Intellectual property in Mexico

Arochi & Lindner, SC

Standing strong at the top of the market, Arochi & Lindner, SC handles all aspects of IP including trade marks, patents, copyright, IP litigation and dispute resolution, IP rights enforcement, life sciences, domain names and trade secrets protection, as well as advertising and marketing, data privacy and protection and civil and commercial litigation. ‘The practice wins contentious procedures that other firms consider impossible to win’, says one client. Managing partner, and noted authority on anti-counterfeiting and anti-piracy enforcement, Roberto Arochi heads the team together with highly-rated patent litigator Heidi Lindner; patent and copyright specialist Jorge Mier y Concha, and the ‘exceptional’ María Teresa Eljure, who focuses on trade mark prosecution and litigation, including administrative proceedings. The firm's portfolio includes IP rights holders from sectors including information technology, entertainment, food and beverages, pharmaceuticals, automotive, luxury brands and gaming, among others.

Testimonials

Maria Teresa Eljure’s area of expertise makes the difference. She responds well and promptly to all questions and concerns. The practice wins contentious procedures that other firms consider impossible to win

Maria Teresa Eljure is exceptional, she is 100% aware of all your issues, has exceptional legal preparation, resolves everything with extreme efficiency, speed and has an unbeatable service attitude

Basham, Ringe y Correa, S.C.

Full-service firm Basham, Ringe y Correa, S.C. has a top-notch IP department that competes head-to-head with the main specialist boutiques in the sector. The area stands out for its strong expertise in copyright and trade mark matters, including the prosecution of distinctive brands and trade names, while also remaining active in litigation. Seven partners head the practice: Martín Michaus, who focuses on trade marks, patents and copyrights; trade mark prosecution expert Eduardo Kleinberg, who also leads the franchising and licensing areas; skilled litigator and data protection specialist Adolfo Athié; Claudio Ulloa, who handles all patent-related work; and Jorge Vega and Jose Hinojosa, who are recommended for their general non-contentious work. Juan Carlos Hernandez, together with of counsel Manuel Guerra, are currently leading the entertainment law sub-practice. Other highlighted practitioners include litigation partner Eduardo Castañeda and senior associates Mariana Vargas and Santiago Zubikarai.

Key clients

Michael Kors (Switzerland) International

Chanel

Tiffany

NFL Properties

Nubank

Diageo

Nowhere Co

Dreamworks Animation (NBC Universal)

Soho House Limited

3D Sports Signs

Casa Lumbre

Work highlights

  • Representing Michael Kors on matters including opposition to several trade mark applications, filed by third parties and obtaining fame declarations for the MK trade mark by the Mexican Institute of Industrial Property (IMPI).
  • Representing Chanel in opposition to several trade mark applications and obtaining fame declarations for the trade marks CC, COCO and No. 5 Chanel from IMPI.
  • The firm opposed trademark application SUPA BOWL on behalf of NFL Properties and obtained a fame declaration for the SUPER BOWL trademark by from IMPI.  
  • Acted for Brazilian finance-entity, NUBANK, to protect its brand from online squatters and obtaining the cancellation of their domain name through a domain dispute procedure before WIPO.
  • Assisted Diageo in modifying its tequila business, obtaining authorization to produce tequila and as a result, use the denomination of origin tequila.

OLIVARES

Acclaimed IP boutique Olivares, fields a team of first-class experts that covers all aspects of the IP spectrum and is especially strong when it comes to advising on trade mark, patent prosecution and enforcement, and litigation.  The solid practice includes key practitioners like market leader and patent expert, Sergio L Olivares, Jr.; trade mark specialist Antonio Belaunzarán; Luis Schmidt, who specializes in copyright; Gustavo Alcocer, who focuses licensing and contracts, and the reputed Alejandro Luna, who stands out as a top-notch litigator in the IP arena.

Becerril, Coca & Becerril, S.C.

Boutique firm Becerril, Coca & Becerril, S.C.'s IP practice handles the full range of contentious and non-contentious issues, including domain names, anti-piracy, plant varieties and trade secrets. Operating from its offices in Mexico City and Guadalajara, the firm fields a large team of lawyers and engineers that includes a number of notable practitioners: senior partner Fernando Becerril; prominent IP litigator Juan Carlos Amaro, who also leads the trade mark and copyright group as well as the corporate and commercial law practice; and Héctor Chagoya , who is recommended for patent prosecution work and his consulting services on leveraging value from IP assets.

Hogan Lovells

Multidisciplinary firm Hogan Lovells boasts a group of lawyers who are well recognized in the market for their trade mark and copyright prosecution practice. Under the guidance of partner Bernardo Herrerías, the team is highly valued for its anti-counterfeiting work and skills in litigation and enforcement regarding trade marks, patents and copyrights. Recent work highlights show the firm representing EMI Music in an infringement action related to the use of a “sampler” from a well-known artist in a song included in a new album. Other key practitioners include senior associates Valentina Schmid, who specializes in trade mark portfolio management for international clients, and José Armando Casillas, who is very experienced in the health care, technology, media, telecom, and consumer sectors.

Practice head(s):

Bernardo Herrerías

Key clients

Mars Incorporated

Walmart Apollo

Sappi North America

The Gillette Company

Nissan Motor Co

Hewlett Packard Enterprise

Chubb

Universal Music Group

Univision Communications

Zitro IP

Pure Pharm International (Hong Kong)

Zag Toys

EMI Music

HP

Anagram International / Convertidora Industrial / Convergram

Duracell US Operations

Dümmen Group

Ocean Spray Cranberries

Work highlights

  • Advising Mars Incorporated regarding the consolidation of its trade mark portfolio prosecution in Mexico.
  • Acting for Duracell US Operations in carrying out an anti-counterfeiting program with respect to the importation of batteries into Mexico, particularly the enforcement of border and precautionary measures.  
  • Advising Nueva Wal-Mart de México and Walmart Apollo in two litigation proceedings related to patent design infringements. The firm also continues handling the trademark Mexican portfolio for Walmart Apollo.
  • Permanent advisory to Gillette, particularly with regards to anti-piracy programmes in Mexico, which over the last five years have seized more than 12 million counterfeit products.

TMI Abogados

Specialized boutique, TMI Abogados, has established itself as a reference when it comes to high expertise in IP and technology law in Mexico, and is often the go-to firm for big names from the IT or life-sciences sectors, among others. Always trying to offer out of the box methods, the practice is particularly prominent in trade mark infringement cases, counterfeiting claims and copyright enforcement issues. The practice is led by 'impressive' and talented practitioners including founding partner Kiyoshi Tsuru, accomplished litigator Rodolfo Rangel, and head of the patent and anti-counterfeiting departments, Irely Aquique.

Uhthoff, Gómez Vega & Uhthoff, SC

Active for over a century, veteran firm Uhthoff, Gómez Vega & Uhthoff, SC stands as a major institution in the Mexican intellectual property market with high level expertise in all corporate-related IP advisory, franchising, data protection, and patent and trade mark prosecution and litigation. The team of 11 partners assists a wide roster of clients from the pharmaceutical, telecommunications, technology, media or automotive sectors, and evidences a particularly strong focus on life sciences. Key practitioners include Eugenio Pérez and senior partner Javier Uhthoff, who specialise in patents; trade mark experts Marcella Bolland, Consuelo González and Eryck Castillo; skilled litigators Saúl Santoyo and Xavier Hadad; the experienced Mario Ponce W., who handles copyright matters, and Ignacio Domínguez-Torrado, who is recommended for licensing work.

Baker McKenzie Abogados, S.C.

Baker McKenzie Abogados, S.C. fields a ‘very capable, strong and experienced’ team of 16 lawyers and engineers divided across its five offices in the country. Considered by some clients as ‘the go-to firm in case you are confronted with serious legal issues relating to intellectual property’, the practice covers traditional IP - trade marks, copyrights and patents - and handles litigation in ‘innovative ways’. Key practitioners include: department head Fernando Robles-Pesqueira, who operates from Guadalajara and has considerable expertise in brand management and disputes, IP litigation, and anti-counterfeiting; Carlos Dávila, who is very prominent in IP enforcement, trade mark and copyright disputes and franchising; and Marina Hurtado-Cruz, who leads the patent practice. The latter pair are based in Mexico City. However, the team endured the loss of former practice head Sergio Legorreta, who moved to Dentons López Velarde in December 2019.

Practice head(s):

Fernando Robles-Pesqueira

Testimonials

They stand out because of their follow-up and understanding of our business, they have a great humanity that makes them understand what we, as a company, need. They forget about money, you can see that the decisions they make are not about billing more and that is quite appreciated. Carlos Davila and his team have been working with our portfolio for two years and it has not stopped growing. They are always accessible and always open to help even when plans change

Very capable, strong and experienced team of IP lawyers. The firm to go to in case you are confronted with serious legal issues relating to intellectual property.  Fernando Robles-Pesqueira is an excellent and highly responsive attorney who delivers on his promises. He has successfully assisted a number of our most valued clients in extremely important IP-related issues

Fernando Robles and Carlos Dávila make up a team that is unmatched in experience and commercial quality. They handle litigation in innovative ways, bringing international and local cases to the courts of Mexico. They solve everything with creativity and innovation. They do not settle for the conventional, they always look for a way to resolve the dispute in an intelligent and efficient manner

They also have several technological tools and platforms that make the work easier and more efficient

‘Marina-Hurtado Cruz is an exceptional and versatile intellectual property attorney with extensive experience and knowledge of cutting edge intellectual property issues including patents, trade marks, copyright and advertising law. She is always friendly and approachable with any problems or consultations

Key clients

Hema

Church & Dwight

Carlo Corinto

Bezos Family Foundation

PayClip

Pfizer

Procter & Gamble

ISPEN

KidZania

Ferring Pharmaceuticals

Jeunesse Global Holdings

Work highlights

  • Defending Contpaqi (a local company responsible for the 10% of the electronic invoicing in Mexico), before the Supreme Court of Justice with regard to a  case about trade mark infringement and the use of ad-words.
  • Assisted fin-tech start-up, Clip,  with the organization of its trade mark portfolio, identifying windows of opportunity and beginning the process of consolidating its IP in Mexico and the US.
  • Representing Marriott in a copyright dispute concerning the use of television signals and the showing of movies in hotel rooms.

Calderón & De La Sierra

Boutique firm Calderón & De La Sierra houses a very respected practice, which demonstrates weight across an array of IP matters, including advice on contentious and non-contentious patent, trade mark, and copyright cases, as well as demonstrating strong expertise in related areas such as regulation and data protection. Experienced market player and founding partner of the firm, Carlos Perez De La Sierra heads a well-rounded team comprising: Alberto Huerta Bleck, who is recommended for his litigation and enforcement work; Mariel Velez, Marimar Bordes and Paloma Contreras, who cover the trade mark and copyright front; and César Ramos, who leads the patent team.

Dumont

Impressive IP boutique Dumont, is highly sought after for its expert advice on patent work - covering filing, prosecution and litigation; and trade mark matters, including strategic advice on applications and protection; the team also handles copyright and unfair competition issues. The well-rounded team includes managing partner Laura Collada, hailed by clients as a ‘proactive, experienced and competent lawyer’; patents head Victor Garrido; trade marks head Christian Thomae, who is also very knowledgeable on copyright matters; and head of litigation, Israel Escobedo. The practice has developed particularly strong expertise and experience in the pharmaceutical, chemical, electrical, mechanical, biotech and IT sectors.

Testimonials

Laura Collada is a very proactive, experienced and competent lawyer’

Key clients

Boehringer Ingelheim International

Sulzer Managment

Samsung Electronics

Unaliwear

Kraft Foods Group Brands

Unilever

Lutron Technology Company

Sandvik Hyperion

Essity Hygiene / Health Aktiebolag

SZ DJI Technology

Work highlights

  • Represented Sulzer Managment, a provider of pumps and services for nuclear installations, on its patent application on an axially split pump, objected to on grounds of not involving an inventive step.
  • Represented Kraft Foods in an appeal filed before the Federal Administrative Court against a Mexican Patent Office decision declaring the abandonment of a patent application.
  • Represented Samsung Electronics on an objection to an application for a refrigerator with an ice-maker and ice bucket in the door, due to alleged lack of novelty.

González Calvillo, SC

Full-service firm González Calvillo, SC has a stand-alone IP practice, led by partner Pablo Hopper, who has ‘outstanding skills in patent and trade mark registration matters’ and a very strong focus on litigation. The business-oriented team includes other key practitioners including counsel Alberto Pliego, who focuses on the transactional front, particularly franchising; senior associate Lirio Salgado, who primarily handles patents and copyrights; and skilled litigator Constantino Aquique, a former member of the disputes department of Mexican Institute for Intellectual Property (IMPI).

Practice head(s):

Pablo Hooper; Alberto Pliego

Testimonials

Pablo Hooper is a professional who has outstanding skills, not only in patent and trade mark registration matters, but also in administrative litigation on intellectual property matters. Pablo works excellently in conjunction with companies, allowing him to form a very solid team. He is a professional who has been dedicated to this area for many years

Goodrich, Riquelme y Asociados

Goodrich, Riquelme y Asociados has a high-quality IP practice with a solid reputation for their guidance on patent, trade mark, and copyright infringement claims, as well as other, non-contentious matters. The team, led by senior partner Enrique Diaz, is a popular choice among a wide range of domestic and international companies working in the pharmaceutical, technology, retail and automotive sectors. Other key partners include Julio Prieto, who has high level of expertise in trade mark filings and prosecution; and Guillermo Sosa, who handles IP litigation matters.

Practice head(s):

Enrique Diaz

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

Intellectual property is one of the core practices at Müggenburg, Gorches y Peñalosa, S.C. (MGPS), which represents clients in a variety of matters related to trade marks, patents, trade secrets, copyright, domain names and other IP rights. The department is particularly active in litigation, advising clients - including international pharmaceutical companies - on numerous procedures enforcing intellectual property rights, primarily related to patents and against third parties selling and manufacturing infringing products. Skilled litigator and patents' specialist, Esteban Gorches, is the team's key practitioner.

Panamericana de Patentes y Marcas (PPM)

Long-standing boutique Panamericana de Patentes y Marcas (PPM) has a praiseworthy IP practice with specialist expertise in privacy and data protection, social media, advertising, sports law, IT law, and personal image rights that encompasses all areas of patent, trade mark and copyright law. The 12-strong team, which normally handles prosecutions, enforcement and opposition actions, includes key practitioners Georgina Esteva, who focuses on trade marks; skilled litigators Mauricio Escoto and Humberto Lopez Avila; and patents director Andrés Esteva.

Key clients

Banamex

Scappino

Mabe

Frody

Coppel

Flores Carrillo Arquitectos

Stokup

Sangria Señorial y Chaparrita

Santamarina y Steta

Full-service firm Santamarina y Steta offers ‘first class intellectual property services’, in the main IP areas of trade marks, patents, and copyright, as well as in trade secrets and domain names, plant varieties and breeder’s rights. As one client notes, the firm ‘understands the problems of the agronomic discipline’. The business-oriented team of six lawyers represents companies from the pharmaceuticals, manufacturing and automotive industries, and is led by Jose Pablo Pérez Zea, an expert in franchising and licensing, who also handles litigation and prosecution regarding intellectual property rights. Support comes from Daniel Legaspi, who was appointed counsel in January 2021 and handles trade marks, franchising and licensing and is also an accredited arbitrator for copyright issues; along with associates Jacqueline Caraza, who focuses on patents, and plant variety specialist Enriqueta Molina. The litigation side of the practice was reinforced by the arrival of Efraín Olmedo from Arochi & Lindner, SC in July 2019.

Practice head(s):

José Pablo Pérez Zea

Testimonials

They offer first class intellectual property services, they are fast, timely and accurate. Far above the rest of the firms. José Pablo Pérez and Daniel Legaspi are highly knowledgeable in the field, providing good advice and handling contentious processes at administrative and judicial levels very well

Santamarina + Steta has specialized personnel in the area of agricultural production, something that is very useful because communication is more fluid and because this specialized personnel understands the problems of the agronomic discipline. In addition, they have national experience, which makes their advice more efficient. Their lawyers are open enough to consult technical experts as I am, since in order to understand some cases, it is necessary to look for scientific or technological explanations that clarify the difficult points to be evaluated. Among them is Enriqueta Molina

Key clients

Promaiz Nativo

GM Global Technology Operations

Kimberly-Clark Worldwide

Pirelli Tyre

Deere & Company

Johnson Electric International

Grupo Posadas

THR3MEDIA

Hersey Chocolate & Confectionery Corporation

Work highlights

  • Assisted Promaiz Nativo in preparing the regulations of use, filing and follow-up while obtaining the collective trade mark MILPAIZ
  • Represented Constellation Brands in a non-use cancellation action against trade mark ARBOR MIST.
  • Peramanent advice to Grupo Posadas on the filing, prosecution, management, and enforcement of its IP rights in Mexico; during 2019 the team assisted the company with new developments in the Caribbean.

Von Wobeser y Sierra, SC

Well-known in the market for its solid litigation capability, the practice at Von Wobeser y Sierra, SC, offers clients ‘high level expertise’, especially regarding IP infringements, unfair competition, advertising and marketing controversies. Following the departure of practice head Marco Tulio Venegas, the team of 'highly qualified and efficient lawyers’ is now co-led by partners Rupert Hüttler and accomplished litigator Patricia Kaim, who was promoted at the end of 2019 and is praised by clients for her ‘knowledge, dedication and determination to solve our problems quickly’. Senior support comes from seasoned arbitrator Claus Von Wobeser.

Testimonials

They are effective and experts in the field. The response in the matters entrusted to them has been expeditious and always focused on favouring the interests of the client, but above all adjusted to the law.

They have a high level of expertise, are always up to date and are highly qualified and efficient lawyers with a great deal of experience. They provide excellent customer service and treatment.

They advised us during the process of creating our company and drafting our statutes. They are also in charge of the defense of the intellectual property of our brands in several countries. We greatly value their specific knowledge of our sector and -at the same time- of Mexican and Spanish legislation.

Claus Von Wobeser stands out for his great experience. His great knowledge of not only Mexican but also international legislation provides us with great solvency and security. Patricia Kaim, stands out not only for her knowledge, but also for her dedication and determination to solve our problems quickly. In contrast to other firms, what we appreciate is feeling well attended, even though we are a small client for them

Their responsiveness to initial inquiries on new matters or explanations on Mexico law for existing matters sets them apart from every other Mexico firm we have dealt with, both large and small

They have excellent relations with the authorities

Key clients

Mars

Procter & Gamble

Guccio Gucci

Harvard University

United Airlines

Diageo

Nike

Patek Phillippe

JC Decaux

Work highlights

  • Advised Procesar on several litigations concerning the use of the the trade mark “SIRI” in Mexico. The firm has defended the client’s IP rights since IMPI denied Apple’s trade mark registrations and all the appeals filed by said company.
  • Acted for construction company T69 on the protection and defence of the CHAPULTEPEC UNO skyscraper trade mark and the non-exclusivity of the term CHAPULTEPEC.
  • Assisting Mars in an infringement action against Grupo Morbrock Internacional for the illegal import and commercialization of ceramic mugs employing M&M’s characters.

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

The incorporation of the ‘very knowledgeable, competent, strategic-minded and dedicated,' senior associate Jonathan Rangel, has clearly boosted the presence of Bello, Gallardo, Bonequi y García, S.C. in the Mexican IP market. As well as reinforcing the litigation-side of the practice, his arrival has also allowed the practice to secure an interesting roster of clients. He leads a team of ‘well-prepared experts’ with proven experience in intellectual property matters, that includes key practitioners Carlos Bello, who focuses on copyrights and related Internet issues, and the head of corporate Juan Carlos Morales.

Practice head(s):

Jonathan Rangel

Testimonials

It has a team of well-prepared experts with strategic skills that benefit its clients. Jonathan Rangel, who leads the intellectual property area, is a highly technical lawyer with a risk approach, so his preventive and reactive advice (at the litigation level) is comprehensive and solid for the benefit of his clients.’

‘The team is compact, that is, everyone knows about the matters they handle, so client service is always exceptional, a response is always received on time and in an optimal manner regardless of which team member issues it, which shows that their internal communication is very good. Each team member knows his or her skills and exercises them fervently in each of the cases entrusted to them, one of the best qualities being the time they invest in each case to obtain the most effective solution for the client. In comparison to other practices, the level of attention is very personalized and proactive, the follow-up to the cases is detailed and punctual.’

Their lawyers stand out for the level of experience and study that they give to each of the cases, that is to say, each new case is studied in detail no matter how simple or complex it may seem, thus giving a specific solution to the particular problem.’

‘Jonathan Rangel, extrapolates all the possibilities in each litigious case that is presented to him, offering a strategy and possible solution based on all the possible scenarios, thus facilitating the decision making process of the clients. His legal opinions make it easier for clients to make the right decisions for the proper safeguarding of their intellectual property rights.

I think the strong point of the team is the good communication between lawyers and that the specialties of each one of them are very defined. The treatment is fundamental; always professional but with a touch of friendship.’

The team has proven its comprehensive knowledge not only in the field of intellectual property but also in general principles of law as well as with regard to practical and strategic issues, which resulted in very valuable legal and practical advice. The team is also very well connected as a consequence of its long-standing participation in industry events, lectures and the like. It is admittedly the first Mexican firm I am fully convinced of and have no concerns about, whatsoever

To me, Mr. Jonathan Rangel stands out as a very knowledgeable, competent, far-sighted, strategic minded and dedicated lawyer. He has a very short response time and is very reliable in organizing his docket. His advice is always on target, resulting from his many years of experience. Moreover, his knowledge of the English language is excellent, which, alas, is not the case with many other Mexican firms. Lastly, his manner of displaying even complex circumstances is very graphic and easy to understand

Key clients

Hisense USA Corporation

Thema America

Pietra Gallery

Sonora Agropecuaria

Alsea

Herbalife International de Mexico

Toyoda Van Moppes

Work highlights

  • Assisted TV-content distributor Thema with a complete due diligence of its IP portfolio in Mexico and internationally; subsequent to which the firm has taken on the availability analysis and registration of Thema’s trade marks in USA.
  • Support on IP registration and regulations in the USA for Mexican fossils and minerals company, Pietra Gallery.

Cuesta Campos y Asociados S.C.

Cuesta Campos y Asociados S.C. ‘has a strong understanding of intellectual property matters’, offering clients a solid practice that specializes mainly in patent and trade mark litigation, as well as trade mark registrations. The team of ‘exceptional’ lawyers has a particular emphasis on the pharmaceutical industry; mostly handling annulment actions, and is led by Mauricio Chozas, who is praised by clients for his litigation capabilities.

Practice head(s):

Mauricio Chozas

Testimonials

A strong understanding of intellectual property matters, including trade mark strategy, procurement and enforcement in Mexico. The team has exceptional lawyers, with expertise in brand strategy, management and enforcement of large portfolios. We work very closely with Mauricio Chozas and Lorena Pinto who work diligently and are able to provide unique solutions tailored to client’s individual needs

Key clients

Lenzing

Colmenares

Light Enterprises

Global Maritime

Royal Prestige

Cloe

Cerberus Business Finance

Compas

Mumuso

Multico

Work highlights

  • Represented OPKO in connection with multi-jurisdictional litigation proceedings in order to obtain protection of a specific trade mark; in which the counterpart is a competitor also devoted to the Pharmaceutical industry.
  • Advised Lundbeck on data protection coverage, treatment and enforcement in Mexico, El Salvador, Peru, Ecuador, Honduras, Dominican Republic, Guatemala, Panama, Costa Rica and Colombia.

Ibarra, del Paso y Gallego

Ibarra, del Paso y Gallego has set out to establish itself as a solid player in the IP market. The arrival of former Ocampo 1890, S. C. partner, Juan Manuel Alvarez del Castillo, has been a great asset to the practice, which has increased both its activity and profile. Alvarez handles and prosecutes a broad range of matters involving trade marks, patents, copyright, domain names and related litigation; he is also a significant reinforcement of the firm's life sciences practice.

Key clients

Burger King

Dan Post Boot Company

Discovery Communications

World Trade Centers Association

Buzz Aldrin Enterprises

Tesla

Copresi

Qualcomm

Benefit Cosmetics

Choice Hotels

Work highlights

  • Represented Burger King in an IP infringement lawsuit filed by the restaurant King Dog.

Iberbrand S.C.

IP boutique Iberbrand S.C. continues to build on its good reputation particularly for both contentious and non-contentious trade mark advice. Managing partner Diego Rossi, who specializes in franchising and the enforcement of trade marks and patents, heads the well-rounded practice, which includes highlighted practitioners like Gilberto Martinez, who handles trade mark and copyright matters; skilled litigator Ana Vargas and senior partner Francisco Capetillo Traeger who has over 25 years' IP experience, particularly in the full array of trade mark matters.

Méndez + Cortés S.C.

Since its creation in 2014, ‘leading intellectual property firm’, Méndez + Cortés S.C., has gradually developed both position and profile in the IP arena. The practice fields a great ‘pool of professionals’, composed of lawyers and engineers, that have a strong focus on patent and trademark registration and protection. The department is co-led by founding partners José Juan Méndez and patent expert Emmanuel G. Cortés, who are recommended for their ‘quick response, friendly treatment and service attitude’. However, experienced IP-generalist Cesar Bautista left the firm in November 2019.

Testimonials

Good knowledge of the subject and good interpersonal relations. Disposition to any requirement. Compares favorably to other firms. Quick response, friendly treatment and service attitude.’

Méndez+Cortés is a leading intellectual property firm that has adapted to the changing demands of the market with a focus on timely and professional attention. The team is composed of lawyers, engineers and other technical professionals who enrich and strengthen the legal strength of the firm’s responses to its clients’ requests. We outsource with them all our intellectual property support needs, especially patent and trade mark matters, for which we have received impeccable and solid attention. We are progressing with more than eight registration requests with good results and, above all, with an exemplary follow-up. We receive informative mailings at all hours, including in the early morning and on weekends, if necessary

The great competitive advantage of Méndez+Cortés is the pool of professionals who work together to address each issue. In addition to the focus and discipline of its partners, José Juan and Emmanuel, the team works in tune and with direction on each issue. In our patent, medical treatment and manufacturing process matters, attorneys Luis Márquez and Oscar López have been outstanding in their attention, knowledge and ability to communicate, and in their prompt response

Key clients

Volkswagen de Mexico / Volkswagen Aktiengesellschaft

Heb Grocery Company

Facebook

Glenmark Pharmaceuticals

Baby’O

Blue Marble Technologies

Beaver-Visitec International (US)

Morbark

Mezcal Amores

Work highlights

  • Represented Volkswagen de Mexico on the international protection of a patent originated in their Mexico offices; estimated patent value $50m.

Solcargo

Following the dissolution of the former SOLCARGO firm, its IP practice has migrated to IP and lifesciences boutique, Solórzano Linaldi. The team is a widely acknowledged player in the market, handling a broad range of IP matters, including patent and trade mark applications, prosecution, enforcement, dispute resolution and litigation; it has particular expertise in the pharmaceutical industry. Guillermo Solórzano Leiro, who focuses on contentious patent, copyright and trade mark issues, heads the six-strong practice, which has additional experience in the entertainment sector. As one client notes, they have a ‘deep understanding of the operational, commercial and legal aspects related to intellectual property in the entertainment, film and television industry’. Key support comes from senior associate Miriam Orozco, who is also noted.

Practice head(s):

Guillermo Solórzano Leiro

Testimonials

SOLCARGO has a deep understanding of the operational, commercial and legal aspects related to intellectual property in the entertainment, film and television industry, and we are very satisfied with their responsiveness and proactivity’

‘Guillermo Solórzano is professional, intelligent and an expert in intellectual property, very friendly and with a true spirit of service. From Miriam Orozco we have also received excellent service and very friendly treatment. She has helped us to understand complex aspects of IP-based projects

Experienced firm and their treatment is exceptional. Always with immediate attention and very professional advice

Key clients

Landsteiner Scientific

Neology

Grupo Farmacéutico SOMAR

Sun Pharma de México

Glenmark Pharmaceuticals

Asofarma de México

Protein

Gabriel Orozco Felix

Outdoor México Servicios Publicitarios (Clear Channel)

Sum Services

Western Forms

Asociación Mexicana de Laboratorios Farmacéuticos (AMELAF)

Franco Escamilla

PUMAS (Football Mexican Club)

Work highlights

  • Represented Landsteiner Scientific in a nullity trial before SEPI against an IMPI resolution in which it declined to grant the nullity of a patent claiming a composition which contains the active substance called mycophenolate sodium.

Bufete Soni

Boutique firm Bufete Soni has a well-established and praised IP practice that ranges from patents and industrial designs, to trade marks, copyrights, slogans, trade secrets, domain names, licensing, advertising, unfair practices, internet rights, and personal data protection, as well as regulatory and contentious issues. The 12-strong team of lawyers and engineers is led by seasoned trade mark prosecution expert Mariano Soni, and includes other reputed practitioners, notably Miguel Ortiz, Víctor Rodríguez, Pedro Alvarado, Verónica Bernal or Rosalinda Durán.

C&L Attorneys

Boutique firm C&L Attorneys handles a broad mix of contentious and non-contentious patent, trade mark and copyright work, particularly for international clients. The practice is led by founding partners Ana Castañeda, who heads the patent and trade mark areas; and Jorge Leon, who has a strong focus on IP litigation - including infringement actions- and also leads the copyright and enforcement departments.

ClarkeModet México

The Mexican office of ClarkeModet México is one of the multinational specialist IP operation's largest teams. The firm has been present in the country for over five decades; today, the team is led by Angelica Pardavell, who has broad experience across patents, industrial designs, utility models, plant varieties and industrial secrets in Mexico and other Latin American countries. The practice signed five new members in 2019, reinforcing a full range of IP services, including licensing, assignments, customs registration, border measures, and trade mark and patent litigation and defence.

Practice head(s):

Angelica Pardavell

Work highlights

  • Represented Kleverness on a patent prosecution in the USA.

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

Corporate powerhouse Creel, García-Cuéllar, Aiza y Enríquez, S.C. has developed a respectable IP area that has increasingly gained prominence in litigation. The team is led by partner Begoña Cancino, who regularly advises clients on trade mark, copyright and trade secret matters, including registration and enforcement of IP rights, negotiation of technology transfer, licensing and franchising agreements, litigation, the IP implications of transactions and on data privacy matters. The eight-strong team was reinforced last November with the arrival of sanitary regulation expert Guillermo Govela, as counsel, from an in-house position.

Practice head(s):

Begoña Cancino

Key clients

El Águila Compañía de Seguros

MRP

Riot Games

Colgate-Palmolive

Amgen

Servicios Integrales de Mercadotecnia y Producción de Eventos

Premier Paint Roller México

Globo Comunicação e Participações / Felipe Sanctos (GGLOBO)

KSMV Capital

RLH Properties

Work highlights

  • Represented Riot Games in the protection of IP assets embedded into the company’s main product, “League of Legends”.  
  • Represented Seguros el Aguila in litigious actions to protect their core trademarks.

De Alva & Asociados

Specialised boutique De Alva & Asociados is best known in the IP arena for its expertise in trademark infringement and other IP related litigation; IP enforcement; trademark, slogan and trade name filing; international trademark filing (Madrid System); patent filing and prosecution; and copyright litigation. The three-strong practice, which has substantial expertise in industry sectors including entertainment and media, retail, software and computer services, chemicals and automotive, is led by founding partner Sergio De Alva, who is supported by partners Gerardo Torres and Luis Gaya.

Practice head(s):

Sergio De Alva

Key clients

Inmolecule International Limited

Forever 21

Portsgroup

Klinger & Kollegen

Schorr IP

Antoinette M Tease

Toka International

Bay State IP

Miller Thomson LLP

Cherskov Flaynik & Gurda, LLC

Herrero & Asociados

Spanish boutique Herrero & Asociados has a small Mexican office that stands out for its expertise in trade mark and patent matters, especially patent prosecution for clients in the telecommunication and automotive industries. Office director Eric Alávez and international practice member Karla Islas (who divides her time between Mexico City and Madrid), are both experienced patent specialists. Cesar Bautista Gandarilla, who arrived from Méndez + Cortés S.C. in November 2019, is the key legal contact.

Key clients

Editorial Planeta

Ingeteam Power Technology

Buggatti

Volkswagen

Foreo

Viscofan

Orona

Work highlights

  • Representing Volkswagen on trade mark prosecution matters, involving significant opposition work.

Mijares, Angoitia, Cortés y Fuentes S.C.

Promoted to of counsel  in February 2020, Alejandro Díaz leads the practice at full-service firm Mijares, Angoitia, Cortés y Fuentes S.C., which focuses on trade marks, copyright and IP litigation; privacy and data protection, domain-name dispute resolution; advertising regulatory issues; licensing and franchising agreements; and entertainment, IT and sports law. The six-strong team also handles criminal procedures related to counterfeiting and piracy issues and has extensive experience in Constitutional Appeals (Juicios de Amparo).

Practice head(s):

Alejandro Díaz

Testimonials

They have greatly improved their service by following up on queries and constantly updating the status of ongoing issues. Alejandro Díaz has always provided us with good comments and advises us on what actions we should take to protect our intellectual property in different scenarios. Claudia Gutierrez has always shown availability to clarify doubts and provides advice with great clarity and mastery of the subject. Claudia Ramírez always attends our matters on time and provides a wide explanation to our consultations, which provides legal certainty and confidence of being advised by experts

Excellent team approach. Very attentive. Excellent quality

Key clients

IEnova (Infraestructura Energética Nova)

Citibanamex

Grupo Gayosso

IPET Technologies

Smiths-Detection Watford

Didi Chuxing

Uniko

Prada

BBVA

O’Reilly Auto Parts

Didi Chuxing

Thor Urbana

Entertainment One (Eone)

Work highlights

  • Assisted manufacturing company, IPET Technologies, obtain industrial design registrations 51697, 51698 and 51700 before the Mexican Institute of Industrial Property.

Sánchez Devanny

The IP practice at Sánchez Devanny is differentiated by its strong focus on the pharmaceutical industry, advising key clients including Stendhal, Servier, Merck, Alexion, Serral, Lakeside, Biotoscana, Stendhal and Exeltis on a broad range of issues including prosecution, litigation, interactions with regulatory law for both patents and trade marks, as well as general policy advisory. IP practice head Juan Luis Serrano-Leets has 20 years' experience and is a 'a very complete lawyer'; formerly in house at Astra Zeneca, he also leads the life sciences and data privacy areas.

Practice head(s):

Juan Luis Serrano-Leets

Testimonials

The firm has a great partner, Juan Luis Serrano Leets. He knows very well both the practice of intellectual property and regulatory issues in Mexico. This gives him an additional advantage. He has a great knowledge of the pharmaceutical industry. Having worked as an in-house lawyer and in a law firm makes him a very complete lawyer

They are very professional and clear in their recommendations, they even make us see many points that we had not considered. Juan Luis Serrano is the lawyer with the greatest sense of urgency on issues that impact the pharmaceutical industry and helps us make decisions with clear information from different sources and to anticipate. He is always empathetic, proactive, ethical, and solution-focused

‘They solve problems from a practical point of view’

‘Juan Luis Serrano brings knowledge, experience and peace of mind’

‘Maria Jose Ayala Garcia has a pleasant attitude and follows up closely on the issues she handles’

Key clients

Teva Pharmaceuticals

UCB Pharmaceuticals

H&M Hennes and Mauritz

Repsol

The Pokemon Company

Exeltis Pharma

Engie / GDF Suez

Sumitomo Corporation

Tarrant Capital IP

Sea Bridge

Work highlights

  • Represented pharmaceutical company Pharmhouse regarding trade mark applications for cannabis products.