade mark portfolio in Mexico.

Méndez + Cortés S.C.

The ‘wonderful IP team’ at Méndez + Cortés S.C. is a strong choice for the prosecution of trade mark rights and also routinely handles opposition actions, renewals and IP litigation. The practice serves a diverse client base but has notable strength in the pharmaceuticals and biomedical sectors. The workload includes a mix of domestic and cross-border matters, with a number of international companies instructing the team on prosecution and anti-counterfeit work. Co-founding partner, José Juan Méndez comes with significant client praise for his ‘vast legal knowledge’ and ‘strategic brilliance’; he acts across the full range of IP matters. Leading the department with him are fellow founding partner Emmanuel Cortés, who is particularly active on patents and all IP litigation; and litigation specialist Oscar Hurtado Ramirez.

Responsables de la pratique:

José Juan Méndez Cortes; Emmanuel Cortés; Oscar Hurtado Ramirez


Les références

Mendez Cortes is a national law firm with a strong foothold in the local Mexican market, yet with an outstanding international network and a wonderful IP team. The firm impresses especially with its incredibly quick, outstandingly expert handling of cases and the trustworthy way in which it deals with our clientele at all times. They can rely entirely on the legal experts of Mendez Cortes. The firm has been our first point of contact for IP issues in Mexico for almost ten years. It is evidently one of the best addresses there.

José Juan Mendéz is for us the top IP attorney in Mexico with his unparalleled experience, vast legal knowledge, strategic brilliance and ability to translate his great legal skills into best practical results. Moreover, he is greatly supported by his younger partner Emmanuel Cortés. The two build a virtually unbeatable team of IP attorneys.

All the members of the Mendez & Cortes team are highly qualified, expert and extremely responsible professionals who get involved to the maximum and in detail in all the matters entrusted to them. The team is perfectly coordinated to facilitate quick and efficient solutions to any issue, manage any action and maintain its vigilance until its conclusion.

Principaux clients

Silver Oak Wine Cellars


Gilead Sciences


Beaver-Visitec International (US)


Quimica Goncal


Mezcal Amores


Frida Experience


Space Exploration Technologies


Fundación Para La Investigación Biomedica del Hospital Universitario Ramon y Cajal


OMX


Principaux dossiers


  • Acting for Gilead Sciences in opposing the registration of a trade mark by Laboratorio Silanes.
  • Advising Silver Oak Wine Cellars on the prosecution of a trade mark.
  • Advising Blue Marble Technologies on a patent application.

Mijares, Angoitia, Cortés y Fuentes S.C.

Under the leadership of counsel Alejandro Díaz, Mijares, Angoitia, Cortés y Fuentes S.C.’s intellectual property practice is a key component of the firm’s wider offering in transactional matters, supporting on all relevant issues. In recent years the team has grown it IP portfolio management, protection and enforcement caseload; it also -in conjunction with the firm's litigation department- handles contentious IP matters. Areas of particular experience for the team include advertising matters, IP asset due diligence, and work in both the sports and entertainment sectors. Díaz is supported by associates Claudia Gutiérrez, who focuses on trade marks, patents, IT and regulatory matters; Alfonso Alcázar, who is often involved in copyright cases; and March 2022 hire Juan Pablo Cárdenas.

Responsables de la pratique:

Alejandro Díaz


Les références

Timely responses with helpful and creative advice; cost effective.’

Timely responses with helpful and creative advice; cost effective. We recommend Alejandro Díaz and Claudia Gutiérrez.

We really admire the work that they do pro bono, for the benefit of the non-profit associations, and that they, with their team of lawyers, give advice in the necessary area that the associations request. Having and being able to support in all areas in a great practice. People willing to support and solve the doubt or problem consulted in pro bono, and even being pro bono, they do their job professionally.

Principaux clients

Porzio, Bromberg & Newman


Grupo Famsa


Grupo Televisa


Adevinta


Fundacion Pro Empleo Productivo


Cognita Schools


Chantilly


DoorDash


Principaux dossiers


  • Acted for Grupo Televisa on the merger of its media, content and production assets with Univision.
  • Advised Adevinta on the sale of its Mexican businesses SegundaMano and VivaAnuncios to Grupo Navent.
  • Advised Cognita Schools, an international group of private schools, on the acquisition of Colegio Olinca.

Solórzano Linaldi

Specialist boutique Solórzano Linaldi is valued for ‘its extensive knowledge of the industry and strategies to propose new projects considering intellectual property, protection and exploitation’. The firm is especially well-known for its niche expertise in advertising contract law, but the practice also stands out for its advice on patent matters in the pharmaceuticals industry. The team is led by one of the firm’s co-founders, Guillermo Solórzano, who is warmly endorsed by clients and is one of the best known advisors in the pharmaceuticals sector, especially in antitrust matters related to the generic drugs market. Fellow co-founder Luis López Linaldi is the contact to note for advertising contract law in the life sciences space, and associate Miriam Orozco Soria supports on the full range of patent work. Further associates of note include Alan Osorio Aragón, Eréndira Frias, and Christian Parra Pérez.

Responsables de la pratique:

Guillermo Solórzano


Les références

Solorzano Linaldi’s team has a quick response time as well as a great deal of experience and knowledge.

In the case of Luis Linaldi, the response time as well as the acknowledgment of receipt is remarkable.

This Solorzano-Linaldi office has taken care to get to know us directly and understand the points of our operation, the quality of their attention is highly personalized.

Principaux clients

G73


Invicta Films


Neology


Glenmark Pharmaceuticals


Sun Pharma de México


Investigación Farmacéutica (IFA Celtics)


Kanape Media Group


Gabriel Orozco Félix


Vert Pharma


Asofarma de México


Outdoor México Servicios Publicitarios


Sum Services


Franco Escamilla


Protein (Apotex)


Entravision Communications Corporation


MediaMath


TNG Management


Cinema Máquina


Vive Science 314


Principaux dossiers


  • Assisting Glenmark Pharmaceuticals with filing a patent application for a drug, drafting an argumentation strategy, and overcoming technical objections made by the Mexican Patent Authority.
  • Advising Landsteiner Scientific on a drug patent application, argumentation strategy, and overcoming objections made by the Mexican Patent Authority.
  • Assisting G73 with an analysis of the advertising contract law, to determine whether G73 could be considered as a media vendor.

Axkati Legal S.C.

Founded in 2016, Axkati Legal S.C. is a boutique firm of professionals with backgrounds in IP and data privacy law. Its practice in the former encompasses all aspects of the acquisition, exploitation and protection of clients’ intellectual property. This includes a robust litigation offering in the practice area, for which Alfredo Pineda and Manuel Augusto Pérez are the primary contacts. Luis Alcaraz leads the copyright department as well as co-leading the trade mark offering alongside Eduardo Toledo; while the ‘meticulousMartín Pereyra is in charge of patent work at the firm. Rosa María Franco supports the IP practice with data privacy advice where relevant.

Responsables de la pratique:

Luis Alcaraz; Eduardo Toledo; Alfredo Pineda; Manuel Augusto Pérez; Martín Pereyra; Rosa María Franco


Les références

The reasons why my company chose to work with Axkati are, on the one hand, because it is a medium-sized law firm with the quality of the best law firm but without the fixed costs associated with those of a large law firm. On the other hand, I have known the Axkati Legal team professionally and personally for more than 10 years and I know that it has been created by a solid, reactive, reliable, efficient and flexible team.

Martin Pereyra, partner in the patent area at Axkati Legal, is meticulous in managing our extensive international patent portfolio. In addition, we highlight the solid network of contacts that it has built with correspondents in patent offices around the world, which allow it to manage our patent portfolio in more than 60 jurisdictions with absolute efficiency.

Luis Alcaraz is fully involved with his clients to achieve truly efficient management of the international trademark portfolios that his clients entrust to him. I also know that when an obstacle or difficult case arises, he does not give up his efforts until he designs a path to find a solution. It is also very rigorous with the transparency of costs with its clients.

Principaux clients

The Procter and Gamble Company


Instituto Tecnologico y de Estudios Superiores de Monterrey (ITESM)


WGA (Water Global Access)


Ingredion


Amparin


Paco Rabanne


Específicos Stendhal


Izod


Van Heusen


Arrow


Geoffrey Beene


Wal-Mart de México


Teléfonos de México (Telmex)


Block


Grupo Autocom


Columbia Sportswear North America


Swarovski


Organización Editorial Mexicana (OEM)


Conecta JS


Carolina Herrera


W L Gore & Associates


Authentic Brands Group


Principaux dossiers


  • Advising The Proctor & Gamble Company on patent prosecution strategies.
  • Assisting ITESM with general matters regarding licensing and prosecution strategies for patent developments, including technology transfers.
  • Acting for WGA on its patent prosecution program in Mexico and abroad.

Chevez Ruiz Zamarripa

Leader of Chevez Ruiz Zamarripa’s intellectual property department, Gloria Niembro was raised to the partnership in January 2023 and is seen as an ‘invaluable asset’ to clients thanks to her ‘incredible’ work and dedication. The practice has a strong focus on trade mark registration and prosecution, infringements, and licensing, and is also instructed on one-off intellectual property disputes. Senior associate Arturo Revilla is a dedicated IP lawyer and acts on trade mark prosecution and litigation cases.

Responsables de la pratique:

Gloria Niembro


Les références

The team is very efficient in responding and ensures that all matters are properly docketed and followed up.

Our main point of contact has been Gloria Niembro. Her out of the box thinking, and work ethic make her an invaluable asset to any institution, as well as the legal fraternity in general.

I have been working with Gloria Niembro since before joining Chevez. She is the reason why I am working with them. The work and dedication of Gloria Niembro is incredible.

Principaux clients

Manolo Caro


SynerGo


Up Sí Vale


Teqball


Freightnow


LS / Galería


Sunset


Choco


Javier Senosiain


Empower


Paris Gourmet


First Cash


Share Marketing-Trading


Principaux dossiers


  • Advising LS/Galeria on copyright and publicity rights issues relating to its planned digitisation of artwork for use as NFTs.
  • Assisted Sunset with a licensing agreement with a collective rights management entity.
  • Advised FirstCash on assessment, contracts and a valuation of its marks.

ECIJA

Leveraging its presence across Latin America and Iberia, ECIJA fields an IP team in Mexico that acts as an integral part of the firm’s coordinated registration and protection offering for the range of IP categories. The firm’s longstanding specialism in TMT matters gives it an extra edge in digital law issues and its IP client base has considerable overlap with the digital technology space. The hire of new practice head Miguel Ángel Margáin (from Pérez Correa González) in June 2023 has substatially strengthened the practice group. Martáin is supported by dedicated senior associate Georgina García - who ‘has an impressive ability to offer straightforward solutions’ and is experienced in portfolio management across a variety of businesses. Additionally, office managing partner Ricardo Chacón oversees the full range of IP work, while TMT-practice co-head Joaquín Rodríguez is also active in relation to IP matters.

Responsables de la pratique:

Miguel Ángel Margáin


Les références

Strong points: speed in answering and responding to requirements. Skills: receptive to meet the requirements, with flexibility. I think that they do compare favorably with the teams of other firms, since they are always attentive to any new procedure that can be initiated, offering favorable solutions.

Georgina García: I have discussed trademark issues with Georgina. She has always handled ongoing issues with agility, thus showing that she is trustworthy and responsible. She is even thorough and committed to results.

Very clear and precise instructions, which makes for better management on our part.

Principaux clients

Atlético San Luis Football Club


Church & Dwight


Spotify


PIM Brands


Hugo Boss


Klimber Latam


ETPAY


Ultramar


Arena Social Platform


MediaPro Group


Trafimar Group


Wetherill Associates (WAI)


Expereo


Uils


Grupo Foster


Mujer Financiera


Grupo Forcca


Tarsus


Bruno Cavalli


Master English


Natural Sant


Boicot


Lumo Education


Nubesk


Hawkers Group


Principaux dossiers


  • Advising Church & Dwight on the management of its trade mark portfolio of the group in 15 Latin American countries.
  • Advising football club Atletico de San Luis on license agreements to grant use of trade marks to the Panini Group for the purpose of participating in events related to the trading card album of the Qatar FIFA World Cup.
  • Assisting PIM Brands with an audit regarding which trade marks were registered in Mexico and which companies of the group owned such registrations.

Holland & Knight

Led from its Monterrey office by senior counsel José Luis Villareal, Holland & Knight’s intellectual property practice is a component of the wider firm’s global service across trade marks, patents and copyright. The team handles the full range of registration, protection and enforcement matters, as well as being a reliable support on transactional work and counsel in IP dispute resolution.

Responsables de la pratique:

José Luis Villareal


Les références

The team has done a fantastic job addressing our IP issues. They have shown great knowledge of the issues and have applied a high business approach that has allowed them to close the issues in the most efficient way.

In particular, I found José Luis Villareal to be a great team leader, who is very close to the issue, while maintaining efficiency and reasonable costs. José Luis has given us a lot of confidence with the level of understanding of the issues that they have worked for the company.

Principaux clients

Sperry Commercial Global Affiliates


Ibarra, del Paso y Gallego

The IP team at Ibarra, del Paso y Gallego assists its clients with the design, protection, application and maintenance of trade mark portfolios. The team also regularly handles the registration of copyright, patents and domain names, and also represents clients in administrative proceedings for infringement, nullity, cancellations and foreclosure. Practice head Juan Manuel Álvarez del Castillo is highlighted by one client for his ‘very good service’; he is supported by associates Yvonne Amaya Becerra and Andrea Guttiérez Romero.

Responsables de la pratique:

Juan Manuel Álvarez del Castillo


Les références

The team is always available and responds quickly to our external requests.

I get very good service from Juan Manuel Alvarez del Castillo from Ibarra.

Juan Manuel Alvarez del Castillo is my go to lawyer in Mexico. He understands how I want my information presented.

Principaux clients

Burger King Company


Altos Hornos de Mexico


Building Materials Investment


Tim Hortons USA


Ciena


Alsea


Alliance Abroad


Choice Hotels International


Principaux dossiers


  • Assisted Burger King Company with the transfer of a trade mark portfolio in Mexico from Burger King Corporation.
  • Advised Building Materials Investment on the change of name and address of its entire trade mark portfolio in Mexico from Building Materials Investment Corporation to BMIC.
  • Assisted Tim Hortons with the recording of the franchise agreement for its trade mark portfolio in Mexico, the franchisor being Tim Hortons USA. and the franchisee being TMHF Mexico.