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Arochi & Lindner, SC is a highly-rated boutique that handles the full range of trade mark, patent, and copyright work for its clients and is considered 'an excellent IP law firm in the life sciences sector'. The firm regularly advises on areas such as franchising, licensing, media law, data protection and anti-counterfeiting. On the trade mark front, the firm has been involved in several high profile matters for Merck, Coflex, and Home Depot, recently. Lawyers also successfully represented the artist Amparo Serrano in a significant dispute concerning the originality of a drawing of the Virgin Mary as a little girl which is used in various products. Key partners include managing partner Roberto Arochi, who is noted for his anti-counterfeit and litigation work, head of patent litigation Heidi Lindner, patent and copyright head Jorge Mier y Concha, and trade mark head María Teresa Eljure.

Basham, Ringe y Correa, S.C. has an extremely well respected IP department that stands out for its ability to match the top boutiques in scale and depth, both for contentious and non-contentious advice. The firm has seven partners specialised in this area: managing partner Eduardo Kleinberg heads the trade mark, franchising and licensing practice and is currently president of the Intellectual Property Commission of the Confederation of Industrial Chambers of Mexico. Martín Michaus and Adolfo Athie are highly active on the litigation side; Claudio Ulloa is highly experienced in patent-related work; while Jose Hinojosa, Jorge Vega and Juan Carlos Hernandez are recommended for their general non-contentious work. The department was further strengthened in July 2019 with the hire of Manuel Guerra Zamorro; formerly the director of Mexico's National Copyright Institute (Indautor), he joins as a senior associate and head of the entertainment law sub-practice. Clients are drawn from a wide range of industries, including manufacturing, retail, fashion, pharmaceuticals, and entertainment.

OLIVARES is one of the leading IP boutiques in the market, praised for its 'knowledge of trademark law in Mexico and willingness to give practical, concise advice'.  The 'very responsive' team covers all aspects of the IP spectrum and is commended for 'articulating clear strategy'. The practice represented pharmaceutical advocacy group AMIIF, recently, with regard to regulatory, patent and enforcement-related issues in the context of the renegotiation of the North American free trade agreement. A team is also representing a group of pharma companies, including Takeda, Celgene, and Abbvie, on an administrative dispute concerning Data Package Exclusivity.  Key partners include Sergio L Olivares, Jr. for patents, Luis Schmidt for copyright, Gustavo Alcocer for licensing and contracts, Antonio Belaunzarán for trade marks, and Alejandro Luna for litigation. Major clients include Netflix, Campbell Soup, JT International, Microsoft, and Novartis.

OLIVARES - English translation: OLIVARES es una de las boutiques legales de propiedad intelectual líderes del mercado, reconocida por sus "conocimientos sobre derecho de marcas en México y su predisposición para brindar asesoramiento práctico y conciso". Su equipo con "capacidad de respuesta rápida" abarca todos los aspectos relacionados con la propiedad intelectual, y se ha elogiado su capacidad para "elaborar una estrategia clara". Recientemente, el bufete representó al grupo de apoyo a la industria farmacéutica AMIIF en relación con asuntos asociados a las regulaciones, las patentes y la aplicación en el contexto de la renegociación del Tratado de Libre Comercio de América del Norte. Además, un equipo está representando a un grupo de empresas farmacéuticas, entre ellas Takeda, Celgene y Abbvie, en una disputa administrativa relacionada con la exclusividad de los paquetes de datos.  Algunos de los socios clave son Sergio L. Olivares Jr. (patentes), Luis Schmidt (derechos de autor), Gustavo Alcocer (licencias y contratos), Antonio Belaunzarán (marcas comerciales) y Alejandro Luna (litigios). Entre los clientes principales, se destacan Netflix, Campbell Soup, JT International, Microsoft y Novartis.

Founded in 1905, Uhthoff, G√≥mez Vega & Uhthoff, SC is a major institution in Mexican IP law. The 11-partner team covers all areas, including corporate-related IP advice, franchising, data protection, and every aspect of patent and trade mark prosecution and litigation. The firm has a particularly strong focus on the life sciences sector, and represents a broad array of biotech, medical device, agribusiness, and chemical companies. Notable highlights include obtaining a $1.2m settlement for a plant breeder following a right's infringement. Key partners include litigation experts Sa√ļl Santoyo¬† and¬†Xavier Hadad; trade mark partners Marcella Bolland,¬†Consuelo Gonz√°lez and Eryck Castillo; and¬†Javier Uhthoff and¬†Eugenio P√©rez for patents. Ignacio Dom√≠nguez-Torrado is also recommended for licensing work, as are Carlos Trujillo and¬†Mario Ponce Walraven¬† for copyright advice. Associate¬†Gerardo Parra is an up-and-coming trade mark specialist of note.

Well regarded for its patent and trade mark work, Becerril, Coca & Becerril, S.C. has strong teams working out of its Mexico City and Guadalajara offices. The IP boutique handles the full gamut of contentious and non-contentious issues, including domain names, anti-piracy, plant varieties, and trade secrets. Among the partners, Fernando Becerril is noted for his patent and trade mark expertise, Juan Carlos Amaro is highly rated for IP litigation and Héctor Chagoya  is recommended for patent prosecution work.

Boutique firm Calderón & De La Sierra has earned a strong reputation for its broad offering of contentious and non-contentious patent, trade mark, and copyright advice. The team also has strong expertise in related areas such as regulation and data protection. Founding and managing partner Carlos Perez De La Sierra and Alberto Huerta Bleck are recommended for their IP litigation and enforcement work. On the trade mark and copyright front, Mariel Velez, Paloma Contreras and Marimar Bordes are highly active. Cesar Ramos, who heads the patent team, has an extremely distinguished track record.

The 'very responsive' team at well-respected boutique, Dumont 'meets deadlines', is 'price comeptitive' and is 'knowledgeable about our complex business products and service offerings'. Managing partner Laura Collada is praised for her 'good IP knowledge and strategy' and is especially strong on the patent litigation front. Other key individuals include patents head Victor Garrido, trade marks head Christian Thomae, and litigation head Israel Escobedo. Major clients include Kraft Foods -which the team represented in a successful appeal before the Federal Administrative Court over the denial of a patent application- Unilever, Boehringer Ingelheim International and Lego.

Hogan Lovells has a strong team that is recommended for its 'availability, knowledge of law, talent and communication'. The practice group, which is led by Bernardo Herrerías, has good experience in litigation and enforcement, including criminal, civil and customs actions. The firm also handles a broad range of non-contentious matters, such as advising Mars on the consolidation of its Mexican trade mark portfolio. The firm's international strengths were reflected in its advice to Merck on a global trade mark litigation, while on the anti-counterfeting front, it represented Duracell on the enforcement of border and precautionary measures over the importation of batteries into Mexico.

M√ľggenburg, Gorches y Pe√Īalosa, S.C. (MGPS) covers every aspect of copyright, trade mark and patent protection, as well as advising on related areas such as data protection and trade secrets. The practice, which is praised for its 'excellent knowledge', is especially active on the litigation side, handling an impressive caseload of administrative and IP disputes across a range of sectors. Recently, the team has been involved in several major patent litigation cases on behalf of international pharmaceutical companies. On the copyright front it made an infringement claim against a fast food chain for the unauthorised use of music in an advertising campaign. Esteban Gorches,¬† Jean Yves Pe√Īalosa¬†(who 'has an excellent ability to summarise the case for us'), Luis Enrique Donnadieu and Gabriel Barrera Vallcaneras are all very active in this area.

Baker McKenzie Abogados, S.C. has a strong practice group dispersed throughout its network of Mexican offices. Sergio Legorreta leads the team from the capital and is backed up by a deep team of specialists across all areas of IP. Also noted is well-respected Guadalajara-based IP partner, Fernando Robles-Pesqueira. The team has recently handled several significant trade mark actions for the tequila producer Brown Forman, as well as representing publisher Scholastic in the successful defence of a trade mark claim. Other active clients include Tommy Hilfiger, Lucha Libre, Symantec, Marriott, and Netflix.

Goodrich, Riquelme y Asociados is a popular choice for a broad range of domestic and international companies working in the technology, pharmaceutical, retail and automotive sectors. This includes contentious advice on patent, trade mark, and copyright infringement claims, as well as other, non-contentious matters. Major clients include POW! Entertainment and the toy manufacturer Ty. Experienced senior partner Enrique Diaz leads the team, which includes Guillermo Sosa, who handles IP litigation matters, and Julio Prieto, who is highly experienced in trade mark filings and prosecution.

Panamericana de Patentes y Marcas (PPM) is a well-established boutique with a deep bench of lawyers covering all areas of patent, trade mark and copyright law. Clients from almost every industry use the firm, which offers strong expertise in related areas such as privacy and data protection, social media, advertising, sports law, IT law, and personal image rights. The specialised five-lawyer litigation team includes senior partner Miguel Esteva.

Santamarina y Steta has a solid IP practice which covers a broad range of areas, including the protection of plant varieties, trade secrets and domain names, as well as prosecution and litigation. Key partners include Jose Pablo Pérez Zea, who is also noted for his franchising and licensing expertise. The firm represents several major international clients from the pharmaceuticals, manufacturing and automotive industries.

Boutique firm Bufete Soni is consistently singled out for praise by international companies and referral firms. The team offers a wide range of services, including securing and enforcing patents, trade marks, copyrights and trade secrets. The practice also handles data protection, licensing, regulatory and contentious issues. Mariano Soni and Miguel Ortiz both enjoy good reputations.

Von Wobeser y Sierra, SC¬†provides 'excellent strategic advice and analysis' and the lawyers 'give different views and options to resolve the cases entrusted to them'. The 'professional team is oriented towards great results and understanding the client's needs'. The team is co-led by¬†Marco Tulio Venegas¬†and the 'responsive'¬†Rupert H√ľttler¬†who provides 'excellent insight'. The practice is particularly strong on the litigation front, regularly advising clients such as Nike, Procter & Gamble, JC Decaux and WM Wrigley Jr.

C&L Attorneys is a strong, two-partner boutique that handles a broad mix of contentious and non-contentious patent, trade mark and copyright work for a variety of international clients including Sony, Sega Games, and Teva Pharmaceuticals. Recent highlights include representing Starbucks on the the unauthorized use of its Frappuccino brand throughout Mexico. Founding partner Jorge Leon has a strong focus on IP litigation, including infringement actions; while co-founder Ana Casta√Īeda, who was formerly an electrical engineer, is recommended for patent¬† and trade mark prosecution.

Cuesta Campos y Asociados S.C. is considered 'excellent in the life science sector', although it acts for clients across a range of industries, including automotive, food, and fashion. The team, which is led by Mauricio Chozas, handles patent and trade mark litigation, as well as trade mark registrations. Recently the team successfully defended Synthon Mexico against an annulment action that resulted in a four-year litigation. Other active clients include Loto System, Almex, M&C Saatchi and Biofarma Natural.

The Mexico City office of the Spanish IP boutique Herrero & Asociados offers its clients strong representation in the country, and compliments the firm's other Latin America offices in Argentina and Brazil. The practice is led by experienced patent agent Eric Alávez  and acts for a broad range of international companies with interests in Mexico.

Boutique firm Iberbrand S.C. has built up a good reputation, particularly for both contentious and non-contentious trade mark advice. The firm has represented several major international clients, including Philip Morris, Kia, Volvo and Tencent Holdings. The practice group is led by managing partner Diego Rossi, with other key partners including Gilberto Martinez for trade mark and copyright matters, Ana Vargas for litigation, and experienced IP all-rounder Francisco Capetillo Traeger.

Méndez + Cortés S.C. has an ever-growing market-presence since its establishment in 2014; the firm fields a mix of lawyers, engineers and translators who are praised for their 'excellent quality' work. The 'extremely knowledgeable and responsive' team has recently been advising Volkswagen De Mexico on patent protection for a new process of digitally printing a vehicle body. Other significant clients include Paris Saint-Germain, Glenmark Pharmaceuticals and Arvensis. Among the partners, Emmanuel Cortés is highly recommended for his patent work, while Jose Juan Mendez 'is terrific at identifying potential problems and even better at proposing strategies and solutions'.

SOLCARGO's IP group is praised by clients for its 'teamwork' and 'quick responses'. Guillermo Solórzano Leiro leads the eight-lawyer practice which handles patent and trade mark work for clients in the pharmaceuticals, technology, telecoms, media and entertainment industries. Recent mandates include successfully representing Landsteiner Scientific in denying Pfizer's request to the National Institute of Transparency to access confidential information. Other clients include Glenmark Pharmaceuticals and Sun Pharma de Mexico.

TMI Abogados is a 'great IP boutique' - its 'commitment is fantastic' and  the lawyers' 'out-of-the-box way of thinking always show how passionate they are about the cases and their clients'. Among the partners, Kiyoshi Tsuru 'always pushes for the best outcome possible', while Rodolfo Rangel 'is great at litigation'. Patricio González is also recommended for his 'complete knowledge of Mexican IP regulations'. The firm represents a range of household names from the life sciences, technology, consumer goods and entertainment sectors in particular.

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  • Notorious Marks

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

    By Ignacio Dominguez Torrado Uhthoff, Gomez Vega & Uhthoff, S.C. Why a new value? Is Mexico avoiding the economic fallout that the world may be facing? In Mexico franchises are worth more? Is Mexico not a country that the global economic standstill is or will affect? The answer is, not really. Are Franchises in Mexico currently experiencing a boom? Perhaps. Are Franchises becoming an important aspect in Mexican economy? Certainly.

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

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

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

    By Jose Luis Ramos-Zurita

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