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Mexico > Intellectual property > Law firm and leading lawyer rankings


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Who Represents Who

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Arochi & Lindner, SC is ‘an excellent firm to go to when a strong litigation team is needed’ and is experienced in patent, trade mark and anti-counterfeiting matters, and has a strong offering in related areas such as franchising and licensing, data protection, media law, technology-related IP, and life sciences. Managing partner Roberto Arochi is noted for his expertise in trade mark law, while fellow founding partner Heidi Lindner is extremely well regarded for patent litigation. Other key individuals include Jorge Mier y Concha, for patent and copyright matters, and administrative litigator María Teresa Eljure. The firm has a strong five-partner team in Mexico City, and also boasts offices in Madrid and Barcelona.

Olivares is a ‘world-class’ IP boutique, whose lawyers have ‘the attitude and experience to respond effectively and efficiently to all questions, regardless of difficulty’. It covers all corners of the market, including contentious and non-contentious patents and trade marks, copyright law and licensing. It will miss former patents head César Ramos, who moved to Calderón & De La Sierra, but with almost 60 lawyers it has considerable strength in depth. Notable individuals include chairman Sergio Olivares Jr, who oversees the patents side; litigation partner Alejandro Luna; media and entertainment expert Luis Schmidt, who heads the copyrights practice and is singled out for his ‘expertise and knowledge’ and provides ‘the best legal strategies’; Antonio Belaunzarán, who is the main contact for trade mark matters; and Gustavo Alcocer, who heads the licensing side. Recent highlights include successfully defending Facebook against an invalidity action concerning its ‘Like’ trade mark and design.

Uhthoff, Gómez Vega & Uhthoff, SC boasts a history of over 100 years as an IP boutique, and remains one of the most admired practices in the market. It has 11 partners and 60 associates covering all areas of IP, as well as related areas such as entertainment law, IT, franchising, data protection and life sciences. Its patent team is led by Javier Uhthoff and Eugenio Pérez; in addition to handling mainstream contentious and prosecution matters, it has a dedicated practice advising on plant breeders’ rights. The trade mark group is led by Consuelo Gonzaléz, Eryck Castillo Orive and Marcela Bolland. Other key partners are Mario Ponce Walraven and Carlos Trujillo, for copyright matters; and the experienced Saúl Santoyo and Xavier Hadad, who lead on IP litigation.

Baker McKenzie S.C. is able to offer its clients both a fully integrated global IP service and an extensive domestic offering in Mexico, its five offices throughout the country giving it an edge when it comes to local enforcement proceedings. The firm’s major clients include Twitter, which it has been advising on multi-jurisdictional regulatory issues across Latin America regarding copyright content and editorial activity in online social media. The firm also achieved a favourable settlement for Schibsted Media Group’s Mexican division, Segundamano, in a trade mark infringement action filed by the El Universal newspaper. Sergio Legorreta leads the Mexican practice, and is backed up by Guadalajara IP head Fernando Robles-Pesqueira.

Basham, Ringe y Correa, S.C. has an extremely strong seven-partner team which handles the full range of contentious and non-contentious IP work for its domestic and international clients, covering trade marks, patents, copyright, data protection, franchising and licensing. On the patent side, partners such as Jose Hinojosa and Claudio Ulloa are highly experienced, and clients also benefit from seven in-house engineers being part of the team. Other key partners are litigators Martín Michaus and Adolfo Athie, who also covers the data protection side. On the trade mark front, the main contacts include the highly experienced Eduardo Kleinberg, who also handles franchising matters, Jorge Vega and Juan Carlos Hernandez. The firm successfully represented Polo Ralph Lauren in a major trade mark claim regarding its ‘Polo’ mark.

Becerril, Coca & Becerril, S.C. enjoys an excellent reputation for patent and trade mark work, and is praised by clients for its ‘outstanding performance’. ‘Remarkable’ patent litigator Juan Carlos Amaro is ‘bright, sharp, very savvy, and devoted to his clients’. Other key partners include the patents and technology director Héctor Chagoya. The firm covers all areas of IP law, including contentious and non-contentious matters concerning industrial designs, utility models, trade marks, copyright and commercial names.

Calderón & De La Sierra has expanded significantly in recent years, with several partners joining from what was AvaLerroux (now AVA) and the team being further strengthened by the arrival of César Ramos, the highly rated former head of patents at rival boutique Olivares. The firm now has a full-service IP offering, covering contentious and non-contentious patent, trade mark, copyright and regulatory matters. Founding and managing partner Carlos Perez De La Sierra is held in very high regard for IP litigation. Other key individuals are litigator Alberto Huerta Bleck, and co-heads of the trade mark practice Paloma Contreras, Mariel Velez and Marimar Bordes.

Dumont Bergman Bider & Co SC is a well-respected two-partner boutique with experience across key areas such as patents, industrial designs, copyright and trade marks. The firm acts for several significant international clients, handling work for major companies such as Boehringer Ingelheim International, Saint-Gobain Glass, Sanyu, ABB Technology, Lego and Pfizer. Managing partner Laura Collada is noted for her expertise in areas such as patent litigation. Armando Pinto is another experienced IP litigator, and is recommended along with Víctor Garrido and Christian Thomae, who head the patent and trade mark practices respectively.

Hogan Lovells BSTL, S.C. provides cutting-edge IP advice to a wide range of clients in the entertainment, consumer goods, IT and pharmaceutical industries. The highly regarded Alfredo Pineda Nieto heads the team, which handles patent, trade mark and copyright matters including anti-counterfeiting, IP enforcement, and civil, criminal and customs actions. Recent highlights include advising Procter & Gamble and The Gillette Company on their Mexican anti-piracy program, which resulted in the seizure of over 11 million counterfeit products in 24 months. The firm also provides trade mark advice to clients such as Suzuki, Mitsubishi Hitachi Power Systems, and Paypal.

Müggenburg, Gorches y Peñalosa, S.C. (MGPS) fields an impressive range of ‘serious and good attorneys’ well-versed in trade mark and patent law. As well as IP prosecution and enforcement, the team regularly handles instructions concerning data protection, trade secrets, and anti-counterfeiting. It is particularly strong on the litigation front, regularly representing major clients in the consumer goods, pharmaceutical and IT industries. The team is jointly led by highly rated litigator and founding partner Esteban C Gorches, who has a strong track record advising clients in the entertainment industry, and Jean Yves Peñalosa.

AVA, formerly known as AvaLerroux, is the product of the merger in 2016 between what was Avah Legal and Spanish firm Lerroux & Fernández-Pacheco. As well as its four offices in Mexico, the firm has a presence in Spain and the US. Managing partner Agustin Velázquez has a strong reputation as an IP litigator, while other key partners are IP litigator Elias Rios and patent specialist Tomas Arankowsky. Past clients include Coca-Cola, Televisa and Pernod Ricard.

Enrique Díaz leads the well-regarded, 20-lawyer team at Goodrich, Riquelme y Asociados, which also includes Guillermo Sosa and Juan Suárez. The firm has recently been involved in some high-profile IP disputes in the pharmaceutical sector, successfully representing clients in claims against generic drug manufacturers. It also successfully defended a major car manufacturer against a significant trade mark claim brought by a retail chain.

José Pablo Pérez Zea leads a solid team of four associates at Santamarina y Steta. The group is particularly strong on the trade mark front, and regularly advises on IP issues arising from corporate transactions. It represents several significant international clients, including advising Hershey on trade mark, copyright, enforcement and licensing matters. Other clients are Kimberley-Clark, General Motors, Takeda and Deere & Company.

Bufete Soni has an excellent reputation for IP, with name partner Mariano Soní and Miguel Ortiz both highly rated. The firm’s expertise extends beyond patent, trade mark and copyright work to areas such as data protection, domain names, licensing and trade secrets.

The ‘outstanding’ IP lawyers at Von Wobeser y Sierra, SC are ‘first class, and extremely professional in their work; their advice is always relevant, saving time, money and headaches’. The two partners in the ‘very serious and qualified’ team are Marco Tulio Venegas and Rupert Hüttler, although clients also highlight the firm’s associates: Patricia Kaim ‘has a deep knowledge of trade mark law and the operation of the trade mark registration system’, and the ‘very responsive’ Nallely Van Pratt ‘prosecutes matters on a timely basis’; ‘the quality of her work is exceptional’. Clients include HBO, Diageo, Coca-Cola and Patek Philippe.

C&L Attorneys is building a good name in the market, through its advice to an increasingly high-profile range of clients, as well as some notable litigation successes. Ana Castañeda handles the patent and trade mark prosecution side, while Jorge León covers litigation and copyright matters. The firm scored a notable victory when it successfully represented Miguel Angel Rendon in two infringement actions against tequila manufacturer Jose Cuervo concerning the unauthorised use of the ‘Casa Tequila’ mark in Mexico. On the patent and trade mark front, the firm handles a regular flow of work for Teva Pharmaceutical Industries.

Cuesta Campos y Asociados S.C.’s ‘excellent’ team covers the full range of patent, trade mark and copyright issues, and is appreciated for its ‘personalised treatment’ of its clients; the lawyers are ‘really interested in the goals and needs of the client’s business; they know how to listen and are very purposeful’. The firm recently advised Subway on a major review of its Mexican franchisees before the Mexican Trademark Office; and also represented Synthon and its Mexican subsidiary, Nafar Laboratorios, in patent litigation against Teva Pharmaceutical Industries. The team is jointly led by the ‘very professionalMauricio Chozas, who has ‘great experience in designing intangible asset protection strategies’, and the ‘innovative and practical’ Javier Villanueva, who has ‘a high sense of customer orientation’.

Herrero & Asociados is a well-known Spanish IP boutique with a strong presence in Mexico, as well as offices in Argentina and Brazil. The ‘efficient, effective, down-to-earth’ team in Mexico City is led by ‘very reliable, business-oriented and proactive’ patent attorney Eric Alávez, and ‘stands out for the excellence of its service’. It has three dedicated trade mark lawyers and three patent attorneys with technical backgrounds. The firm represents a number of international household-name clients, including LinkedIn, Repsol, Ford, Airbus and Telefónica. Rita Maria Rios heads the trade mark department, while Lilia Puenta Ávila heads the patent team.

Praised for its ‘great legal and industrial knowledge’ and ‘outstandingly helpful advice’, Méndez + Cortés S.C. is a ‘go-to’ IP boutique. It acts for a range of domestic and international clients and regularly attracts referrals from foreign law firms. The firm’s two partners receive very positive feedback: Emmanuel García Cortés is ‘highly recommendable’, and José-Juan Méndez is ‘a friendly, responsive and excellent attorney’ with ‘an excellent network’. A significant highlight was representing the Mexican owner of the ‘Dutch’ trade mark in the Supreme Court in its claim against Sanborn Hermanos over the mark’s unauthorised use. Other clients include Facebook, Instagram, Snapchat, Uniqlo and Volkswagen. The team includes three engineers.

Solcargo’s ‘very capable’ team is praised for its ‘flawless service’ and ‘immediate attention’, and handles contentious and non-contentious patent, trade mark and copyright work. Recent highlights include advising the Asociación Mexicana de Laboratorios Farmacéuticos on various regulatory issues, some linked to the Trans-Pacific Partnership Agreement negotiations. ‘Very professional’ department head Guillermo Solórzano ‘has full knowledge of his area’, and provides ‘excellent advice’. Clients include Sun Pharma de Mexico and Landsteiner Scientific.

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  • Notorious Marks

    Notorious marks or the declaration thereof, has always been an issue widely discussed in Mexico by the IP legal community. This is so because provisions of the Paris Convention dealing with this topic have for a long time been uses as an effort to cancel or nullify trademarks registered by Mexican authorities without really making an extensive evaluation of proposed denominations and without examining in depth if such marks may be potentially affecting rights acquired by third parties elsewhere. So, a specific regulation and legal frame that at least tries to resolve this issue is always a good start in the right direction.

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    Advertising in Mexico is governed by multiple bodies of law including for at least seven Federal Laws, five Regulations also of Federal application, a number of the so-called Mexican Official Standards (NOM's) and certain other laws and regulations applicable into specific States within the Republic of Mexico. All of them are focusing to establish the form and manners for producing and communicating advertising of products and services in Mexico.

    It has been well publicized in the Mexican media over the last few months that the General Customs Administration (AGA) and the Mexican Institute of Industrial Property (IMPI) are planning to launch a customs trademark registry, as a short-term solution to increase protection for trademark owners against the import of infringing and counterfeit products.

    The evolution in the protection and enforcement of IP rights has also reached the Mexican practice. The traditional ways of defending a registered trademark on a non use contentious procedure have developed.

    By Jose Luis Ramos-Zurita

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