Firms To Watch: Intellectual property

Partners Emilio Torres and Alejandro Hernández head the IP practice of this young Mexican boutique which, since 2019, has specialized in the cannabis industry, assisting players, particularly Canadian companies, looking to come to Mexico under the new legislation, and with a particular focus on litigation.

January 2021 saw the launch of Eljure Legal, founded by renowned IP expert María Teresa Eljure; prior to this, she was a partner at Arochi & Lindner, SC, specialising in IP litigation and advice.
January 2021 witnessed the launch of Eljure Legal, founded by renowned IP expert Maria Teresa Eljure. Prior to this, María Teresa was a partner at Arochi & Lindner, SC, specializing in IP litigation and counseling, and boasting some notable expertise on trademark enforcement and prosecution.
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 specialised boutique ELS - Peñalosa + Donnadieu, bringing together over 20 years of joint experience in all areas of intellectual property.
The founding partners at ELS - Peñalosa y Donnadieu, Jean Yves Peñalosa Sol La Lande and Luis Enrique Donnadieu, departed from Müggenburg, Gorches y Peñalosa, S.C. (MGPS) in 2019 to launch this specialized boutique firm, that brings together over 20 years of joint experience in all areas of intellectual property. Drawing from the expertise of its partners, the firm is particularly strong in litigation and regulatory work.
Emilio Torres and Alejandro Hernández head the IP practice of young Mexican boutique Nerubay Abogados which, since 2019, has specialised in the cannabis industry, assisting players, particularly Canadian companies, looking to come to Mexico under the new legislation, and with a particular focus on litigation.

Intellectual property in Mexico

Arochi & Lindner, SC

Renowned IP powerhouse, Arochi & Lindner, SC remains as one of most respected and recognised names in Latin American intellectual property protection, handling all aspects of the practice, 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, civil and commercial litigation, and corporate and regulatory law. Managing partner, and noted authority on anti-counterfeiting and anti-piracy enforcement, Roberto Arochi heads the very sizable team together with highly-rated patent litigator Heidi Lindner; and patent and copyright specialist Jorge Mier y Concha. The practice's client roster includes IP rights holders from sectors such as information technology, entertainment, food and beverages, pharmaceuticals, automotive, luxury brands and gaming, among other sectors. However, former partner María Teresa Eljure left to establish her own, eponymous boutique in December 2020.

Practice head(s):

Roberto Arochi; Heidi Lindner; Jorge Mier y Concha

Basham, Ringe y Correa, S.C.

Housing one of the largest IP teams in the market, full-service firm Basham, Ringe y Correa, S.C. is a true force to be reckoned with. The seven-partner practice 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. It has also developed a respectable privacy and data protection area over the last few years. The department houses highly experienced practitioners including: patent litigation and data protection specialist, Adolfo Athie; managing partner Eduardo Kleinberg (who leads the trade mark, franchising and licensing practices); Martín Michaus, who focuses on trade mark and domain consulting; Juan Carlos Hernandez, who handles consulting in the trade marks and copyright areas; former director-general of the National Copyright Institute (INDAUTOR), Manuel Guerra Zamorro; and Claudio Ulloa who is both a lawyer and an engineer. Key support comes from partner and skilled litigator Eduardo Castañeda and senior associates Mariana Vargas and Santiago Zubikarai. Recent work highlights saw the firm obtaining a judgment to compensate for the lost patent term in Mexico.

Practice head(s):

Eduardo Kleinberg; Martín Michaus; Adolfo Athié

Testimonials

‘Very fast return with good quality and strong advice. Eduardo Castaneda is always available acting in the sense previously described.’

‘Excellent service and relationship. They get involved in the issues of the company as if they were part of it. You feel confident that everything is being done in the best possible way, especially with Juan Carlos Hernandez Campos, Mariana Vargas and Eduardo Kleinberg.’

‘They have an app that keeps you up to date with the latest laws and regulations. They are up to date.’

‘Juan Carlos Hernandez Campos: Smart and reliable point of contact with sure instinct. Good negotiator and all-out litigator.’

‘In addition, they keep an eye on the costs.’

‘We mainly work with Juan Carlos Hernandez and Mariana Vargas Macias. Juan Carlos has a profound knowledge in all areas concerning trademark law in Mexico. We can highly recommend them both for any kind of trademark work in Mexico.’

‘Very good responsiveness and exceptional project management.’

Key clients

Bayer

Coca-Cola

Goodyear

NFL Properties

Gap

Ralph Lauren

Nowhere

Soho House

All Star

Ferrero

Polyplastics

Michael Kors

Chanel

Barcade

Netflix

Disney

Home Box Office

3D Sports

Mezcal Ojo de Tigre

Destilería y Bodega Abasolo

Velcro

Grupo Nacional Provincial

Zuffa

Novopharm

Kylie Jenner

Citigroup

Work highlights

  • Advised Bayer on the development of a strategy to compensate for the shortening of the patent protection term in Mexico, obtaining a ruing from the Mexican Supreme Court of Justice in an Amparo en Revisión  that patents in Mexico must have at least 17 effective years of protection and that delays at the Patent Office had forced the cilent to seek an extension.
  • Assisted  Goodyear obtain a transfer of the domain llantasgoodyear.com.
  • Assisted Nowhere with the defence of its trademark A Bathing Ape (and related IP from third parties) seeking to take advantage of their lack of registration in Mexico.

OLIVARES

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

Practice head(s):

Sergio L Olivares, Jr.; Antonio Belaunzarán; Luis Schmidt; Gustavo Alcocer; Alejandro Luna

Uhthoff, Gómez Vega & Uhthoff, SC

A market veteran and major institution in the Mexican intellectual property sphere, Uhthoff, Gómez Vega & Uhthoff, SC, is definitely among the “go-to” firms for its prowess in all corporate-related IP advisory matters, as well as franchising, data protection, and patent and trade mark prosecution and litigation. The ‘diverse and extensive’ practice regularly advises a broad roster of clients from the pharmaceutical, telecommunications, technology, media and automotive sectors, and demonstrates a particularly strong focus on life sciences. It includes a significant group of seasoned and accomplished practitioners, including: Eugenio Pérez and senior partner Javier Uhthoff, who specialise in patents; trade mark experts Marcella Bolland and Eryck Castillo; and skilled litigators Saúl Santoyo and Xavier Hadad, who receive praise for being ‘true business partners’. Senior associate José Luis Ramos is an up-and-coming IP litigator and a name to note.

Practice head(s):

Javier Uhthoff; Eugenio Perez

Testimonials

‘Saul Santoyo and Erick Castillo always provide excellent service. They analyse and provide creative strategies considering the specific needs of the client and the global impact.’

‘They have a service attitude and are very responsive. I work especially with the litigation team and they are always willing to find effective and efficient solutions for their clients.’

‘Saul Santoyo and Xavier Hadad have a high level of expertise and are true business partners. They are committed to their clients and their brands, not only as an institution but also in their personal lives’.

‘Their years of experience, knowledge in the practice area, the breadth of services in the practice area, the diverse and extensive number of specialists the firm has, their approachability and the prestige they have in the field stand out.’

Becerril, Coca & Becerril, S.C.

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 sizeable team of lawyers and engineers that includes a number of highly experienced practitioners, notably: veteran IP litigator Juan Carlos Amaro (who leads the trade mark and copyright practice and also oversees the corporate and commercial law practice); and head of the patents and technology practice, Octavio Espejo. Also noted are junior partners Victor Adames (distinctive signs, copyright, domain names and IP licensing); Carlos Hernández (litigation in relation to IP, domain-names, and consumer and regulatory matters); and Mariana González (patents and technology transfer), who is both a lawyer and a chemist; along with Guadalajara office head, IP all-rounder Roberto Durán. Carlos González Cortés, who has a broad IP practice centring on trade marks and copyright, was raised to the partnership in March 2021. However, former director of patents and technology, Héctor Chagoya left the firm to establish (non-legal) IP consultancy Mextrategy in February 2021. 

Practice head(s):

Juan Carlos Amaro; Octavio Espejo

Dumont

An accomplished and longstanding boutique in the IP arena, Dumont, fields a sizable team consisting of lawyers and engineers. It is regularly sought after for its expert advice on patent work (covering filing, prosecution and litigation); trade mark matters (including strategic advice on applications and protection); and regarding copyright and unfair competition matters, where it evidences good capabilities. The practice has good coordination between areas and its lawyers are praised for their ‘excellent business vision’. It is led by managing partner Laura Collada, who is well-versed handling contentious trade mark and patent mandates; Victor Garrido, who heads the patents practice; Christian Thomae, who leads the trade marks team and is also very knowledgeable on copyright matters; and head of litigation, Israel Escobedo.

Practice head(s):

Laura Collada; Victor Garrido; Christian Thomae; Israel Escobedo

Testimonials

‘The service provided is very good, the attention is fast, efficient, complete, and the level of professionalism of the lawyers is excellent.’

‘Laura Collada and Christian Thomae: good predisposition and good treatment with our firm. In addition to the excellent service, I consider that they have an excellent business vision.’

‘All the intellectual property areas of the firm are well coordinated providing accurate information in record time.’

‘The members of the Dumont team have a strategic business vision, which is commensurate with the level of their firm and the services they provide. Laura Collada and Christian Thomae are excellent professionals.’

‘The firm has provided quality service at all times, always prioritising our needs. Their team of professionals is of excellence and they all work very seriously, achieving great results.’

Key clients

Boehringer Ingelheim International

Sulzer Management

Samsung Electronics

Unaliwear

Kraft Foods Group Brands

Unilever

Lutron Technology Company

Sandvik Hyperion

Essity Hygiene and Health Aktiebolag

SZ DJI Technology

Saint-Gobain Isover

Work highlights

  • Appointed to handle a large part of the patent and design portfolio of Kraft Foods Group through an auction process.
  • Successfully represented Simón Eléctrica in an invalidation action concerning an industrial design registration in the field of street lighting.
  • Representing Saint-Gobain Isover in overturning the objection to a patent application on a device for melting glass consisting of a furnace, a channel and a barrier.

Hogan Lovells

Boasting nearly 40 years advising clients -especially from the entertainment, consumer products, and pharmaceutical industries- on their IP strategies, Hogan Lovells enjoys hard-earned recognition for its trade mark and copyright prosecution practice, as well as for its litigation and enforcement team that handles trade mark, patent and copyright issues. At the helm is the ‘exceptional’ Bernardo Herrerías, who stands out for his anti-counterfeiting work, having recently advised Duracell on such a programme in relation to the company's importation of batteries into Mexico. Other key practitioners include senior associates José Armando Casillas, who has a particular focus on patent, trade mark and copyright prosecution and litigation; and Edgar Mata, who advises on IP-protection strategies, among other matters.

Practice head(s):

Bernardo Herrerías

Testimonials

‘This firm is very solution-oriented and works very hard to accommodate your timeline. They are always available to assist and are extremely responsive.’

‘Bernardo Herrerias is an exceptional lawyer. He has a wealth of knowledge and experience and also provides very practical solutions, which is what is needed, in the time that they are needed. Some matters are handled on a flat fee basis.’

Key clients

HP Inc / Hewlett Packard Enterprise

House of Fuller

Dart Industries

Walmart Apollo

Duracell (US Operations)

Univision Communications

Dümmen Group

Mars

Anagram International

Industrial

Zitro IP

Google México

Bia Foods International

Virtual IP Assets Limited

Rhein’83

Silver Peak Systems

Work highlights

  • Advised Walmart Apllo on the consolidation of its trade mark portfolio and enforcement of Walmart’s exclusive rights in Mexico.
  • Adised Mars Incorporated on the consolidation of its trade mark prosecution portfolio in Mexico, and on the coordination and defence of its Mexican trade mark portfolio across the different business units.
  • Assistes Duracell US Operations on the carrying out of an anti-counterfeiting program regarding its importation of batteries into Mexico, particularly the enforcement of border and precautionary measures.

TMI Abogados

Specialised boutique, TMI Abogados (formerly Tsuru Morales Isla), has established itself as a reference when it comes to expertise in IP and technology law in Mexico and it is often the go-to firm for big names from the IT and life-sciences sectors, among others. With an ability to originate out-of-the-box solutions, the practice is particularly prominent in trade mark infringement cases, counterfeiting claims and copyright enforcement issues. It 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.

Practice head(s):

Kiyoshi Tsuru; Rodolfo Rangel and Irely Aquique

Baker McKenzie Abogados, S.C.

Full-service firm Baker McKenzie Abogados, S.C. has abroad IP service offering and coverage in Mexico, which -as ever- can always draw on the firm’s international network. Locally, the firm fields a 16-strong team of lawyers and engineers divided between its five offices in the country and who provide ‘solid and practical opinions’; the practice covers traditional IP (trade marks, copyright and patents), as well as litigation. Fernando Robles-Pesqueira , who boasts a solid reputation as an IP litigator and negotiator, heads the department from Guadalajara; closely supported by 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 and wins praise for her ‘innovative thinking and a capacity for crafting creative solutions to difficult legal problems’. The latter pair are based in Mexico City, as is deeply-experienced associate Gresly Marcano, who is the head of trade marks and also leads the prosecution practice. Since publication, Marcano has been raised to counsel - effective January 2022.

Practice head(s):

Fernando Robles-Pesqueira

Testimonials

‘Provides solid and practical opinions, searches and prosecution support for our trade mark portfolio. They are professional and friendly at the same time. Well organised and well informed in their areas of expertise.’

‘Marina Hurtado’s knowledge and expertise in the field of patent and traditional knowledge is admirable. She is easy to work with and extremely approachable.’

‘What makes Marina Hurtado Cruz stand out from her competitors is her penchant for innovative thinking and a capacity for crafting creative solutions to difficult legal problems.’

‘The firm has also demonstrated its consciousness and sensitivity towards its social responsibility and taken concrete steps towards promoting diversity, which undoubtedly speaks to the integrity of the firm.’

Key clients

Church & Dwight

Caterpillar

Whirlpool Corporation

British American Tobacco

Sheraton Mexico (Marriott International)

Facebook Music

Nintendo

Twitter

KidZania

Work highlights

  • Representing Church & Dwight on an opposition to defend its “Arm & Hammer” trade mark design.
  • Assisted Caterpillar in a dispute involving a UDPR filing before the World Intellectual Property Organization (WIPO).
  • Assisting Whirlpool Corporation and its Mexican subsidiary with clearing and filing key brands for new products in several Latin and Central American countries.

González Calvillo, SC

Hailed for its ‘professionalism and speed’, the solid six-strong IP practice at full-service firm González Calvillo, SC is well-known in the market for its litigation capabilities (regularly representing clients against trade mark infringement cases before the relevant authorities), while also remaining very much involved on  transactional matters. The litigation side of the practice is handled by department head Pablo Hopper and senior associate Constantino Aquique, who ‘excels in handling contentious matters’; while counsel Alberto Pliego focuses on the transactional front, particularly franchising; and senior associate Lirio Salgado handles patents and copyright. Since publication, Pliego has been raised to the partnership - with effect from January 2022.

Practice head(s):

Pablo Hopper; Alberto Pliego

Testimonials

‘We were impressed by the professionalism and speed of responses from the team. Lirio Salgado Ramos has been a pleasure to work with.’

‘The punctuality in following up on each matter, the detail and formality with which they keep the client informed about the status of their matters and the availability to attend to the client always make the service of this firm unique.’

‘Lirio Salgado and Pablo Hooper: excellent work. They always have the best answers to the client’s requests, focused on providing the best service. They have great knowledge and skills.’

‘Constantino Aquique excels in handling contentious matters and litigation. Like Pablo and Lirio, he provides excellent service’

Key clients

Accor

Rappi

Work highlights

  • Advised Tecnologías Rappi on the structuring, negotiation and implementation, of a joint venture with Banorte, including all IP aspects.

Goodrich, Riquelme y Asociados

Goodrich, Riquelme y Asociados has a high-quality IP practice with a solid reputation for its 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 Cesar 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 Díaz

Iberbrand S.C.

Celebrating 10 years in the market, boutique firm Iberbrand S.C. has become a popular choice among clients (especially from the technology and automotive sectors) thanks to its capabilities in both contentious and non-contentious trade mark advice. The team is led y a group of experienced practitioners including founding partner Diego Rossi, who specialises in franchising and the enforcement of trade marks and patents; Gilberto Martinez, who specialises in trade mark and copyright matters; skilled litigator Ana Vargas and senior partner Francisco Capetillo Traeger who has over 25 years' IP experience and focuses on the full array of trade mark matters.

Practice head(s):

Diego Rossi, Gilberto Martinez, Ana L. Vargas

Testimonials

‘We use this firm extensively for representation of trade mark clients not only in Mexico but throughout Latin America. They are quick, responsive, knowledgeable and efficient – a stellar combination and ideal for non-LatAm practitioners.’

‘Gilberto Martinez is a highly respected and very experienced lawyer and trade mark attorney. He is a powerhouse of knowledge of this area of law in the region and is extremely reliable and practical.’

‘The firm is first in class on so many levels.’

Key clients

Total

Ultra-Enterprises

Max Mara Fashion Group

Evonik Degussa

ABB Switzerland

Carolina Herrera

Work highlights

  • Assisted Total with several claims against third parties using, seeking to register or indeed registered terms combining “Total” in combination with other terms.
  • Represented Audi in several opposition actions before the Mexican Institute of Industrial Property (IMPI).
  • Representing Ultra Enterprises in several procedures against a third party that was organising music festivals with a similar name and exactly the same logo in Mexico.  

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

Displaying strong activity on the litigation front, the six-strong IP practice at Müggenburg, Gorches y Peñalosa, S.C. (MGPS) advises clients -including international pharmaceutical companies- on numerous procedures enforcing intellectual property rights, primarily related to patents and against third parties manufacturing and selling infringing products. Skilled litigator and patents' specialist, Esteban Gorches, is the team's key practitioner, while of counsel Ana Esther Urquizo, has a solid track-record in the representation of companies for the registration, protection and maintenance of all types of intellectual property rights.

Practice head(s):

Esteban Gorches

Panamericana de Patentes y Marcas (PPM)

Long-standing boutique Panamericana de Patentes y Marcas (PPM) has a much-lauded IP practice with specialist expertise in privacy and data protection, social media, advertising, sports law, IT law, and personal image rights, and 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 López; and patents director Andrés Esteva.

Practice head(s):

Georgina Esteva; Humberto Lopez Avila; Andres Esteva; Mauricio Escoto

Santamarina y Steta

Department-head Jose Pablo Pérez Zea, a seasoned expert in franchising and licensing, and who also excels in litigation and prosecution regarding intellectual property rights, leads the six-strong IP practice at Santamarina y Steta. Praised for being ‘very collaborative, and always ready to provide serious, prompt and effective solutions’, the team is regularly called upon to represent companies from the pharmaceuticals, manufacturing and automotive industries, and works seamlessly with other areas of the firm such as tax or M&A. Completing the practice are: Daniel Legaspi, who was appointed counsel in January 2021 and handles trade marks, franchising and licensing (and is also an accredited arbitrator on copyright issues); and senior associate Efraín Olmedo, an experienced litigator.

Practice head(s):

José Pablo Pérez Zea

Testimonials

‘Excellence, thoroughness, professionalism, legal knowledge, timeliness.’

‘Jose Pablo Perez is an excellent partner with knowledge of the matter. Daniel Legaspi is also very knowledgeable, always timely and truthful with his advice and answers.’

‘Very collaborative, and always ready to provide serious, prompt and effective solutions.’

‘Efrain Olmedo and Daniel Legaspi are very responsive and on top of their work.’

Key clients

General Motors de México

Grupo Posadas

Walmart de México

Kimberly Clark

Deere & Company

Takeda

Hypertherm

Diamond Films

Corteva Agrisience

Mondelez de México

Work highlights

  • Advised Grupo Posadas on the strategy to protect its hotel trade mark “LIVE AQUA” for its new opening at El Valle de Guadalupe in Mexico, and in Punta Cana, Puerto Rico.
  • Designed a strategy for the enforcement of a trade mark against Philip Morris.
  • Advised Mexalit Industrial on how to efficiently appeal a ruling for infringement against a patent, strategising a defence which forced the appellate Court to reconsider the evidence filed in the counter claim against that patent.

Von Wobeser y Sierra, SC

Von Wobeser y Sierra, SC's IP practice keeps getting stronger by the year, garnering praise for consistently providing ‘next-level strategic thinking for IP planning in Mexico and the region’, and for doing so ‘with results that exceed expectations’. Partner Patricia Kaim heads the seven-strong team (plus two engineers, law clerks and administrative staff), which works in close coordination with all other practice areas of the firm and is particularly active in relation to prosecution, IP transactions and infringements, unfair competition, and advertising and marketing controversies. Associates Silverio Sandate who primarily handles copyright, advertising, and litigation; and Nallely Van Pratt (distinctive sign and domain name prosecution; advisory) are additional key assets of the team.

Practice head(s):

Patricia Kaim

Testimonials

‘The differential quality is the specialisation and professionalism. I highlight Silverio Sandate.’

‘The firm is a reliable, prompt and a valued strategy partner for our business activities in Mexico. They consistently provide next-level strategic thinking for our IP planning in Mexico and the region.’

‘Patricia Kaim and her team know the subject matter very well and apply it specifically to our needs and business. This gives us the certainty that our intellectual property is well protected against third parties and that we are receiving the best advice in our sector.’

‘Patricia Kaim and her team not only have in-depth knowledge of the subject matter, but their professional ethics and the confidence they give us in the handling of our matters is outstanding. We feel very comfortable working with her and her team’

‘From simple matters such as trademark registration, to representing in complex litigation, they always do so with results that exceed expectations’

‘The team is enthusiastic, committed, responsible, very well prepared and with impeccable professional ethics. We have worked with Patricia Kaim for a long time’

‘It is a firm committed to diversity. Patricia Kaim is part of a Diversity Committee that has promoted gender equality within her firm and has implemented very positive practices’

‘Silverio Sandate is undoubtedly a young lawyer who is a worthy heir to the good tradition of the firm and who will surely take it to another level’

Key clients

Mars

The Procter & Gamble Company

Guccio Gucci

FCA US

Global Citizen

Nike

Krispy Kreme Doughnut Corporation

Reinvex Integra

Anheuser-Busch InBev

Stridebio

Work highlights

  • Defended Procesar’s IP rights following on from IMPI denial of Apple’s “SIRI” trade mark registrations and all the appeals filed by said company.
  • Advised P&G in a claim involving trade mark infringement, buts also infringement due to unfair competition acts by Kimberly ClarkMexico.
  • Advised Mars on an amparo lawsuit filed against amendments to the NOM-051 regulation, which governs the labelling and packaging of foods and beverages.

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

The February-2019 arrival of Jonathan Rangel (from Dumont) as head of practice has definitely put Bello, Gallardo, Bonequi y García, S.C.‘s IP practice on track. Praised for ‘his subject-matter expertise and his willingness to go the extra mile for his clients‘, Rangel -who was elected partner in February 2021- has sought to move the practice beyond traditional IP by seeking synergies with the firm’s established TMT and regulatory practices, resulting in a department that approaches IP issues and difficulties from multiple perspectives and that is also strong on data protection. Rangel, who has extensive experience of the enforcement and protection of IP rights. is flanked by name partner Carlos Bello, who focuses on copyrights and related internet issues; and senior associate Juan Carlos Salazar who is focused on IP litigation.

Practice head(s):

Jonathan Rangel

Testimonials

‘Jonathan Rangel and his team are responsive and provide thorough legal analysis. Jonathan Rangel is an articulate, responsive attorney and has been excellent to work with.’

‘We are impressed by their team’s efficiency, accuracy and reasonable charges. They are experienced in trade mark filing and prosecution and also good at providing comprehensive legal opinions of trademark protection in their country.’

‘BGBG has helped our clients in Mexico IP and Brazil patent matters, showing their strong and reliable cross-border connections.’

‘Jonathan Rangel  is professional and attends to details. He has provided excellent advice and workaround solutions.’

‘Jonathan Rangel has impressed us with his subject-matter expertise and his willingness to go the extra mile for his clients.’

‘Jonathan Rangel and Juan Salazar Salas are very proactive and understand quickly what needs to be done. they provide a tailored and business-oriented advice.’

‘It is a unique team by virtue of its dynamism and resilience in finding the best legal solutions for its clients. They are at the forefront of the criteria and study in the field.’

‘Jonathan Rangel has provided us with guidance on intellectual property matters, specifically, portfolio maintenance, review of asset licensing agreements, asset management for their proper safeguarding.’

Key clients

Hisense USA Corporation

Thema America

Alsea

Herbalife International de Mexico

Pietra Gallery

The Swatch Group

Omega

Kipling Apparel Corp

The North Face Apparel Corp

Sonora Agropecuaria

Dufry

Hispasat

JanSport Apparel

Livelong Pet Nutrition Corporation

Icon Health & Fitness

Gea Group

Work highlights

  • Advised Thema America on an overseas IP protection campaign.
  • Represented Hispasat in a domain name dispute to stop infringing and fraudulent activities.
  • Participated in the seizure of 6,500 counterfeit products in Mexico City on behalf of Kipling Apparel.

BGAL Asociados

Established in March 2018, Mexican IP boutique BGAL Asociados houses a 10-strong team (including three partners), which covers a broad range of IP matters, including trade marks, patents, copyright, litigation and contractual issues, among other matters. The practice is led by a ‘young but very experienced duo of partners’, consisting of managing partner Inti Alva, who is considered an ‘expert in trademark, copyright and litigation matters’; and Flor Bermúdez, who has high-level expertise in the registration, protection and administration of trade mark portfolios ‘both in Mexico and abroad’.

Practice head(s):

Inti Alva

Testimonials

‘Inti Alva and Flor Bermudez have extensive knowledge and experience, providing a fast, efficient service, with reasonable fees.’

‘Inti Alva is an expert in trade mark, copyright and litigation matters, and has a great ability to understand and resolve business needs. He is a very practical and executive lawyer. Flor Bermudez is warm in her dealings and has extensive knowledge of trademark issues both in Mexico and abroad.’

‘They are our great allies. Inti Alva, Flor Bermudez and Diego Arellano are all excellent lawyers who give us exceptional attention in all types of IP matters which really demonstrates their depth of knowledge in the field.’

‘They are always at the forefront of amendments to the national rules.’

‘They are a young but very experienced duo of partners. They are strong in both filing and enforcement, being an enforcement team that confronts even dangerous challenges in order to support the client on counterfeiting and piracy issues in a complicated country like Mexico.’

‘On litigation matters, Inti Alva and Diego Arellano are a formidable team who always go the extra mile.’

‘Flor Bermudez: very prompt and professional, and yet with a genuine personal warmth. Inti Alva Espinoza: very commercially astute, and comes with valuable in-house experience.’

Key clients

Biogénesis Bagó de México

Sistemas Radiopolis

Lincoln Electric Company

Don Limón

Granjas Carrol

Rimac Automoboli

Fitt

Restaurantes Moshi Moshi

Buckman Laboratories

Industrias Alen

Work highlights

  • Represented Biogénesis Bagó in a patent infringement procedure initiated by Warburton Technologies because of the alleged unauthorised use of the patent “Oligoelementos”.
  • Represented the client against several fake accounts using Sistema Radiópolis’ brands.
  • Filed criminal actions representing Lincoln Electric Company derived from several investigations that detected the selling of counterfeited welding machines and energy generators branded as “Lincoln Electric” being commercialised on digital platforms such as ‘Marketplace’ and ‘Mercado Libre’.

C&L Attorneys

With 18 years' market experience covering all areas of work in the IP sphere, specialist boutique C&L Attorneys handles a broad mix of contentious and non-contentious patent, trade mark and copyright work, particularly for international clients. Steering the practice are founding partners Jorge Leon, who has a strong focus on IP litigation (including infringement actions) and also leads the copyright and enforcement practices; and Ana Castañeda, who heads the patent and trade mark areas, and impresses clients with her ‘initiative, her commercial approach, and creative solutions’. The firm has proven expertise in sectors such as pharmaceuticals, biotechnology, biologics, chemicals, electronics and consumer products.

Practice head(s):

Jorge León; Ana Castañeda

Testimonials

‘Jorge Leon: he is an excellent lawyer, very well-structured, and it is extremely pleasant to work with him.’

‘C&L provides excellent service in all trade mark areas, from clearance to prosecution to opposition/cancellation actions. They are responsive and always keep business interests in mind. Jorge Leon is an excellent attorney, always providing sound and cost-effective advice.’

‘Ana Castaneda and the team are very knowledgeable, efficient and practical. Ana provides great client care, responsive and overall excellent client communication and service. I am particularly impressed with her initiative, her commercial approach, and always offering creative solutions to problems and straightforward advice whether it be registry work or contentious matters.’

Key clients

Starbucks Corporation

Teva Pharmaceutical Industries

Sony Interactive Entertainment

Virgin Enterprises

Sega Games

Chocoladefabriken Lindt & Sprüngli

Estafeta Mexicana

Turtle Wax

TRT Holdings

Bandai Namco Entertainment

Doterra Holdings

Fujitsu

Canali Ireland

Pirelli & C. S.P.A.

Pfizer Products

The Female Health Company

Work highlights

  • Managing the entire trade mark portfolio in Mexico for all the companies in the Starbucks group.
  • Handling the TEVA Group trade mark portfolio in Mexico and other Latin American countries.
  • Handling KORES’ industrial design portfolio in Mexico including drafting, prosecution and response to office actions, particularly regarding new design applications.

Calderón & De La Sierra

Intellectual property boutique Calderón & De La Sierra houses a very respected practice, which has weight across an array of IP matters, including advice on contentious and non-contentious patent, trade mark, and copyright cases, and also demonstrates 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 Cesar Ramos, who leads the patents team.

Practice head(s):

Carlos Perez de la Sierra

ClarkeModet México

Surpassing the 50-year milestone in terms of its presence in the Mexican market, ClarkeModet México houses one of the largest teams of this specialist multinational IP operation. The large group is praised for being ‘at the forefront of technological issues’, and using artificial intelligence tools ‘from blockchain to online brand surveillance in various countries’. Although best known for its strength in handling patent matters, the department also shows strong capabilities in trade mark work and IP litigation. Highlighted individuals include: Angelica Pardavell, who has broad experience across patents, industrial designs, utility models, plant varieties and industrial secrets in Mexico (and other Latin American countries); Lorena Rodríguez; Tanya Escamilla; Nahanny Canal; and José Miguel Mena.

Practice head(s):

Angelica Pardavell; Lorena Rodríguez

Testimonials

‘Lorena Rodriguez is an exceptional person, with great knowledge of intellectual property issues, processes and technology, with a great focus on the client and who seeks to become a strategic ally for your business.’

‘ClarkeModet is my first choice in IP matters. They have specialists with diverse profiles and are at the forefront of technological issues, which allows them to offer you comprehensive solutions.’

‘Their technical capacity, service attitude, and availability make them stand out from other options. José Miguel Mena, Lizbeth Ortega.’

‘I highlight the collaboration of this international law firm with experts in different regions of the world, generating a competitive advantage over other firms.’

‘The heads of each area are very accessible for consultations and are attentive to each matter. José Miguel Mena, Claudia Márquez and Angelica Pardavell provide excellent service.’

‘They have various artificial intelligence tools that adapt to each type of client, from blockchain to online brand surveillance in various countries.’

‘They provide a strategic perspective on intellectual property, which gives them an edge over other firms. They are very practical and concise in explaining complex concepts to the person who is not specialised in this area of law.’

Cuesta Campos y Asociados S.C.

An ‘excellent team leader’, Mauricio Chozas, is the principal figure and key contact at Cuesta Campos y Asociados S.C. which some regard as ‘the best IP firm’ they have worked with. Chozas, who handles trade marks, patents, copyright, litigation, industrial secrets, licensing, and franchises, and is particularly adept in IP strategy development, leads a practice principally dedicated to trade mark litigation before the administrative and judicial courts, while remaining active of late on infringement actions and pharma consulting. Key specialist support comes from intermediate associate Lorena Pinto (trade marks, copyright and litigation), and the department can also call on the full-service firm's broad practice offering and resources.

Practice head(s):

Mauricio Chozas

Testimonials

‘Cuesta Campos is the best IP firm that we have ever worked with. Their expertise and the effort that they put in to all our cases is very much appreciated’

‘Mauricio Chozas is an excellent team leader, and Lorena Pinto is an excellent team worker. Together the make a wonderful team to deal with every case of ours.’

‘They provide good and creative solutions. We have worked with Mauricio Chozas for several years now, and we continue to entrust our client’s portfolios with them for their excellent service and great results.’

‘High moral standards and a good reputation.’

Key clients

ET2C International

Full Sail University

Global Maritime

Cipla Limited

ICC International Chambers of Commerce

Biofarma

Mumuso

Tierra Noble

TM Brands

Nivada

ET2C International

Work highlights

  • Assisted Kimberly Clark with several distribution agreements in central and south America, particularly related to said agreements’ IP aspect.
  • Advised Biofarma on the preparation and filing of several trade marks as well in conducting the patent research to determine the possibility of launching new products.
  • Advised Nivada (Holzer & Cia) on its entire trade mark portfolio, including foreign and domestic IP rights.

MCOY Abogados

Boutique firm MCOY Abogados provides both national and international clients with a wide range of IP services, garnering recognition for its ‘strong trade mark and intellectual property litigation practice’ which, for some, places them as ‘one of the best firms in Mexico’. The team is led by partners Alejandro Cárdenas, who primarily handles any type of IP litigation, while also having a robust trade mark prosecution practice; and Eduardo Miravete, who handles administrative litigation and manages the trade mark registrations and IP portfolio management area.

Practice head(s):

Eduardo Miravete; Alejandro Cardenas

Testimonials

‘A large firm with a strong trade mark and intellectual property litigation practice. One of the firm’s strengths is the high level of specialisation of its lawyers and the provision of a personalised legal service.’

‘We have been with them for five years and they are one of the best firms in Mexico. They have great judgement and a great strategic and business-oriented vision.’

‘Eduardo Miravete has a great knowledge of intellectual property and corporate law, which allows him to give comprehensive advice to queries. He is a 24/7 lawyer always available for urgently required consultations.’

‘They keep us up to date with Mexican legal developments in IP matters through their publications.’

‘Alejandro Cardenas has a solid track record and is very knowledgeable.’

Key clients

Constellation Brands

Laboratorios Pisa

Pisa Agropecuaria

Schindler Group

Toyota Motor Sales de Mexico

Nissan Mexicana

Embotelladora AGA de Mexico

Hormel Foods

F Tapias Mexico

Mino Labs

Selder

Work highlights

  • Defence of Nissan Mexicana in a copyright infringement case filed against the company.
  • Defended Embotelladora AGA de Mexico against an infringement suit filed by Coca Cola Company.
  • Ongoing representation of Pisa Farmaceutica, including more than 20 litigations during the past year.

Méndez + Cortés S.C.

Since its establishment in 2014, Méndez + Cortés S.C. has gradually developed both position and profile in the IP arena. The practice houses a group of experienced professionals, consisting of lawyers and engineers, and evidences a strong focus on patent and trade mark registration and protection. The team is co-led by founding partners Jose Juan Mendez and patent expert Emmanuel Cortés, and regularly represents clients from the automotive, retail, pharmaceutical and social media arenas.

Practice head(s):

José Juan Méndez; Emmanuel G. Cortés

Solórzano Linaldi

Boutique firm Solórzano Linaldi opened its doors in December 2020 retaining the full intellectual property expertise and punch of the former Solcargo, and already gains praise for its ‘extraordinary service’. Founding partner Guillermo Solórzano Leiro, who focuses on contentious patent, copyright and trade mark issues, heads the department, which is known for handling a broad range of IP matters, including patent and trade mark applications, prosecution, enforcement, dispute resolution and litigation. Senior associates Miriam Orozco and Christian Parra provide key support to the practice, which has a particular focus on the pharmaceutical industry and additional expertise in the entertainment sector.

Practice head(s):

Guillermo Solórzano Leiro

Testimonials

‘They give an extraordinary service, close and clear communication. We feel very well represented and supported in Mexico.’

‘They have extensive technical knowledge and have implemented new processes to eliminate possible omissions in phonetic searches e.g. for trade mark issues.’

Key clients

International Maize and Wheat Improvement Center

Hetero Labs

Neology

Glenmark Pharmaceuticals

Sun Pharma de México

Investigación Farmacéutica (IFA Celtics)

Western Forms

Gabriel Orozco Félix

Vert Pharma

Outdoor México Servicios Publicitarios

Sum Services

Franco Escamilla

Clínica del Manejo de la edad

Work highlights

  • Advised Asofarma de México on an administrative procedure for declaring the nullity of a patent which mainly protects the active substance commonly known as Fingolimod.
  • Advised Western Invicta Media on the distribution of the film “Cuando los hijos regresan” in Mexico.  
  • Representing Landsteiner Scientific in a lawsuit brought by Norvartis regarding a trade mark which is similar to our client’s.

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

Partner Begoña Cancino runs the IP department at full-service firm Creel, García-Cuéllar, Aiza y Enríquez, S.C. One of the few sole female department-heads, she runs a robust practice that has been built up over her many years of experience in the sector and focuses primarily on intellectual property, data privacy, regulatory and administrative litigation. Supported by an eight-strong team -including counsel Guillermo Govela (health regulation and administrative law) and associate Lizbeth Borquez (life sciences and health regulation)- Cancino advises clients from a broad array of industries on the protection and enforcement of their IP rights in México, including the transfer of IP portfolios within the context of complex corporate transactions the firm frequently handles, and involving a variety of IP rights (such as trade marks, copyrights and appellations of origin). Concurrently, the team continues to gain presence in the IP litigation field. Since publication, Cancino has left the firm to become an independent advisor; leadership of the practice has been taken over by counsel Gaby Finkel, a July 2021 hire from Santamarina y Steta.

Practice head(s):

Begoña Cancino

Key clients

World Wild Life Found

Diageo

Comercializadora SDMHC

NFL

Beachbody

Spotify

Nestlé Servicios Corporativos

Riot Games

Nutrition Fact de México

Chobani

Work highlights

  • Advised Banorte on the IP aspects of the client´s  joint venture with Rappi for the creation of a digital bank; deal value, $355m.
  • Counseled Riot Games on the protection of IP rights related to videogames (from both the trade mark and the copyright perspective), and also in connection with tournaments coordinated by the company worldwide.
  • Counseled El Aguila on all IP rights, particularly general trade mark protection, and the protection of non-conventional trade marks involving protecting the distinctive sound used by the company in its advertising materials.

De Alva & Asociados

Specialised boutique De Alva & Asociados is best known in the intellectual property arena for its expertise in trade mark infringement and other IP related litigation; IP enforcement; trade mark, slogan and trade name filing; international trade mark 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, software and computer services, retail, 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

Testimonials

‘They are very professional and always available, they know their strengths as branding professionals, they are very involved with the client in adding value to the brands they register, they are up to date and keep things up to date.’

‘They are honest, professional and responsible, and very punctual. The most outstanding partners are: Sergio de Alva and Gerardo Torres.’

Ibarra, del Paso y Gallego

Partner Juan Manuel Alvarez del Castillo heads the IP practice at Ibarra, del Paso y Gallego, which is a popular choice for clients from the pharmaceutical, life sciences and biotech industries. Alvarez handles and prosecutes a broad range of matters involving trade marks, patents, copyright, domain names and related litigation; he also plays a significant role in the firm's life sciences practice.

Practice head(s):

Juan Manuel Álvarez del Castillo

Key clients

K&L Gates

Curtis, Mallet-Prevost, Colt & Mosle

Discovery Communications

Qualcomm

World Trade Centers Association

Work highlights

  • Registered the marks “PALMER’S” and “PALMER’S FOR PETS” in several classes in the Mexican market.
  • Advised Discovery Communications regarding its new media platform DISCOVERY+, an on-demand streaming platform with content for children.
  • Advised Qualcomm on the registration of its “Snap Dragon” trademarks related to the company’s 5G microchips line.

Jáuregui y Del Valle, S.C.

‘They are 100% committed’ says a client about Jáuregui y Del Valle, S.C. 's 11-strong IP practice, which specialises in copyright and trade mark litigation as well as anti-piracy, and ‘will lift every stone in the desert to find out the appropriate answer’. Partner Israel Ledesma Meléndez has a solid track record handling the organisation and execution of anti-counterfeiting and piracy campaigns for national and foreign companies, mainly from the pharmaceutical, telecommunications, entertainment and technology sectors. Key support is provided by senior associate and skilled litigator Marta Celis, who joined from Olivares in November 2020.

Practice head(s):

Israel Ledesma Meléndez

Testimonials

‘They are 100% committed and if they don’t have the right answer, they will lift every stone in the desert to find out the appropriate answer. They are amazing professionals to work with.’

‘Israel Ledesma is very professional, charismatic and well rounded. He has demonstrated throughout the years that he has what it takes to deliver a final outcome in a satisfactory and pleasing manner.’

‘Attention, professionalism and outstanding knowledge of both the issues and the options for resolving them are distinguishing features of both Israel Ledesma and Martha Ruth Celis.’

Key clients

Adidas

Genoma Lab International (GLI)

Apotex

Genoma Lab International

Lego Juris

Apple

Work highlights

  • Provided legal advice to Lego with the aim of seizing four containers coming from China that arrived at Manzanillo Customs with thousands of toys that reproduce the client’s trade marks.
  • Assisted Apotex with the filing of various trade marks in 20 different LATAM countries.
  • Assisting Adidas in a counterfeiting case.

Mijares, Angoitia, Cortés y Fuentes S.C.

Counsel Alejandro Díaz heads the IP practice at Mijares, Angoitia, Cortés y Fuentes S.C., bringing to the department his extensive expertise 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. As part of a full-service firm, the six-strong team also participates frequently in high-profile transactions involving significant market players.

Practice head(s):

Alejandro Díaz

Testimonials

‘Openness and time flexibility’

Key clients

IEnova (Infraestructura Energética Nova)

Citibanamex

Grupo Gayosso

Grupo Televisa

Thor Urbana

Prada

Molson Coors Beverage Company

Entertainment One (eOne)

Mercado Libre

Robert Bosch

Shopify

Kua Mex Foods

Tip de México

Fox Telecolombia

Work highlights

  • Advised CMR on the IP aspects of its acquisition of DASI.
  • Acted as counsel to Bayer de Mexico in a transaction to sell the assets, trade marks and regulatory authorisations of its Biometrix and Vitametrix’ products, to Laboratorios Sanfer.
  • Counseled SoftBank on its $125m investment in fintech platform Alpha Credit, including certain IP aspects.  

Bufete Soni

Boutique firm Bufete Soni has a well-established and well-valued IP practice that ranges from patents and industrial designs, trade marks and copyright, to 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 and Rosalinda Durán.

Practice head(s):

Mariano Soni

Sánchez Devanny

Sánchez Devanny´s IP practice is led skilfully by Juan Luis Serrano-Leets, who garners praise from clients for his ‘extensive experience in regulatory and intellectual property matters’, as well as for his proven expertise in the pharmaceutical sector (he is a former in-house at Astra Zeneca). The department handles a wide range of IP-related issues including prosecution, litigation, and interactions with regulatory regarding both patents and trade marks, as well as general policy advisory. Serrano-Leets also leads the firm's life sciences and data privacy areas.

Practice head(s):

Juan Luis Serrano Leets

Testimonials

‘Juan Luis Serrano has extensive experience in regulatory and intellectual property matters with a great deal of expertise in sectors such as chemicals and pharmaceuticals, having spent many years in-house at a large pharmaceutical company’

‘Juan Luis Serrano shows his vast knowledge of the subject matter in a simple and down to earth manner to any company audience. If specific legal terms need to be used, he has the ability to express them in English or Spanish in a simple manner to either in-house lawyers or commercial teams’

 

Key clients

Teva Pharmaceuticals

UCB Pharmaceuticals

Estee Lauder

Walmart de México

The Pokémon Company

Exeltis Pharma

Lupin Pharmaceuticals

Universidad de Monterrey

Knight Therapeutics

Subway

Work highlights

  • Advisory on global patent portfolio protection/licensing structures.
  • Several litigation proceedings against another private university, regarding trademark.
  • Representation in several TM litigation cases surrounding applications by Home Depot International for the mark “Home Accents Holiday”.