Intellectual property in Mexico

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.

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.

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.

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. 

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

‘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.

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.

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.