Firms To Watch: Intellectual property

January 2021 witnessed the launch of Eljure Legal, founded by well-known IP expert Maria Teresa Eljure – formerly a partner at Arochi & Lindner, SC – who specialises in IP litigation and counselling, and has considerable expertise in trade mark enforcement and prosecution matters.
Founding partners Jean Yves Peñalosa Sol La Lande and Luis Enrique Donnadieu departed from Müggenburg, Gorches y Peñalosa, S.C. (MGPS) in 2019 to launch specialist boutique ELS – Peñalosa + Donnadieu, bringing together over 20 years of joint experience in all areas of intellectual property; it is particularly strong in regulatory and litigation work.
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

Arochi & Lindner, SC

Arochi & Lindner, SC remains a leader in the market, with profound experience in trade marks, patents, copyright, IP litigation and dispute resolution, IP rights enforcement, life science matters, domain names and trade secrets protection, as well as advertising and marketing, data privacy and protection, civil and commercial litigation, and corporate and regulatory law. The practice is jointly co-led by managing partner Roberto Arochi, whose expertise encompasses advertising and marketing, trade marks and trade secrets, copyright, dispute resolution, licensing, franchising, and unfair competition – although he is arguably best known as a noted authority on anti-counterfeiting and anti-piracy; expert patent litigator Heidi Lindner; and Jorge Mier Concha, a patent and copyright specialist. Key figures in a dedicated associate bench more than 40-strong include patents specialist Arturo Carmona, and Carlos Ledezma, a member of the IP observation unit, who has more than 15 years’ experience in penal, civil and commercial litigation. The practice can also call on a highly experienced group of Of Counsel, notably -on the IP side- Aldo De Landa, Diana Karina Martínez and Juan Rodrigo Pimenetel.

Practice head(s):

Roberto Arochi; Heidi Lindner; Jorge Mier y Concha

Basham, Ringe y Correa, S.C.

Basham, Ringe y Correa, S.C., undoubtably one of Mexico’s predominant forces in intellectual property, fields a 28-strong practice group with experience in the protection of distinctive signs including trade marks, commercial advertisements and trade names; as well as handling trade mark prosecution, copyright, patentability searches and registrations, and IP advice on transactional operations among other matters. The team is co-led by Adolfo Athie, who is actively involved in amparo actions before the federal courts for the protection of intellectual property rights against falsification and unfair competition; Martin Michaus, who has extensive experience regarding the design, acquisition and protection of IP portfolios, as well as the negotiation and resolution of controversies; and Eduardo Kleinberg, who heads up the trade mark, franchising and licensing practices, and has vast experience in domestic and international matters. Rounding out the managing team, Juan Carlos Hernandez focuses on trade marks, slogans, copyright, industrial secrets, domain names and new technologies; while Eduardo Castañeda, highly experienced in intellectual property litigation, undertakes the defence of patents, trade marks, trade secrets, copyright, reserved rights, domain names, licenses, franchises, contracts, unfair competition, product counterfeiting, piracy and misuse of intellectual property rights. Additionally, the partner level bench has been futher strengthened with the October-2022 promotion of Mariana Vargas, who focuses on IP defence strategies, particularly in relation to trade marks. Associate Jessica Sainos moved to Calderón & De La Sierra  in April 2022.

Practice head(s):

Eduardo Kleinberg; Martín Michaus; Adolfo Athié; Claudio Ulloa; Juan Carlos Hernández; Eduardo Castañeda

Testimonials

‘The treatment is first class, the office is always at the forefront and keeps us promptly informed of the status of our procedures.’

‘The treatment is direct and personalized with the lawyers of the firm, they are always available to deal with our issues. – Juan Carlos Hernandez Campos – Mariana Vargas Macias.

 ‘A firm that puts customer care above all else.

‘Martin Michaus is an intellectual property luminary and a person of great professionalism and humanity. Adolfo Athié is the lawyer with whom I have worked the most and I always appreciated his great knowledge of industrial law and his availability. I also want to highlight Eduardo Castaneda and Juan Carlos Hernandez.

Key clients

Bayer

Athleta ITM

BASF

Wal-Mart de México

CVS Pharmacy

Major League Soccer

Licores y Destilados Gran Malo

NBC/Telemundo

The Cocoa Cola Company

Chapter 4Corp

Goodyear

NFL Properties

Gap

Ralph Lauren Company

Nowhere Co

Soho House

All Star

Ferrero

Polyplastics Co

Michael Kors

Chanel

Barcade

Netflix

Disne Enterprises

HBO

3D Sports Signs

Mezcal Ojo de Tigre

Destilería y Bodega Abasolo

Velcro

GNP (Grupo Nacional Provincial)

Zuffa

Novopharm

Kylie Jenner

Citigroup

Work highlights

  • Advised CVS Pharmacy on successfully obtaining a favourable resolution that declared the notoriety of “CVS PHARMACY” (and related trade names) for the pharmaceutical sector in Mexico.
  • Advised Major League Soccer by assessing and consulting the MLS in expanding, maintaining and defending its trade mark portfolio in Mexico.
  • Advised Chanel on various successful oppositions of trade mark applications in the name of Chanel and obtained fame estimations of the trademarks CC and COCO by the Mexican Institute of Industrial Property.

OLIVARES

Fielding one of the largest IP practices in Mexico with over 60 team members, specialist IP boutique Olivares stands out for ‘its technical mastery' and 'serious and efficient perspective’. With experience in the full spectrum of intellectual property, matters it advises clients on patents, trade marks, copyright, licensing, regulations and litigation, generally catering to a roster from the pharmaceutical, consumer goods, entertainment, food and beverage, fashion and new technology industries, among others. Key figures include Alejandro Luna F, who is highly experienced in IP litigation, regulatory matters, and administrative litigation, and co-chairs the life sciences and pharmaceutical law industry group and coordinates the litigation department. Daniel Sánchez is focused on litigation and regulatory matters, and also has a specialisation in life sciences and technology. Sergio L Olivares, Jr has a strong reputation for trade mark, copyright and patents prosecution, the litigation of intellectual property rights in general, and unfair competition; he plays a key role in the regulatory and administrative legal practices as well as the life science, pharmaceutical and IT industry groups. Highly regarded copyright specialist Luis Schmidt is head of the firm’s entertainment group, which handles matters pertaining to copyright law and related IP rights, as well as the full range of transactional, litigation and consulting matters.

Practice head(s):

Sergio Olivares, Jr.; Luis Schmidt; Gustavo A. Alcocer; Alejandro Luna F; Alonso Camargo; Daniel Sanchez; Armando Arenas; AbrahamDíaz; Víctor Ramírez

Testimonials

‘Strengths and abilities that I recognise are mainly their technical mastery, with a serious and efficient perspective. Kind in their dealings.

‘Its plus is its knowledge and technical mastery, generally the office participates in the most relevant issues in the industry and that places them as experts in the most innovative topics.

‘They are always attentive to solving the needs that we present as clients, they look for alternatives and they are not in a rush to solve but more focused in giving the best result.

‘Very attentive to the needs of the client, Luis Astorga, always on the lookout for the company, Gustavo Alcocer, attends closely to the company’s managers, creating and strengthening the relationship.

Key clients

Microsoft

Netflix

Novartis Pharma

Eli Lilly

Honda Patent Technologies North America

Grupo Modelo

PepsiCo

Unilever

Philips

Pandora Jewelry

GD Searle

Gulf International Lubricants

Work highlights

  • Successfully represented Novartis in the nullity trial contesting the validity of marketing authorisation for the product “FEMULAN”, granted by COFEPRIS to Landsteiner Scientific; as well as preliminary injunctions and patent infringement claims against the manufacturer of the product.        
  • Advised Eli Lilly on a nullity trial against a marketing authorisation granted in violation of the Linkage System developing an innovative strategy to evidence withCOFEPRIS own records the undue compliance of the Linkage System provisions.
  • Advised Estafeta Mexicana on the appeal of a fine imposed by COFEPRIS for alleged non-compliance with the health laws, succcesfully having the fine declared null and void because it was demonstrated that Estafeta did not require the sanitary authorisation that COFEPRIS indicated.

Uhthoff, Gómez Vega & Uhthoff, SC

A sterling roster of domestic and foreign clients seek out prestigious boutique Uhthoff, Gómez Vega & Uhthoff, SC for assistance and representation in a full range of IP matters. The firm  fields a sizeable practice group which is noted for its capabilities in patent and trade mark and portfolio management, the enforcement of IP rights, copyright, media and entertainment law, whether it be regarding corporate or transactional work, regulatory assistance, or contentious representation. Key practitioners at the firm include name partner Javier Uhthoff O, who has extensive experience advising clients on protecting different types of innovation, particularly patent matters. Head of the litigation department, Saúl Santoyo focuses on IP litigation and enforcement, anti-piracy and anti-counterfeiting issues, domain names and disputes. Marcela Bolland has extensive experience advising clients on the selection, use and protection of trade marks, obtaining trade mark protection, portfolio management and contractual matters; and Xavier Hadad undertakes patent and trade mark litigation, handles domain name disputes and anti-counterfeiting. Senior associates Gerardo Parra (trademarks and related litigation; trademark portfolio planning, management and defence); José Luis Ramos (IP defence and litigation) and Carolina Ponce (trade mark filing, prosecution and litigation strategies and portfolio management), constitute a strong second tier. However, Ignacio Domínguez-Torrado -former head of the corporate, entertainment, regulatory and franchise practices- left the firm in December 2021.

Practice head(s):

Javier Uhthoff O.; Consuelo González; Carlos Uhthoff; Eryck Castillo; Saul Santoyo; Marcela Bolland; Eugenio Perez; Xavier Hadad

Baker McKenzie Abogados, S.C.

Baker McKenzie Abogados, S.C., leveraging the consolidated expertise of a full-service firm with worldwide offices, the intellectual property practice in Mexico has a notable track record in trade mark, patent and copyright prosecution and enforcement, as well IP transactions, IP advisory, and other matters related to technology, privacy and life sciences. The team is directed by Fernando Robles-Pesqueira who assists foreign and domestic companies with trade mark portfolio management, copyright advice and disputes, patent disputes, and trade secrets. Patent practice head Marina Hurtado-Cruz is praised by clients as ‘intuitive and with extensive knowledge and experience in the field of patents'; she manages the portfolios of international consumer goods and pharmaceutical companies, along with clients from the electronics and energy industries, among others. Carlos Dávila Peniche, who heads up the copyright, media and enforcement practices, is primarily focused on the soft-IP sphere, covering both transactions and litigation. Trademark head Gresly Marcano has extensive experience advising major consumer goods and pharmaceutical companies with protection and enforcement of their trade mark related rights.

Practice head(s):

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

Testimonials

‘My experience was related to patent area, in particular I refer to industrial designs, and I truly appreciate the expertise in that area due to the fact that we were able to avoid unnecessary refusals. It is important to mention that I have had the opportunity to collaborate with other firms before and in this case, I truly recommend Baker due to the fact that the communications are very fast, and easy. Furthermore, their costs are in range.

‘I was attended by Marina Hurtado, the experience was phenomenal because we did not have any Office Action issued by the authority and it was very relevant because of commercial times, due to the fact that the product has worldwide exploitation.

‘The most valuable thing is that we have a multidisciplinary team in matters of legal protection and intellectual property through a leader, headed by Lic Marina Hurtado Cruz, a partner in the patent department of Baker McKenzie Mexico. For us, it was very important to know the processes and the people who would represent us and we looked for different alternatives about which would be the firm in which we were going to place the trust of our invention, along with all the information, and definitely, Baker McKenzie was our choice and of which we can feel extremely proud of the team and its results. In this sense, we have obtained a very serious and professional work on the different stages, both for the two national applications registered with the IMPI, as well as the international patent applications, through perfectly registered deliverables .

‘Lic Marina Hurtado Cruz, partner, patent department, Baker McKenzie Mexico. She is very intuitive and has extensive knowledge and experience in the field of patents, which she makes available to us, in order to publicize the scope and objectives pursued, managing to distribute the work that corresponds to each one, establishing compliance strategies and commitments, both towards us as clients, and towards their team of collaborators.

‘Marina Hurtado Cruz is very professional in matters related to legal protection and her suggestions and comments allow us to make the best decision together to protect our invention in terms of plagiarism, fraud, copying, copyright, alliances, etc.

‘Ing. Héctor Sánchez Vargas, IP specialist, patent department, has a great capacity for synthesis to understand the various technical variables involved in each of the inventions that we are patenting. His comments on the matter oblige us to make an effort to deliver a complete and detailed report for evaluation and subsequent recommendations. Likewise, he has been deeply involved in research on similar inventions, using all the tools at his disposal, in order to offer us an overview of where we are with respect to inventions or patents similar to ours.

 ‘Fernando Robles, head of the Intellectual Property area, has placed at our disposal the best talent of the firm’s patent department. Likewise, consult and review with the multidisciplinary team, areas of opportunity to achieve the best result.

Key clients

Rassini

Spotify

ACNUR Mexico

Amazon

Boston Scientific de México

Work highlights

  • Advised Rassini, the largest producer of suspension parts in the world, with its global trade mark and opposition portfolio, encompassing over 200 registrations in more than 30 jurisdictions.
  • Assisted Spotify understand the regulation, rights’ scope and current state of affairs concerning copyrights for complex and progressive uses in Mexico, to mitigate risks; as well as assisting with the negotiation of licensing deals with local CMO’s and publishers.
  • Advised the United Nations Refugee Agency – México (as part of the firm’s pro-bono projects), with copyright clearance for its launch of a multimedia campaign named “PALOMAZO POR LOS REFUGIADOS”, inspired by  Refugee Day 2021.

BC&B Law and Business

Becerril, Coca & Becerril, S.C. enjoys a stellar market reputation on account of its highly capable and multifaceted IP practice. This boutique firm handles a wide range of intellectual property matters such as patent and trade mark prosecution, litigation and strategy, copyright, licensing, intangible-asset management, industrial secrets and technology transfer - primarily for clients in the pharma, technology, automotive, retail, aviation, and entertainment industries, among others. Key practitioners in the team include: Juan Carlos Amaro, who is well known for his experience in intellectual property protection, administrative litigation and foreign trade; he currently leads the IP litigation team and the trade mark and copyright group, as well as the corporate and commercial department. Octavio Espejo leads the patents and technology team and is experienced in patent matters, utility models and industrial designs' filing, prosecution and maintenance; technological intelligence studies, IP valuation and the technical aspects of patent litigation; he also manages the technology transfer caseload. Trade mark and copyright head Victor Adames advises international and domestic companies on their respective trade mark matters, particularly those from the telecoms, consumer goods, food and beverage, and luxury clothing industries.

Practice head(s):

Juan Carlos Amaro; Octavio Espejo; Mariana Gonzalez; Victor M. Adames; Carlos Hernandez; Emilio Garate; Carlos Gonzalez; Fernando Becerril; Roberto Duran; Raúl Dominguez

Testimonials

‘I have the best impression of the BCB studio. We have been working with them for a long time on trademark and patent issues and we feel very comfortable with them.

‘We have had to interact with several partners and not only working but also in working committees of associations (Inta, for example, with Victor Adamés) where he did a very good job.

‘One of the things that are most important to me is the care that is given to each of the matters entrusted, and the technologies used for the protection of information.

‘The professionalism, the care of the affairs, they are competitive and very fair prices.

Dumont

Dumont is an accomplished and long-standing boutique that covers the full spectrum of intellectual property services, and which is praised by clients for having a ‘proactive approach' and 'knowing the market as well as its client’s needs’. With a robust team of lawyers, patent attorneys and engineers, it provides expert advice on patent application and prosecution; trade mark applications, litigation and infringements; and is also active in anti-counterfeiting matters. The team is co-led by managing partner Laura Collada who has profound experience in intellectual property matters and advises clients on trade mark portfolio protection, as well as patent and trade mark litigation strategies. Victor Garrido leads the patent practice and focuses the examination of patents, industrial designs and utility models, as well as clearance and patentability analysis and technical opinions for litigation. Christian Thomae heads the trade mark practice group and is also experienced in copyright, e-commerce, domain names, and matters related to the protection of IP rights on the internet. Completing the senior team, Israel Escobedo leads the litigation practice and focuses on civil, commercial, criminal, and intellectual property issues at all procedural stages from injunctions to constitutional appeals.

Practice head(s):

Laura Collada; Victor Garrido; Christian Thomae; Israel Escobedo

Testimonials

‘Dumont has a proactive approach and knows the market as well as its client’s needs.

‘Laura Collada is very well connected with her peers not only in Mexico but also in other jurisdictions.

‘Christian Thomae’s legal opinions are always greatly appreciated.

‘Since we started working with them, Angélica Domínguez has been our usual contact. Her permanent availability and focus on finding solutions and customer satisfaction make her a key person when it comes to ways of building customer loyalty. Whenever I have contacted Angélica for any complex and urgent matter, she has responded without delay and with the best quality. We have also worked with Romeo Chora, Víctor Garrido, Lorena Carmona, they are all excellent professionals and provide impeccable service.

Key clients

Unilever

Kraft Foods Group Brands

Mitsubishi Chemical UK

Casio Computer

Samsung Electronics

Saint-Gobain

Boehringer Ingelheim International

H Lundbeck

Essity Hygiene and Health

Sandvik Hyperion

Work highlights

  • Successfully advised Unilever on a patent application for an anti-dandruff hair product that was objected to based on novelty of the invention.
  • Successfully advised Polybion, a domestic biomaterial start-up, by performing FTO’s and patentability analyses, results that helped the client demonstrate its viability to obtain funding from a Swiss venture capital firm.
  • Represented Boehringer Ingelheim Internationa in constitutional appeals against the decision of the Patent Office to not publish four of the client’s patents in the Drugs Gazette on the basis that second medical uses do not constitute medicaments.

Hogan Lovells

Hogan Lovells‘ intellectual property practice in Mexico has experience advising clients on trade marks, copyright and patents, designs and utility models, the protection of trade secrets, and domain name prosecution and litigation, as well as the negotiation of contracts and transactions involving intellectual property rights. The team is led by Bernardo Herrerías who represents Mexican and foreign clients on patents and in litigation, as well as managing the maintenance of IP portfolios for clients from the pharmaceuticals, consumer goods, beauty, technology, computing, publishing, music, and food and beverage industries. Herrerías is supported by a strong line of key senior associates including: Edgar Mata (‘a pleasure to work with, and provides practical solutions’), who actively advises clients on the best strategies to secure and protect their intellectual property rights; José Armando Casillas, who has over 15 years’ experienced advising on IP, media, and technology matters, with a particular focus on patents, trade marks, and copyright prosecution and litigation; and Valentina Schmid who advises on trade mark, trade name, domain name and unfair competition issues, and has particular experience of trade mark portfolio management, especially for international clients from the consumer goods sector.

Practice head(s):

Bernardo Herrerías Franco

Testimonials

‘Responsive and creative.

‘Edgar Mata is a pleasure to work with, and provides practical solutions.

Key clients

Walmart Apollo

Mars Incorporated

Duracell US Operations

Anagram International – Convertidora Industrial – Convergram

HP / Hewlett Packard Enterprise

Rich Products Corporation

Vorwerk

Brother International Corporation

House of Fuller

Dart Industries

Caterpillar

Work highlights

  • Advised MediaMonks Mexico on advertising and production projects in Mexico, and coordinated consultancy in Central and Latin America.
  • Advised Schering-Plough on trade mark and unfair competition infringement actions, and invalidation actions against famous and well-known trade marks.

TMI Abogados

TMI Abogados has an excellent reputation and is an established player in the intellectual property sector, well regarded for its innovative approach on trade marks, copyright, patents, trade secrets, unfair competition, domain names, arbitration, and life sciences, as well as its deep experience in prosecution and litigation. The team is co-led by Kiyoshi Tsuru, a highly regarded practitioner who is particularly appreciated for his negotiation skills and ability to handle complex litigation, as well as his experience across the full spectrum of IP matters; Rodolfo Rangel, who specialises in administrative and constitutional litigation and deals with cross-border trade mark franchising/licensing, along with unfair competition cases in the US, Latin America and Europe; and Irely Aquique, who also has a strong focus on administrative litigation, particularly concerning trade marks, patents, unfair competition and copyright. Senior associate Deyannir Solorio provides key support regarding entertainment matters, copyright, trade marks, licensing deals and anti-counterfeiting.

Practice head(s):

Kiyoshi Tsuru; Rodolfo Rangel; Irely Aquique;

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

Hailed for its ‘amazing team of experts with a deep understanding of complex topics in intellectual property’, Bello, Gallardo, Bonequi y García, S.C.'s practice is experienced in trade marks, copyrights, patents, litigation and compliance. The practice is hailed for being ‘extremely competent and focused on fully understanding the industry in which their clients operate in order to issue global opinions, taking into consideration all determining factors in the industry'. Moreover, its lawyers 'are very well trained and constantly updated, allowing them to offer highly technical and up-to-date legal opinions'. The practice is led by ‘outstanding lawyer' Jonathan Rangel, who 'knows the field' and provides 'solid advice to tackle IP challenges, from patents, trademarks and other type of protective rights'. Key support is provided by associate practice director Lilia Aguilar, who focuses on advising national and foreign clients on the protection and maintenance of their brands, patents, copyright, and other intellectual property assets. Senior associate Juan Carlos Salazar is also integral to the team, undertaking IP advisory and counselling, trade mark litigation, domain name disputes and copyright.

Practice head(s):

Jonathan Rangel; Lilia Aguilar

Testimonials

‘It’s an amazing team of experts with deep understanding of complex topics in intellectual property.

‘Jonathan Rangel an outstanding lawyer, who knows the field, with solid advice to tackle IP challenges, from patents, trademarks and other type of protective rights.

‘They have a specialised and technical practice, they always find the best option or options, facilitating decision making. They have incorporated the use of technology to be at the forefront and were able to face the challenges presented by the pandemic. The administrative team adapts to the needs of its clients, especially in the area of billing, always ready to resolve issues no matter how small. They are adaptable and resilient, that is, they are constantly looking for ways to innovate in consulting, attention, dispute resolution, a situation that does not happen with other firms that remain attached to the formula that has always served them well.

‘They are extremely competent and focus on fully understanding the industry in which their clients operate in order to issue global opinions, taking into consideration all determining factors in the industry. They are very well trained and constantly updated, allowing them to offer highly technical and up-to-date legal opinions. They always seek a permanent approach with clients to understand their needs.

‘Jonathan Rangel Lora- Partner stands out, hee is passionate about law and especially Intellectual Property, always providing innovative solutions that challenge his other peers to stay active and updated, always providing the best solutions and on many occasions the most beneficial in terms of costs.

‘Bello, Gallardo has a recent practice in IP. It allowed it to choose professionals who are highly knowledgeable and motivated.

‘I work with Jonathan Rangel whom I’ve followed from his previous firm. Jonathan is knowledgeable and intelligent. He understands the big picture fast and is able to see the pitfalls if any. He is motivated to build longstanding relationships with his clients.

‘BGBG’s PI team is always up-to-date and their inquiries are as comprehensive as possible with all legal actions available. They are always willing to answer your questions.

‘Jonathan Rangel has great knowledge of the matter and his ability to resolve complicated litigation with solid legal strategies.

‘Bello, Gallardo, Bonequi y Garcia has the necessary knowledge and experience to provide us with a high-quality service in specialized advice on intellectual property rights in your region, following a legal fee model seeking a long-term relationship. They celebrated their 20th birthday in 2021 and started the year off on the right foot, promoting four lawyers to the partnership in the corporate, litigation, intellectual property, and telecommunications and media departments.

‘With lawyers specializing in intellectual property, focused on the practice of advising national and foreign clients, the office has a very close team of the highest quality, which constantly anticipates our needs as clients and provides us with a holistic vision of possible solutions. Partner Jonathan Rangel is very diligent, quick in his responses and solutions to our cases, flexible and easy workflow maner and reciprocity. I recommend Jonathan and the team of Bello, Gallardo, Bonequi and Garcia with the certainty that the work will be done with excellence.

‘Very responsive, excellent analysis and representation.

‘Jonathan Rangel has been excellent to work with. He is very responsive and provides excellent analysis and representation.

‘The BGBG Intellectual Property Area has excellent personalized treatment. They are fast, proactive and professional. I wouldn’t know how to compare it with other firms, because I’ve been working with BGBG for a long time, and I’m not going to move from there. They have contacts in all the countries where I have needed advice because I have an international brand.

‘They are kind, fast, professional, proactive, they look for solutions, they make recommendations, they always have an answer, they are knowledgeable. Jonathan Rangel and Juan Carlos Salazar.

‘Jonathan and his team and very approachable and excellent to work with. They provide timely updates.

‘Jonathan Rangel is very approachable and always willing to assist, even at short notice.

‘Mr.Jonathan Rangel with whom I have been working in relation to our client’s trademark cases in Mexico. He is sincere to respond to our inquiries. He is also very frank and trustful all the matters between client and agent.’

‘BGBG has helped our clients in Mexico IP and Brazil patent matters, showing their strong and reliable cross-border connections. The firm has successfully obtained the letter patent for patent cases that have been pending for at least 10 years. They are very responsive and usually get back to us within a day. The members are nice and helpful, and could answer timely to our clients’ complex inquiries. They put effort into utilizing technology and maintain a social media presence for promoting IP. They are quick to respond and always remind us in time for approaching deadlines.

‘I work with BGBG’s Head of IP, Jonathan Rangel Lora. He is professional and attends to details. He has provided excellent advice and workaround solutions for our client when the client is unable to provide some of the evidence or information during patent prosecution.

Key clients

Hisense Group Holdings

Thema America

Alsea

Toyoda Van Moppes

Livelong Pet Nutrition

Jansport Apparel

Promoción Y Operación

Hispasat

Korea United Pharm.

Gea Group Aktiengesellschaft

The North Face Apparel

Kipling Apparel

Icon Health & Fitness

Dufry Ag

The Swatch

Omega

Kaeser Kompressoren

Qualitas Compañia De Seguros

Remarkable

Belvo Technologies

Vf Corporation

Marketing And Media Gopharma

Aon Mexico Business Support

Engencap Holding

Datahome

Universidad Latinoamericana

Ole Distribution

Work highlights

  • Advised Carnet on negotiations to grant a trade mark letter of consent to a major European car manufacturer.
  • Successfully represented Hisense in a domain name dispute with WIPO to stop online infringing activities against one of the top TV manufacturers in the country.
  • Advised Livelong Pet Nutrition on the negotiation of a multi-jurisdiction distribution agreement and trade mark protection camping in Asia and Europe.

González Calvillo, SC

González Calvillo's intellectual property practice group is sought out by clients for its profound knowledge of trade mark infringement and litigation matters, as well as for its advice on trademark portfolio management and prosecution, and patent litigation. The team is co-led by Pablo Hooper, who has a particularly strong profile for his activity in the franchise segment, as well as for his experience in intellectual property and specialisation in IP transactional work. Alberto Pliego, who was raised to the partnership in January 2022, focuses on advising domestic and foreign companies on trade marks, copyright, litigation, franchising, licensing and distribution. Also noted and an integral member of the practice, experienced senior associate Lirio Salgado directs the department's patents area.

Practice head(s):

Pablo Hooper; Alberto Pliego

Key clients

Accor

Buenbit

Cloud Kitchens

Crumbl Cookies

Flexsteel

Harcourts

Jersey Mike’s

Margaritaville

Mary Browns

Rappi

Sight Diagnostics UK

Thor Urbana

Work highlights

  • Advised Jersey Mike’s on its franchise modelin relation to a possible entrance into the Mexican market, as well as on the review and updating of  all franchise related documents and other IP matters required by the business model.  
  • Advised Crumble 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

Goodrich, Riquelme y Asociados has broad experience in intellectual property matters, fielding a  strong team that provides support to clients – notably from the pharmaceutical, entertainment, consumer goods and hospitality sectors – on infringement actions, trade mark portfolio management, franchises, license agreements and patents. The team is co-led by Enrique Diaz, head of the industrial and intellectual property department; and Guillermo Sosa, who is responsible for the department’s litigation and dispute resolution caseload before all government authorities including the Mexican Patent and Trademark Office. Younger partner Julio Cesar Prieto has a full spectrum IP practice covering trade marks, patents, copyright, franchising, data and image protection and branding, among other areas. Key associate Natalia Merino handles trade mark and copyright consulting, particularly searching advice, prosecution matters, licensing and assignments of trade mark and copyright, and IP due diligence for M&A operations.

Practice head(s):

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

Key clients

Google

Sony Interactive

Samsung Electronics

Crayola Properties

Ecolab

Master League

LG

FBD International

Gorilla Glue

Newell Brands

Work highlights

  • Advised Google on the successful declaration of a famous trade mark by MPTO in México.  
  • Advised Grupo Restaurantero Dinar on obtaining the exclusive franchise of Fogo de Chao in Mexico.  
  • Advised Master League on the negotiation and materializing of e-sports tournament videogames.

Iberbrand S.C.

IP boutique Iberbrand S.C. remains a notable force in the market and is praised by clients for being a ‘team of the highest quality and fast in their responses, a pleasure to work with!’ Highly experienced in industrial and intellectual property matters, the practice advises clients on the full spectrum on trade mark and patent applications and prosecution, copyright, litigation, regulatory law and franchises. The team is co-led by Diego Rossi who focuses on trade mark enforcement, infringements, patents and franchises; Gilberto Martinez, who specialises in trade mark and copyright matters; and Ana Vargas who heads the litigation department. Also a key practitioner, Francisco Capetillo Traeger has over 25 years in the sector and is regarded as a ‘highly knowledgeable and service-oriented attorney who promptly provides clear answers to any and all queries'.

Practice head(s):

Diego G Rossi; Gilberto Martínez; Ana Vargas

Testimonials

‘Francisco Capetillo Traeger is a highly knowledgeable and service-oriented attorney who promptly provides clear answers to any and all queries. A pleasure to work with!

‘Honestly, it is a team of the highest quality,  fast in their responses and reasonable prices. We have worked with them for many years and we are more than satisfied, we are aware of the importance given to diversity matters, for example, one of their partners is a woman, as are some of the most important lawyers in the firm. They handled in a very professional manner, taking care of many details, which makes it very comfortable to work with.

‘The three main partners are, in addition to excellent professionals, very good people, they are permanently available for advice and analysis of specific matters, as well as for general matters, their rate are competitive. Without a doubt, Gilberto Martines is a star partner and very well complemented by Diego Gonzalez Rossi and Ana Vargas.

‘Fantastic team. Fantastic work ethic. We love this firm and use them for our largest clients in LATAM.

‘Gilberto Martinez is a powerhouse of knowledge of regional IP laws. His guidance has been invaluable. Ana Vargas is a close second – commercial-minded and pro-active.

‘Francisco Capetillo Traeger is responsive, business oriented, diligent and knows his stuff. He is a pleasure to work with.

‘Iberbrand has a highly trained team that is attentive to customer requirements, advice, procedures and billing is very agile and correct.

‘Iberbrand’s lawyers, in addition to being experts, have unparalleled charisma.

Key clients

Total

ABB Switzerland

Evonik Degussa

Max Mara Fashion Group

Carolina Herrera

Kohler Co

Audi

Ultra- Enterprises

Xiomi

CJ Cheiljedang Corporation

Beijing Didi Infinity Technology and Development

Work highlights

  • Advised Meta Platforms, preparing and filing numerous oppositions against trade marks that are being filed that are confusingly similar marks or identical to Meta Platform’s marks; similarly, advised on trade mark oppositions  to registrations which purpose is to take ownership over the words “METAVERSE” / “METAVERSO” / “META VERSE”.
  • Advised Westinghouse Air Brake Company and MotivePower Industries on patent applications and prosecution for equipment, systems, and digital solutions related to freight rail, transit, mining, industrial and marine technology.
  • Advised Beijing Didi Infinity Technology on patent and design applications and prosecution for its telecommunications technologies.

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

Advising clients drawn from the pharmaceuticals, technology and consumer goods sectors in particular, full-service firm Müggenburg, Gorches y Peñalosa, S.C. (MGPS)'s intellectual property practice has notable strength in trade mark and patent applications and prosecution, as well as on infringement actions. An ‘experienced legal team that provides very complete and practical advice about Mexican law’, the group is jointly led by founding partner Esteban Gorches whose practice is primarily focused on litigation; and deeply experienced of counsel Ana Esther Urquizo who has approaching 30 years' experience in intellectual property, advising clients on the negotiation of various types of contracts, counselling and the protection of trade marks, patents, copyrights and franchises.

Practice head(s):

Esteban C Gorches; Ana Esther Urquizo

Testimonials

‘Müggenburg, Gorches y Peñalosa has an experienced legal team that provides very complete and practical advice about Mexican law. We appreciate the insights and knowledge of the Firm’s attorneys, as well as their responsiveness and their follow-up. The Firm delivers good value and is very efficient.

‘Our primary contact is Ana Esther Urquizo, who specializes in Intellectual Property. We have worked with her on many kinds of trademark matters. Her advice is always thoughtful and succinct, and she is a pleasure to work with.

Ricardo Gómez has assisted Ana in recent years. He also is knowledgeable and responsive about trademarks and other intellectual property.

Santamarina y Steta

Santamarina y Steta's intellectual property practice has significant bench strength and strong transactional experience as well as providing efficient legal structures to protect its clients’ intangible assets and facilitate their exploitation. The team is highly knowledgeable regarding patents, utility models, industrial designs, trade marks, slogans, copyright, plant varieties and litigation, for national and international clients who recognize the practice as being ‘very efficient both in solving problems and in planning strategies in trademarks and patent related matters’. The group is co-led by Jose Pablo Pérez Zea who specialises in franchising and licensing and has experience in patent and trade mark prosecution, copyright, and unfair competition, among other areas; and Daniel Legaspi, who was promoted to partner in January 2022 and focuses primarily on trade marks, licensing and franchising. similarly raised to counsel, Efraín Olmedo is head of the department's litigation practice.

Practice head(s):

José Pablo Pérez ZeaM; Daniel Legaspi

Testimonials

‘The firm is very efficient both in solving problems and in planning strategies in trademarks and patent related matters.

Key clients

Bown-Forman Corporation

Grupo Posadas

Walmart De México

Kimberly Clark Worldwide/Kimberly Clark De México

Bounteous

Takeda

Servicios Condumex

Mexalit Industrial

Wollef Venture Capital

Mondelez De México

Work highlights

  • Advised Nazca (formerly Mountain Nazca) on negotiation with Mountain Partners rgarding the transfer of trade mark rights of “NAZCA VENTURES” and “MOUNTAIN NAZCA” to Mr Hector Sepulveda Reyes Retana, founder of Mountain Nazca (Mexico).
  • Successfully represented Brown Forman Corporation before the Mexican Trademark Office on the defense of its famous trademark El Jimador, against a claim of cultural appropriation.
  • Successfully represented S-MART against an infringement action for the use of a package that the plaintiff claimed reproduced its industrial design.

Von Wobeser y Sierra, SC

With its ‘solid and well-structured team' comprising 'expert lawyers in the matter' who provide 'impeccable advice in intellectual property', Von Wobeser y Sierra, SC remains a steady presence in the Mexican IP market. The group's innovative strategies and approaches, allows it to advise clients on transactional matters, trade mark and patent applications and prosecution, copyright and litigation. The team is led by Patricia Kaim who is known for her expertise in IP litigation and prosecution, infringements and transactional matters. Also a key figure in the practice group, associate Nallely Van Pratt has experience advising international and national corporations on a range of IP matters including distinctive and domain names prosecution, and who is garnering a reputation for ‘providing a novel aspect to trade mark procedures' and 'precise and straight-forward legal advice'.

Practice head(s):

Patricia Kaim

Testimonials

‘Von Wobeser y Sierra provides very immediate and effective advice. Working with them is a real pleasure, since their recommendations are always the best and most suitable.

‘They are a solid and well-structured team, expert lawyers in the matter and achieve impeccable advice in intellectual property. They demonstrated that they could coordinate with our office in New York. They are flexible to work with other teams.

‘The team consists of variety of talented lawyers. They are able to handle wide range of legal services.

‘Nallely Van Pratt provides a novel aspect to trademark procedures, she is always willing to add benefits for clients, strategically adapting responses to their needs. Great professional, with a very global vision of the practice. A pleasure to work with.

‘Ms. Nallely van Pratt always provide me with precise and straight-forward legal advice.

Key clients

AB InBev / Grupo Modelo

Mayacert

The Procter & Gamble Company

Talent Resources Values

Jenny´s Rose

Effem México

Procesar

Comercializadora Yeap

Work highlights

  • Advised Grupo Modelo on a joint venture with the Canadian software company VSBLTY and the Mexican marketing company Retailigent to develop and install a network of digital media in stores.
  • Advised The Procter & Gamble Company on the protection of the trade dress of its “METAMUCIL” trade mark.
  • Assisted Effem México obtain the trade mark application “TURIN MAITRE CHOCOLATIER DEPUSI 1928” and defend its rights from Lindt’s abuse of industrial property rights.

BGAL Asociados

Specialised boutique BGAL Asociados is building its profile in the Mexican IP sector due to its lawyers ‘unparalleled service not only for the promptness of their responses but also for the accuracy of their advice'. With experience in negotiating transactional IP matters (such as coexistence, settlement and sponsorship agreements, or the acquisition of intangible assets), as well as trade marks, copyrights, licensing and franchising matters, the practice is co-led by Inti Alva, who focuses on IP advisory and related litigation involving trade mark, copyright and patent infringement; Flor Bermúdez who has experience in trade marks, trade dress, designs, copyright, IP related agreements and data protection; and Verónica García who handles patent drafting and prosecution, searches and opinions on patentability, validity, and infringement matters, among others.

Practice head(s):

Inti Alva Espinoza; Flor Bermúdez; Verónica García

Testimonials

‘They are efficient, very professional, flexible and accessible.

‘Inti Alva Flor Bermúdez, great professionals, always updated and efficient.

‘This firm is unique because of its people, who provide an unparalleled service not only for the promptness of their responses but also for the accuracy of their advice. Additionally, everyone at BGAL is fluent in spoken and written English, which is a great advantage when working in a team like mine that is made up of English-speaking people.

Key clients

Biogénesis Bagó de México

Nanotech Innovations Corp

Sistemas Radiópolis

Lincoln Electric Company

Popeyes Louisiana Kitchen

Work highlights

  • Advised Biogénesis Bagó de México on a patent infringement procedure initiated by Warburton technologies concerning the alleged unauthorised use of the patent “OLIGOELEMENTOS”.
  • Advised Nanotech Innovations on a patent application related to nano-engineered coating compositions, with a complex patentability examination that was granted by USPTO.
  • Successfully advised Sistemas Radiópolis on the submission of complaint letters to Facebook and Twitter to terminate several fake accounts using Sistema Radiópolis brands involving famous radio stations brands in Mexico.

C&L Attorneys

A stellar roster of clients turn to C&L Attorneys for its extensive experience in global patent applications, drafting and prosecution, bolstered by its technical expertise regarding pharmaceuticals, biotech, chemicals, technology, consumer products, food and beverages, and medical devices, among other areas. The team is also very active in trademark portfolio management, applications and prosecution, as well as copyright matters in both Mexico and Latin America. The practice is co-led by Jorge Leon, who focuses on copyright counseling, copyright and trade mark litigation, domain names, and administrative proceedings and litigation; and Ana Castañeda, head of the patent and trade mark departments and who handles intellectual property counseling, foreign IP protection, and trade mark and patent filings.

Practice head(s):

Jorge León; Ana Castañeda

Testimonials

‘We have been very satisfied with the work provided by C&L over these many years. They are our go-to counsel in Mexico, and in fact, all of Central America as well. Their rates are quite reasonable, and their communications are prompt and helpful.

‘Jorge Leon and Ana Castaneda provide excellent, cost-efficient legal advice. They always respond promptly, and provide clear, concise counsel. They are extremely knowledgeable on Mexican TM and copyright matters.

Key clients

Starbucks Corporation

Teva Pharmaceutical Industries

Sony Interactive Entertainment

Virgin Enterprises

Sega Games

Chocoladefabriken Lindt & Sprüngli

Estafeta Mexicana

Turtle Wax Inc

TRT Holdings

Bandai Namco Entertainment

Doterra Holdings

Fujitsu

Canali Ireland Limited.

Pirelli

Productos Zam-Fre

RAD Power Bikes

Shop Vac USA

Industrias San Miguel

Work highlights

  • Advised Starbucks Corporation on several matters, including the management of the entire trade mark portfolio in Mexico for all the companies in the Starbucks group, along with trade mark applications and prosecution, infringements, and handling the design portfolio, among other matters.
  • Advised Teva Pharmaceutical Industries regarding its trade mark portfolio in Mexico and other Latin American countries, providing advice on matters regarding registrability and risk of use, the filing and prosecution of new trade mark applications, oppositions, cancellation and infringement actions.
  • Advised Kores Holding ZUG on handling ‘KORES’ industrial design portfolio in Mexico through the drafting, prosecution and response to official actions – particularly regarding new design applications and maintenance of its IP Portfolio.

Calderón & De La Sierra

Intellecutal property boutique Calderón & De La Sierra houses a very respected practice, which has weight across an array of IP matters, including contentious and non-contentious patent, trade mark, and copyright cases, as well as demonstrating strong expertise in associated areas such as regulation and data protection. An experienced market figure and founding partner of the firm, Carlos Perez De La Sierra heads a well-rounded team comprising: Alberto Huerta Bleck, a well known practitioner who is strongly 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.

Practice head(s):

Carlos Pérez De La Sierra

ClarkeModet México

ClarkeModet México is the local office of a multinational operation that now boasts a presence in 10 countries. Well regarded by clients since the 'leadership and strength of the team allows them to understand needs and deliver tailored-made solutions’, the practice group is highly experienced in patent filings, searches, applications, infringements and prosecution, as well as in trade mark portfolio management, applications, oppositions and prosecution. Key individuals in the practice include: Lorena Rodríguez, who has extensive experience in blockchain, technological transformation and operational efficiency projects; Angelica Pardavell, who focuses on industrial property and the development of strategies for technology protection through the differing IP categories (such as patent, industrial design, utility model and plant variety); Tania López, who undertakes patent applications - mainly in technologies related to life sciences; trade mark expert Fernando Escudero; and Claudia Márquez who is experienced in patent and trade mark prosecution.

Practice head(s):

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

Testimonials

‘Clarke was the company with the service portfolio that best suited our requirements, it was even the only one that helped us identify opportunities that we had not considered.

‘The leadership and strength of the team allows them to understand needs and deliver tailored-made solutions.  I had the opportunity to interview two offices with similar capabilities and we opted for a service that would work with us for the objectives we considered important, with a clear guide that supports us in structuring our own model.

Clarke Modet is a firm that understands client’s needs very well. They have the flexibility to welcome customer ideas and take different approaches. The experience of the staff in international negotiations (USMCA, FTA MX-EU, etc), especially Nahanny Canal, add enormous value to the company’s capabilities.

‘Jorge Carpinteyro helped us identify opportunities for development/exploitation that we had not considered. Patricia Conelly was very helpful in turning the idea into a document to present to IMPI.

‘The ability to respond and understand, it seems to me that this makes the difference in the relationship, our issue is very particular and highly complex, so the willingness to facilitate and understand as well as their support in strengthening our internal skills is essential. Lorena Rodríguez, Nahanny Canal, Dina Chaves and Luis Andrés González are the lawyers with whom we have work on different stages of the current project.

‘Nahanny Canal, without wanting to sound informal or prosaic, her plus is an IQ well above average. A person with a remarkable innate capacity, complemented with great experience in the field of intellectual property. Her direct participation in the intellectual property chapters of various international treaties makes her one of the most capable professionals to serve the interests of the international pharmaceutical industry in Mexico. Her international vision differentiates her from the rest of the professionals in the country.

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

Full service powerhouse Creel, García-Cuéllar, Aiza y Enríquez, S.C. is gradually establishing the relevance of its the intellectual property practice, which has already built a fine reputation not only for its experience in protecting client’s intangible assets and trade mark, patent and copyright applications, prosecution and registration, but especially for its advice in the context of M&As, joint ventures and other transactional scenarios for both local and international clients; indeed some go as far as to suggest that ‘working with Creel is a guarantee in obtaining favourable results for companies. The practice is led by counsel Gaby Finkel who has experience drafting licensing, merchandising, distribution, franchise and service agreements (among others), as well as entertainment rights, trade marks and copy right, and who is heralded as ‘extremely knowledgeable, professional … level-headed and thoughtful‘. Key support comes from associates Dafne Méndez (‘prompt and accurate attention‘) and Sofía Castañón (a ‘great attorney‘).

Practice head(s):

Gaby Finkel

Testimonials

‘Lawyers are updated on current issues, their response being accurate and timely.’

‘What makes them stand out is their prompt attention and responses, which reflects that  organization and coordination are very well managed.’

‘We turn to Creel for advice and execution of certain procedures related to Intellectual Property issues the team is experienced and up to date,  knowledgable on the applicable legislation  in Mexico and internationally. Working with Creel is a guarantee in obtaining favourable results for companies.’

‘In the case of Intellectual Property, we have always received prompt and accurate attention from  Gaby Finkel’s team, specifically from Dafne Méndez Pérez in projects that we have in progress today.’

‘The team at Creel is always prepared and very knowledgeable. They have helped us navigate through some very challenging times in Mexico, whether that is with the government’s processes or other companies. They are extremely professional and present different alternatives when strategizing. The way they approach matters, small and large, is better than most firms I have dealt with, globally.’

‘Some of the great people in this department are Gabry Finkel Singer and Sofía Castañón Rivera, they are extremely knowledgeable, professional and have managed my company through some tough negotiations. They are level-headed and thoughtful while also knowing how to prevail over others. Overall, two great attorneys.’

‘The team is attentive, responsible and with fast and assertive communication. With each question, they have provided us with practical solutions as well as advice and support to carry them out. In terms of technology, they are at the forefront with resources that have worked very well for us and have helped us meet our goals. They also have very diverse teams, with different profiles that have helped us with inclusive perspectives.’

‘Attention to the project and attention to detail. Their response is always punctual and favorable. Gaby Finkel and Sofía Castañon have been very helpful and understanding. They have guided us through complex processes with great patience. Also, they get very deeply involved with our work, giving us constant recommendations on how to improve.’

Key clients

Vista Oil & Gas

WWF

Violetta

Riot Games

Gaia Pop Up Design

Marcandita

Caso Sezáne

Incode Technologies

Work highlights

  • Advised Riot Games on the planning, development and implementation of new strategies for the expansion of its business and that of its most relevant brand, “League of Legends”, to allow the client to venture into new industries such as clothing and accessories, consumer products and entertainment content.
  • Advised Grupo Sezáne during a controversy alleging cultural misappropriation which trended in social media, since the relevant authority for Indigenous Communities -the National Institute of Indigenous Peoples (INPI)- issued an official warning letter condemning any disrespectful or cultural misappropriation practices.
  • Advised Vista Oil & Gas on legal strategy to prepare and submit 85 trade mark registration applications of which 61 have been granted.

Cuesta Campos y Asociados S.C.

Full-service law firm Cuesta Campos y Asociados S.C. has a notable track record for advising important industry players on the full spectrum of intellectual property matters; during 2021 the team was especially active for clients from the pharmaceutical, personal care, retail, and food and beverage industries. The practice is led by Mauricio Chozas who is regarded as ‘very knowledgable and capable, as well as approachable’ and is highly experienced in trade mark portfolio management, as well as trade mark and patent applications, prosecution and litigation, and copyrights, license agreement and franchising matters. Key associate Lorena Pinto provides additional support and handles the full range of trade mark, patent and copyright matters.

Practice head(s):

Mauricio Chozas

Testimonials

‘Accessible and prompt response at all times; in addition to constant reporting of progress on the matter, and with trained personnel.i

‘Very knowledgable and capable, as well as approacheable.

‘Very efficient, they try to be at the forefront in all aspects, their alerts are very timely.

‘Efficiency, serious, fair prices and good quality.

Key clients

Backscatter

Mortons

Sinergy Flavors

Industrias Oxan

Armadrill

PF$360

Royal Prestige (HyCite)

Cloe

Nivada

Mumuso Co

Work highlights

  • Advised manufacturing company Industrias Oxan on the drafting and filing of patent applications that would be used in connection with PEMEX (Petroleos Mexicanos)’ oil operations.
  • Advised global spirits company Phusion Projects on the design and preparation of files before the Mexican Trademark Office, requesting the registration of a trade mark license agreement by which our client allows a third party the use of their trade marks in Mexico.
  • Advised Armadrill, a company specialised in drilling deep wells for the extraction of drinking water, on the review of industrial property agreements to avoid breaches in connection with trade secrets and licensing prohibitions.

Jáuregui y Del Valle, S.C.

Advising clients mainly in the pharma, technology, telecommunications and consumer goods industries on trade marks, copyright and patent prosecution and litigation, the practice at Jáuregui y Del Valle, S.C. is especially sought out by clients for its expertise in counterfeit actions, seizures of merchandise and handling of infringement matters. The team is led by Israel Ledesma Meléndez, who is well known for representing international and national companies before Mexican authorities and has particular expertise in administrative, civil and criminal litigation – specifically in cancellation, infringement, lapse and enforcement actions related to trade marks, patents, plant varieties and copyright. Associate Martha Celis is also experienced in litigation procedures, mainly before the Mexican Institute of Industrial Property, concerning all areas of intellectual property and including copyright, trade marks, patents and unfair competition.

Practice head(s):

Israel Ledesma Meléndez

Testimonials

‘Jáuregui y Del Valle has a strong group of lawyers, prepared to provide advice as well as a solution to any problem raised in intellectual property matters, with disposition and personalised attention that provides an adequate follow-up on matters, with an appropriate cost and response times.

‘Israel Ledesma preparation, willingness to be able to establish communication, attention to any matter, great disposition, the options he provides to solve issues that are raised, are qualities to be highlighted.

Key clients

Lego Iuris

Adidas

Richemont Group (Cartier, Montblanc, Etc.)

Chloe

Pfizer

Gilead Sciences

Joi Canadian Stores

Genomma Lab Internacional

Fedex Mexico

Chep – A Brambles Company

Chep Technology

Work highlights

  • Advised Lego Juris on the successful seizure of approximately 80,000 games that had arrived in four containers from China, with counterfeit toys, by filing trade mark infringement actions with preliminary measures and coordinating execution of injunctions with the Mexican Institute of Industrial Property.
  • Advised Apotex in filing of the different trademarks in 20 different LATAM countries, coordinating with counsels in each country.
  • Advised Adidas on an investigation of different companies regarding the distinctive and copyrighted design of one of Adidas’ sneakers models, and identified a competitor who was manufacturing and distributing products with identical characteristics, therefore a complaint of copyright and unfair competition was filed before the Mexican Institute of Industrial Property (IMPI).

Méndez + Cortés S.C.

IP boutique Méndez + Cortés S.C. impresses with its ‘outstanding quality, wonderful responsiveness, exceptional reliability, and fair and transparent prices’. The firm has experience handling matters including trade mark prosecution, opposition actions, renewals and IP litigation; as well as patent prosecution and copyright issues. It represents clients from a broad range of sectors, particularly automotive, retail, pharmaceutical and social media. The team is co-led by former ANADE President, Jose Juan Mendez, who is acclaimed by clients for his ‘excellence, immense experience, legal brilliance, strategic strength and impressive powers of persuasion’, and focuses on matters concerning trade marks, patents, trade secrets, e-commerce, copyright, unfair competition, franchising, licensing, domain names and associated litigation; Emmanuel G Cortés, who specialises in patents, trade secrets and marks, domain names, licensing, sanitary law and litigation; and litigation specialist Oscar Hurtado Ramirez who handles contentious matters related to trade marks, copyrights and patents at all levels.

Practice head(s):

Jose Juan Mendez Cortes; Emmanuel G Cortes; Oscar Hurtado Ramirez

Testimonials

‘We have been working with this law firm for almost 20 years. We appreciate them as one of the best IP law firms in Mexico, especially thanks to their outstanding quality, wonderful responsiveness, exceptional reliability, and fair and transparent prices.

‘José Juan Méndez is for us the top IP lawyer in Mexico par excellence with his immense experience, legal brilliance, strategic strength and impressive powers of persuasion. In addition, he is excellently supported by his younger partner Emmanuel Cortés. The two form a virtually unbeatable IP team.

‘MendezCortes, SA has an unbeatable team. All team members are perfectly coordinated and are experts in their functions. The work is coordinated through an account leader, who handles all correspondence in a fluid, fast, orderly and efficient manner, and the rest of the lawyers carry out their functions immediately, so that all the matters are perfectly coordinated without loss of information and arranged in detail. Billing is fast and clear. MendezCortes, SA uses the latest technologies that allow skillful, fast and efficient remote work.

‘All lawyers are experts in their area and they show it by providing advice and solutions in a fast, efficient and favorable way for the client. We highlight José Juan Mendez as an outstanding partner. José Juan coordinates all the matters that come into his firm with his team, always treating them with the utmost detail and personalization, taking care of each one of the tasks entrusted to him from the beginning to the end.

‘In our opinion, this is the best IP Firm in Mexico without discussion. The team is excellent and has a deep knowledge on the subject.

Key clients

Volkswagen De Mexico

Glenmark Pharmaceuticals

Blue Marble Technologies

Beaver-Visitec International

Quimica Goncal

Mezcal Amores

Frida Experience

Space Exploration Technologies

Fundación Para La Investigación Biomedica Del Hospital Universitario Ramon y Cajal

OMX

Work highlights

  • Advised Volkswagen de Mexico on the protection of an invention worldwide, starting with the drafting of the specifications and claims and filing the application strategically, in order to comply with the requirements and criteria of each jurisdiction.    
  • Advised Space Exploration Technologies on the cancellation actions initiated against the “STARLINK” trade mark.
  • Advised  BFY Brands regarding a cancellation action against the trade mark “POP CORNER” allowing its client to register its trade mark “POPCORNERS”.

Mijares, Angoitia, Cortés y Fuentes S.C.

Mijares, Angoitia, Cortés y Fuentes S.C.  ‘provides an excellent service and differs from other offices in personalised attention to its clients, immediate attention and punctual follow-up of the matters assigned to it‘. The firm’s full-service intellectual property practice impresses clients for having ‘highly trained and specialised personnel in the different branches of industrial and intellectual property‘, and has a demonstrable and impressive track record in litigation regarding patents, trade marks, copyright, image rights, criminal matters concerning IP rights (especially anti-counterfeiting and anti-piracy), industrial secrets and copyright infringement. Key practitioner Alejandro Díazstands out for his capacity for analysis, his professionalism, his spirit of service, his knowledge of the subject and above all as someone who treats the matter as his own’; he focuses on trade marks, copyright, IP litigation, privacy and data protection, domain-name dispute resolution, information and technology law, advertising regulatory issues, and licensing and franchising among other matters. Key support is provided by Claudia Gutiérrez who handles trade marks, patents and personal data protection, along with IT and regulatory matters.

Practice head(s):

Alejandro Díaz

Testimonials

‘The Mijares office team has highly trained and specialised personnel in the different branches of industrial and intellectual property, the office provides an excellent service and differs from other offices in personalised attention to its clients, immediate attention and punctual follow-up of the matters assigned to it. In terms of billing, it is clear, understandable and precise, corresponding to what is quoted in each specific case, its technology is state-of-the-art and in accordance with the required needs.

‘The lawyers with whom we deal have great experience in the matter, excellent treatment and personalised attention from the partners.

‘They stand out for their theoretical and practical knowledge.

‘Immediate response and control of matters.

‘The firm Mijares, Angoitia, Cortés y Fuentes, SC has an advanced and competent area of intellectual property. It is a real luxury to be able to work hand in hand with the intellectual property lawyers of the firm, they are very professional, always willing to help and at any time they can resolve specific doubts, having them work with you on any project gives you a lot of peace of mind.

‘Alejandro Díaz Morales, stands out for his capacity for analysis, his professionalism, his spirit of service, his knowledge of the subject and above all as someone who, in my opinion, treats the matter as his own and this empathy helps a lot and gives you a lot of confidence.

Key clients

Grupo Televisa

Softbank

Riverstone Holdings

Shopify

DoorDash

Molson Coors

Entertainment One (eOne)

Mercado Libre

Work highlights

  • Advised Televisa -pursuant to its content and media assets being combined with Univision- on the negotiation of a trade mark license agreement, including designing a strategy directed to protect and maintain the Declaration of Fame of the famous trademark status of “Televisa” and allowing future filings and registrations of trade marks comprising the famous mark Televisa.
  • Advised SoftBank Latin America Fund on the IP aspects of its Series B financing round for $225m raised by Merama, a start-up that assists with the consolidation of e-commerce businesses in Latin America, with sales on Amazon and Mercado Libre.
  • Advised Canadian multinational e-commerce company, Shopify, on the protection and enforcement of its intellectual property assets in Mexico.

Solórzano Linaldi

Formerly the IP department at legacy firm SOLCARGO, independent specialist boutique Solórzano Linaldi continues to gain strength and market position, particularly due to its expertise regarding digital advertising and technology platforms, along with its legal advice on intellectual property matters to the entertainment industry. It is also noted for its patent applications and prosecution for pharmaceutical companies, among others. The practice is led by Guillermo Solórzano  who has vast experience in intellectual property in the pharma industry, from trade mark applications and prosecution to all related patent matters. At associate level, key support is provided by Miriam Orozco Soria, who specialises in patent applications and prosecution, technology transfer, licensing, trade secrets, and all relevant matters related to cinematographic works; and Eréndira Frias, who advises on patent and trade mark matters, along with handling antitrust and administrative litigation.

Practice head(s):

Guillermo Solórzano

Testimonials

‘Solorzano Linaldi Law Firm has an excellent service in Intellectual Property.

‘They have excellent service, in addition to being experts in the field of intellectual property, as well as in litigation, to highlight some lawyers are: Guillermo Solórzano, Luis Lopez Linaldi, Lidia Velazquez Erendira, Alan Osorio, Christian Parra and Miriam Orozco.

Key clients

International Maize and Wheat Improvement Center

Invicta Films

Neology

Glenmark Pharmaceuticals

Sun Pharma de México

Investigación Farmacéutica

Kanape Media Group

Gabriel Orozco Félix

Vert Pharma

Asofarma de México

Outdoor México Servicios Publicitarios

Sum Services

Franco Escamilla

Protein

Entravision Communications Corporation

MediaMath

Kontextua Mexico (Cisneros Interactive)

Cinema Máquina

Vive Science 314

Work highlights

  • Advised Kontextua México, (Cisneros Interactive) on the analysis of the implications of the Advertising Contracting Law on its business operations as a technology and media platform, as a media representative, and as the owner of intellectual property rights related to the marketing and sale of digital advertising spaces.
  • Advised Mediamath on the implications of the Advertising Contracting Law on its business operations as a technology platform, providing DSP services through its own technology to several advertisers worldwide, including in Mexico.
  • Advised Asofarma de México on several administrative appeals aimed at annulling the criteria set by the Mexican Industrial Property Industry (IMPI) that anyone seeking the annulment of a drug patent through an administrative annulment proceeding, must evidence a “legal interest” by being the holder of a marketing authorisation.

Chevez Ruiz Zamarripa

Chevez Ruiz Zamarripa is praised by clients for fielding a team that is ‘well-versed, practical, quick to respond, receptive to feedback, and just overall amazing people to work with’. With experience in trade mark registration and prosecution, infringements, licensing and litigation, the team is led by Gloria Niembro, who is appreciated for ‘always going the extra mile in all projects’; her practice focuses on intellectual property consultancy and litigation, including trade marks, copyright and trade secrets, as well as expertise in enforcing intellectual property rights before the courts.

Practice head(s):

Gloria Niembro; Manuel Sainz

Testimonials

‘They are well-versed, practical, quick to respond, receptive to feedback, and just overall amazing people to work with. I highly recommend them.

‘Associate attorney Gloria Niembro has a proven track record in the international field, having practiced IP in the US, which is very rare in other law firms in the country.

‘Communication and knowledge is what makes them unique, there is a perfect synchronization that meets all clients needs.

‘Gloria Niembro always goes the extra mile in all projects, I am sure that the management and leadership of her area in the firm will only bear great fruit.

‘The team is extremely thorough in ensuring the accuracy of all of their client details. They assess a problem at all angles to advocate for a client.

‘I find that the team shows a very strong commitment defending client’s interests. We have been able to talk with them from our perspective of a company led by LGBT+ members and they have shown great openness to understand our personal needs from the professional trench. They are a team that generates trust.

‘The service is extraordinary as well as the level of personalization and attention to detail.

‘The quality of the service, always with promptness, clarity in the explanations and a professional and respectful treatment. Unlike other firms, the head of this team is a woman, which is very nice to see in the PI guild.

‘Their expertise and experience in the field is the best. Also they are very open and transparent when it comes to communicate risks, pros and cons of any specific project.

‘The team at Chevez is knowledgeable and the turnaround is extremely fast.

‘Gloria Niembro is an expert on trademark law in Mexico. She also is creative and practical. She can find a creative solution to the most thorny issues, on both the prosecution and enforcement fronts. She also understands well the inner workings of INPI. And, her communications are clear and easy to digest quickly. I would highly recommend her.’

‘The difference has been Gloria Niembro. She is a leader who has known how to communicate with her team, who always looks for the best proposal according to the case and always arrives with different approaches. She has always been at the forefront and updated on all issues.

‘They will look at a matter from different angles and advocate to ensure the best possible outcome for a client.

‘Gloria and Ana Sofia were my POCs and I can attest of their hard work and dedication to their clients. I really valued their expertise and also their practical approach to solving issues. I enjoy working with law firms that push the limit and truly guide clients to find the most creative solutions to any matter.

Key clients

Krypto Spirits

Individual entrepreneurs

Flink

Work highlights

  • Advised Krypto Spirits regaring the authorisations required for operating a Tequila business from an IP and regulatory legal standpoint, as well as assessment regarding the importance of securing a trade mark registration both in Mexico and the territories where the tequila will be sold.
  • Advised IT Burgers start-ups in trade marks registrations in Mexico and other jurisdictions from the very earliest stages.
  • Advised digital financial start-up, Flink, on securing the IP key component of the operation’s licensing and work-for-hire agreements that allows the client to have full ownership of IP assets.

ECIJA

ECIJA intellectual property ‘practice is distinguished by the quality of service, it is proactive and agile in its response times'. While advising clients in negotiation regarding technology transfers and franchise agreements, and handling copyright, patent infringement and litigation, the practice is best known and very well regarded for its experience in trade mark matters in relation to IT, media and telecoms, sports, e-sports, fashion and beverage industries. The team is led by Georgina García who has experience in license agreements, transfers, renewals, oppositions and the defence of copyright and trade secrets.

Practice head(s):

Georgina García

Testimonials

‘Undoubtedly personalised attention with in-depth knowledge of intellectual property and corporate law issues, coupled with a quick and timely response, are attributes that differentiate them from other firms along with their determination to find solutions for the needs of their clients.

‘The practice is distinguished by the quality of service, it is proactive and agile in its response times. In addition, as part of an international firm, they have the ability to handle matters in various jurisdictions and in different languages.

‘Undoubtedly, one of the virtues of the firm is the capacity and knowledge of its lawyers, without leaving aside the speed of response, which is unique.

‘Georgina Garcia Gutiérrez-Villalobos is detailed in her questions, proactive and denotes knowledge in her answers in intellectual property matters.

Key clients

Church & Dwight

MediaPro Group

Atlético San Luis Soccer Club

ExpereoWAI Global

Medidores Industriales y Médicos (MIYMSA)

Trafimar Group

HawkersBoicot

Work highlights

  • Appointed by Church & Dwight as its hub law firm for the management of the group’s trade mark portfolio in 16 LatAm countries, with responsibility for more than 1,500 trademarks in the region, including Mexico.
  • Advised Hawkers on its incorporation in Mexico as regards intellectual property matters, specifically in strategies against possible administrative infringements in trade mark matters, as well as in relation to the implementation of its franchising project in the country.
  • Advised Football Club Atletico de San Luis on managing its trade mark portfolio and its IP rights for the manufacturing and commercialization of  varirous merchandising initiatives.

Holland & Knight

Full-service international firm Holland & Knight's merger with Thompson & Knight in August 2021 has strengthened its Mexico IP team (among other practices). The team has experience in trade marks, patents, and copyright; the acquisition, transfer, and licensing of intellectual property rights; administrative procedures and litigation; and trade secrets. The team is led by José Luis Villareal, who advises Mexican and international clients from a wide variety of sectors on complex transactions and litigation proceedings related to intellectual property rights, including trade marks, patents and copyright. On the media side, Octavio Lecona's focus on telecommunications, media and technology, also involves IP matters - particularly copyright issues.

Practice head(s):

José Luis Villareal

Testimonials

‘Extensive knowledge, attention and speed.

‘Excellent service and attention.

Key clients

Universidad Metropolitana de Monterrey

Work highlights

  • Advised Universidad Metropolitana de Monterrey on the planning, design, licensing, negotiation, and contentious proceedings regarding intellectual property assets for the University.

Ibarra, del Paso y Gallego

Ibarra, del Paso y Gallego’s team demonstrates experience in the design, protection, application and maintenance of its clients inventions and distinctive signs, as well as copyright. The team is led by Juan Manuel Alvarez del Castillo, whose practice is focused on strategic planning, portfolio analysis and client counselling with regard to trade marks, patents, copyright, domain names and judicial and administrative proceedings before administrative, civil and criminal authorities.

Practice head(s):

Juan Manuel Álvarez del Castillo

Key clients

The Chemours Company

Altos Hornos de Mexico

Discovery Communications

Qualcomm

World Trade Centers Association

National Football League

Arent Fox

Work highlights

  • Advised The Chemours Company on the IP aspects of the Mexican portion of a multinational M&A entailing the sale of Chemours’ Mining Solutions Business to Czech Republic-based Draslovka Holding.
  • Advised Altos Hornos de Mexico on an administrative patent infringement litigation for a claim regarding an apparent patent violation by a third-party process for comprising aluminum into micrometric dust (for bending and cooling steel).
  • Advised Discovery Communications regarding the new location of its corporate headquarters in New York; the matter included several legal aspects and over 280 trade mark and slogan applications and registrations before the Mexican Trademark Office.

MCOY Abogados

MCOY Abogados is perhaps best known for its capabilities in enforcement and litigation regarding intellectual property matters. The practice specialises in trade marks and provides strategic and technical advice on a range of IP-related matters including commercialization, licensing and advertising. The team is jointly led by partners Alejandro Cárdenas, who focuses on IP litigation, and is also experienced in trade mark prosecution; and Eduardo Miravete, who undertakes administrative litigation, trade mark registrations and IP portfolio management.

Practice head(s):

Eduardo Miravete; Alejandro Cardenas

Sánchez Devanny

Sánchez Devanny is sought out by clients for its experience in intellectual property matters including patent portfolios, clearances, prosecution,  trade mark portfolios management and infringements, and litigation. The team is jointly led by Juan Luis Serrano-Leets , who advises multinational companies on intellectual property matters and is experienced in legal policy management issues in Mexico, the NAFTA region and Latin America; and of counsel Rodrigo Calderón Ponce, who joined the practice from Córdova, Campos & Calderón in May 2021, bringing expertise in patent related matters, particularly as regards the technology segment.

Practice head(s):

Juan Luis Serrano Leets; Rodrigo Calderón Ponce

Key clients

Teva Pharmaceuticals

Ucb Pharmaceuticals

Estee Lauder

Procter & Gamble

Victaulic Company

Exeltis Pharma

Lupin Pharmaceuticals

Universidad De Monterrey

Knight Therapeutics

Subway

Sulfagenix

Skyclimber

Work highlights

  • Advised Sulfagenix on global patent portfolio protection/licensing structures.
  • Advised Control Dinámico on several trade mark litigation cases surrounding applications by Home Depot International for the mark “Home Accents Holiday”.
  • Advised Omya International on the prosecution of several patents in Mexico.