Mexico

Mexico was one of the few countries that lacked an opposition system in its trademark regime. However, that changed in 2016, with the incorporation of a pre-registration opposition system at the end of August. While this will help to prevent third-party trademark hijacking and enable the Mexican Institute of Industrial Property (IMPI) to reduce errors in the process of granting trademarks, it is not binding on examiners, who can issue a registration irrespective of the content of any opposition brief. It will also likely increase the average amount of time it takes to obtain a trademark in Mexico. On the whole, commentators suggest that the development is positive, but not game changing.

Firms

2
Calderón & De La Sierra
Goodrich Riquelme y Asociados AC
Hogan Lovells BSTL SC
Müggenburg, Gorches y Peñalosa SC
Panamericana De Patentes & Marcas SC
3
Baker McKenzie SC
C&L Attorneys SC
IBERBRAND SC
Legarreta Y Asociados SC
Mansur Birman Guakil y Wolff SC
Mcoy Abogados
TMI Abogados SC
Von Wobeser y Sierra SC
Arochi & Lindner SC
Arguably the most potent force in Mexico when it comes to trademark litigation and enforcement, Arochi & Lindner has a “huge infrastructure, allowing it to handle the most difficult and tough cases well”. It has a reputation for being aggressive in its pursuit of infringers; peers acknowledge that “when you have it as a counterpart, you will be in for a good fight, although one that is fair”. Roberto Arochi is one of the country’s elite lawyers in any discipline and is famed for his commercial nous. He leads the practice alongside Hedwig Lindner, another heavyweight litigator and an authority on both trademark and patent law. María Teresa Eljure heads the trademark department and brings decades of both litigation and prosecution experience to the table. “She does a great job sustaining her case, whatever is happening around her – she focuses on what is relevant and keeps on pushing and pushing.” Captaining the patent and copyright division is Jorge Mier y Concha, who blends technical excellence into his all-round IP practice. Having benefited from the tutelage and mentorship of the firm’s partners over many years, associate Aldo de Landa is now making a name for himself in his own right. “Aldo is extremely responsive and proactive, and excellent at communicating status updates to clients. He provides clear, concise and practical advice, while keeping in mind your ultimate goal and budget concerns.” All of the named individuals litigate, but the firm also runs a tight ship on the prosecution end of things; capitalising on its contentious insight, the group knows how to secure and develop rights that can withstand attack.
Baker McKenzie SC
Baker McKenzie makes its inaugural appearance in the Mexico tables of the WTR 1000 this year. The famed international player shines not just on the management of the Latin American elements of global trademark portfolios, but on the whole as well. International clients with interests or ambitions in the region take comfort from the close interplay and knowledge sharing between the groups in Mexico, Colombia, Chile, Argentina, and Venezuela, and with Baker McKenzie International members in Brazil and Peru. Sergio Legorreta is the key point of contact for many; among his recent projects, he devised and coordinated a cross-border regional and international trademark procurement strategy for Salesforce. “Sergio is really plugged into everything that is happening in the market and is great to talk strategy with. In negotiations he stands his ground and is tough, yet fair.” Basham is a long-time leader within Mexican intellectual property and – though the dynamics are changing, with the arrival of international outfits and the set-up of leaner new boutiques – it enjoys a prime position on the market. A playmaker in industry developments, such as Mexico’s recent introduction of an opposition system, it knows all the ins and outs of protecting trademarks on home soil. The amount of senior-level talent on offer is remarkable and a real differentiator for the firm. Head of the trademark and licensing practices, as well as managing partner, Eduardo Kleinberg has a lot going on, but keeps all the plates spinning while maintaining impeccable client service. José Hinojosa has been a partner here for over two decades and is a respected expert on both patents and trademarks. “Mexico’s finest”, Martin Michaus, is an ace litigator and strategic counsellor; the thought leader speaks and writes extensively on the subject. Adolfo Athié is another go-to litigator on the team. His technical acuity and eye for detail allow him to exploit any slip-ups from opponents. A younger partner who has quickly come to attention for his “consistently excellent work” is the “fantastic” Jorge Vega, “one of the best around when it comes to prosecution”. Becerril, Coca & Becerril ascends to the silver tier in this year’s WTR 1000. The patent group may win many of the headlines, but the brands unit is also doing great things, as reflected by the “sheer size and quality of its trademark client base”. Foreign associates appreciate that “the folks at Becerril are always on top of everything”, and hail “the quality and reliability of its service” and “fast responses”. Leading the legal department is Juan Carlos Amaro, a pharmaceutical patent litigator who can also bring the heat in trademark disputes and anti-counterfeiting scenarios. Manager of the IP litigation section Carlos Hernández is often the first point of contact for contentious matters; he coordinates an effective response from the wider firm and punches with force when taking the lead on cases. Victor Adames is the trusted helmsman of the trademark department. He builds steel-buttressed trademark and copyright portfolios, and adds value with his IP commercialisation know-how.
C&L Attorneys SC
Boutique C&L Attorneys has a knack for bringing trademark disputes to a swift and favourable end, whether in the courtroom or at the negotiating table; clients get the right results, while spending less on the case. Lessons learned on the contentious side inform its approach to filing strategy and vice versa, resulting in a holistic service that appeals to many. Jorge León and Ana Castaneda join forces to manage an ever-increasing case docket; the inimitable pair work extremely hard and are available at any time of the day – or night. Quick to adapt to changing circumstances, they deliver artisanal solutions to satisfied customers that include Sony, Sega and Teva.
Calderón & De La Sierra
Calderón & De La Sierra can now count itself “among the best full-service firms in Mexico so far as intellectual property is concerned”, having recruited some key frontline talent recently. The arrival of Alberto Huerta Bleck, in particular, was a watershed moment for the group, which was previously regarded as something of a one-man band with Carlos Pérez de la Sierra. With a loyal following of marquee brand owners, Huerta Bleck has seen combat in all types of trademark litigation and is well prepared for every twist and turn. Ernesto Erreguerena-Gonz also came on board, injecting plenty of additional business savvy into the team. Pérez de la Sierra remains one of the top IP professionals in Mexico; the versatile lawyer makes light work of any brief going. A prolific writer who regularly shares his insight with peers and those moving into the legal profession, he is an erudite guide to IP protection and enforcement. Combining deep technical know-how with commercial acumen, the practitioners at Dumont Bergman Bider are always on the radar of companies with a strong focus on the distinctiveness of their trademarks. Jet-setting managing partner Laura Collada maintains close relationships with European and US brand owners. She does her utmost to spend face time with clients, making sure she has a thorough understanding of their business needs before coordinating a response. Armando Pinto takes charge of the legal department, deploying his amazing breadth of expertise in corporate, civil, constitutional, commercial and IP law to superb effect. Having previously managed his own firm, he is in touch with the realities of running a business – something which shines through in the practicality of his advice.
Goodrich Riquelme y Asociados AC
A “solid and reputable” commercial unit with a “strong commitment to intellectual property”, Goodrich Riquelme earns lavish praise: “Its advice is clear and practical and communicated precisely in perfect English; there is never any misunderstanding about legal theory or expectations.” Much of this pivots around Enrique Alberto Díaz, the firm’s senior partner, IP department chief and all-round talisman. Díaz is feted as “one of the best litigators in the field” and a “very intelligent, responsive and thorough lawyer”. “He is excellent on prosecution and litigation strategy.” Up-and-coming partner Guillermo Sosa presides over the IP group’s litigation section.
Hogan Lovells BSTL SC
IT upgrades, increased integration with the wider firm’s international network and junior talent additions have all spurred the growth and development of Hogan Lovells’ Mexican IP squad, which rises to the silver tier this year. With household names such as Wal-Mart Stores, Nissan, Suzuki and Mitsubishi Hitachi Power Systems generating a steady stream of instructions, the prosecution side of the practice is extremely busy; for international brand owners with large portfolios, the firm has become a first port of call. The set is also devastatingly effective at sweeping the market of fake goods; Procter & Gamble knows well what it can do, having seen it implement border measures leading to the detainment of millions of razors. Hewlett-Packard is another blue-chip profiting from the anti-counterfeiting prowess on offer. Leading from the front is Bernardo Herrerías Franco, a font of wisdom on patents, trademarks, copyrights and other aspects of intellectual property. He enjoys excellent relations with a wide range of stakeholders in the market and finds it easier to net positive results for his clients than many others. Anti-counterfeiting maestro and all-round IP protection, enforcement and monetisation sage Alfredo Pineda Nieto applies international best practices to Mexican matters.
IBERBRAND SC
“IBERBRAND is an important and serious firm with a lot of good clients”, and one that is “very speedy in terms of reply and delivery”. Marrying tough and experienced litigators with savvy portfolio managers, it is a good choice whatever the weather. Its contentious unit is run by Ana Vargas Ramirez, who has instilled a creative, free-thinking approach in her team. She doesn’t make do with cookie-cutter enforcement solutions, but has a varied playbook with something in it for every situation. She also captains the international trademark department, which provides robust protection not just in Mexico, but across Latin America. Head of the trademark and copyright division Gilberto Martínez Maldonado is the main relationship partner for many senior in-house counsel, brand managers and C-suite executives. ‘Commercial’ describes his approach to supervising prosecution and brokering transactional negotiations. As managing partner, globally connected lawyer Diego Rossi maintains a laser focus on quality.
Legarreta Y Asociados SC
A highly responsive outfit which provides on-point, on-budget advice, Legarreta wastes no time getting down to the business of brand protection and enforcement. It provides services in corporate law and foreign investment, as well as in more esoteric fields including promotions and sweepstakes and immigration law; however, intellectual property is its first love and a foundational area of practice. The organisation was established in 1992 by Luis Legarreta, who presides over a dynamic team of young but experienced lawyers; Fermin Reyes is his right-hand man for litigation and Rafael Heres the second-in-command for prosecution.
Mansur Birman Guakil y Wolff SC
Mansur Birman Guakil y Wolff breaks into the WTR 1000 this year on the back of extensive and effusive reviews. “Reasonably and flexibly priced, and excellent in terms of response times and detailed advice”, is the verdict from one foreign associate. From an in-house perspective, the group “gets the best results in filing and litigation” and “upholds the highest standards of client service”. With his excellent track record on both the contentious and non-contentious sides of the equation, Eduardo Birman Ripstein is a magnet for praise. “He is a brilliant attorney with a keen eye for detail and a safe bet for any client.” “He never drops the ball and you can leave anything in his capable hands.” The “extremely responsive” lawyer is “highly knowledgeable about the law and strategy”, and is “personable and diligent” too.
Mcoy Abogados
General counsel find it refreshing to deal with Mcoy: “It advises clients in a practical and straightforward manner, and doesn’t blow a lot of hot air like some of the bigger names sometimes do.” One source comments: “We worked in the past with more traditional law firms, but Mcoy is more hands-on and responsive, and well aware of what is critical for the success of our business.” “Alejandro Cárdenas is an extraordinary lawyer who gives a personalised service. He understands IP law and policy not only in Mexico, but internationally, and he is someone that can take your company global.” He leads the practice and was responsible for bringing Eduardo Miravete on board – an inspired hire. “Eduardo is a top-notch attorney with a wealth of experience and talent – one of the most seasoned pros around. He possesses great business acumen and can successfully handle the most daunting tasks in connection with the protection of your IP rights.” He has lately been assisting Sanki Global with its expansion throughout the Americas.
Müggenburg, Gorches y Peñalosa SC
Litigation is the metier of the IP division at full-service commercial outfit Müggenburg, Gorches y Peñalosa. Opponents acknowledge that “when you see its lawyers on the other side of your case, you have to respect what they can do and keep your eye on all the detail”. In a market in which the dominance of some of the best-known and long-established names is eroding, many tip this organisation for the top. There is no type of case that “gold-tier litigator” Esteban Gorches Guerrero can’t run, in the IP space and beyond – he performs with distinction in the courtroom. He co-heads the IP practice alongside fellow trial maven Jean Yves Peñalosa Sol La Lande.
Olivares
“Olivares is a trademark powerhouse”; while it offers broader commercial law services, it has stayed true to its roots and “resisted the temptation to expand into other areas of practice in a way that detracts from its strength in intellectual property”. It “has the highest standards in terms of quality and response, and its members are also very active and influential in the wider IP community.” The litigators here “do their homework and are clearly passionate about their job”. The fingerprints of Daniel Sanchez are all over many of the group’s highlights: always in the thick of the action, he recently defended infringement actions brought by Cuauhtémoc Montezuma against client Grupo Modelo and by The Absolut Company against another patron, La Madrileña. “While always fair, he takes his opponents to the limit and doesn’t make things easy.” Other go-to litigators include “consistently strong” IT industry group co-chair Abraham Díaz, an IP polymath who provides “thorough and considered advice”; and Alejandro Luna Fandiño, a precedent-setting patent (and trademark) litigator who has recently formalised a new administrative law group within the firm. Several of the practitioners here blend experience in litigation and prosecution, including Sergio Olivares Jr and Antonio Belaunzarán Martínez. Chair of the management committee, Olivares Jr nonetheless remains an important strategic sounding board for many patrons, as well as colleagues. Belaunzarán Martínez has deeply sophisticated IP knowledge and is one of only three individuals in the Mexico listings to be gold ranked in both litigation and prosecution. The top portfolio management and prosecution specialist on the roster is Alonso Camargo. Intimately familiar with both the European and Mexican trademark systems, he can shed light on any matter for European clients. He is also an authority on the protection of non-traditional marks in Mexico.
Panamericana De Patentes & Marcas SC
“Panamericana has been in the business for many years” and is a prime address for many US and Latin American associates. “It is extremely careful and adopts the best strategy for each individual case”, and is “very fast in responding to queries”. “In terms of the intelligent, timely and pragmatic advice it provides, it is head and shoulders above its peers in Mexico.” Georgina Esteva and Liliana Chaveznava are anchors of the prosecution practice; while Mauricio Escoto Martínez de Castro sets the tone in the patent and trademark litigation division.
TMI Abogados SC

“More than just smart, savvy lawyers, the people at TMI are true business partners who understand your objectives and work tirelessly to get you results.” “Extremely collaborative and action oriented, Kiyoshi Tsuru is a great leader of the team. He makes it clear that he wants you to succeed and understands that it isn’t always just about getting a particular legal result; he is exceptional in his understanding of the intersection of law and business.” He is often called in to take over cases in which others have failed to make headway; unafraid to break the mould and push the boundaries of what it is possible to achieve in Mexico, he cleverly applies legal doctrines from other fields to break new ground in the IP realm. One of his best tricks has been to surround himself with a cadre of talented younger lawyers with the drive to keep up. Junior partner Rodolfo Rangel is always in the trenches, digging deep into his reserves in time-sensitive, commercially critical cases.

“Uhthoff is the steadiest IP firm in Mexico and it must be in the gold tier.” “It offers competitive prices, and turns matters around quickly and in an effective and zealous manner.” Its prosecution operation comes in for warm praise, particularly in terms of its astute management of large portfolios for household-name clients. Consuelo González-Rodríguez has been a lodestone here for over three decades and a partner since 1991; virtually no one else is as familiar with IMPI procedures. An influential figure in the Mexican group of the International Association for the Protection of Intellectual Property and the International Trademark Association (INTA), she is well connected and cognisant of the latest international trends and developments. Eryck Castillo has a bloodhound’s nose for solutions that help clients to reach their commercial end zone: “Highly proactive and customer oriented, he maintains outstanding relationships with clients.” With a background in litigation, Marcela Bolland Gonzalez knows what it takes for a prosecution history to stand up in court and builds up portfolios with an eye on potential litigation. Prosecution isn’t the only game the firm can play in the major leagues – it litigates at a high level, too. Saúl Santoyo is an inspiring leader of the contentious arm and the architect of successful and sweeping enforcement programmes.
Von Wobeser y Sierra SC
Von Wobeser y Sierra earns the highest commendations from clients: “Rupert Hüttler’s clearance and prosecution team is very responsive, and its opinions and guidance are sound and based on a strong practical and business sense. Its administration of files, reporting and invoicing are just what you need – prompt and efficient. Friendly and down to earth, the team is a pleasure to spend time with.” Hüttler has recently handled projects for AB InBev, Mars and JCDecaux, displaying a particularly deft touch on the transactional aspects of his work. Marco Tulio Venegas takes the reins of the litigation practice. He has made his name in some of the largest commercial arbitrations to ever take place in Mexico and in disputes across multiple legal fields, securing great results. Intellectual property, though, features prominently in his practice, and his combination of substantive IP and general procedural know-how does wonders.

Individuals: enforcement and litigation

Roberto Arochi - Arochi & Lindner SC
Adolfo Athié - Basham, Ringe y Correa SC
Antonio Belaunzarán Martínez - Olivares
María Teresa Eljure - Arochi & Lindner SC
Esteban Gorches Guerrero - Müggenburg, Gorches y Peñalosa SC
Hedwig Lindner - Arochi & Lindner SC
Martin Michaus - Basham, Ringe y Correa SC
Saúl Santoyo - Uhthoff, Gómez Vega & Uhthoff SC
Juan Carlos Amaro - Becerril, Coca & Becerril SC
Eduardo Birman Ripstein - Mansur Birman Guakil y Wolff SC
Marcela Bolland Gonzalez - Uhthoff, Gómez Vega & Uhthoff SC
Alejandro Cárdenas - Mcoy Abogados
Laura Collada - Dumont Bergman Bider & Co, SC
Abraham Díaz - Olivares
Enrique Alberto Díaz - Goodrich Riquelme y Asociados AC
Mauricio Escoto Martínez de Castro - Panamericana De Patentes & Marcas SC
Bernardo Herrerías Franco - Hogan Lovells BSTL SC
Alvaro Huerta - Malpica, Iturbe, Buj y Paredes
Alberto Huerta Bleck - Calderón & De La Sierra
Luis Legarreta - Legarreta Y Asociados SC
Sergio Legorreta - Baker McKenzie SC
Alejandro Luna Fandiño - Olivares
Sergio L Olivares Jr - Olivares
Jean Yves Peñalosa Sol La Lande - Müggenburg, Gorches y Peñalosa SC
Carlos Pérez de la Sierra - Calderón & De La Sierra
Daniel Sanchez - Olivares
Kiyoshi Tsuru - TMI Abogados SC
Aldo de Landa - Arochi & Lindner SC
Carlos Hernández - Becerril, Coca & Becerril SC
Jorge León - C&L Attorneys SC
Jose Juan Mendez - Méndez & Cortés SC
Jorge Mier y Concha - Arochi & Lindner SC
Eduardo Miravete - Mcoy Abogados
Alfredo Pineda Nieto - Hogan Lovells BSTL SC
Armando Pinto - Dumont Bergman Bider & Co, SC
Rodolfo Rangel - TMI Abogados SC
Fermin Reyes - Legarreta Y Asociados SC
Alejandro Rossi - Gonzalez Rossi & Asociados SC
Diego G Rossi - IBERBRAND SC
Guillermo Sosa - Goodrich Riquelme y Asociados AC
Ana L Vargas Ramirez - IBERBRAND SC
Agustin Velázquez GL - AvaLerroux
Marco Tulio Venegas - Von Wobeser y Sierra SC

Individuals: prosecution and strategy

Antonio Belaunzarán Martínez - Olivares
Enrique Alberto Díaz - Goodrich Riquelme y Asociados AC
María Teresa Eljure - Arochi & Lindner SC
Martin Michaus - Basham, Ringe y Correa SC
Sergio L Olivares Jr - Olivares
Fernanda Ortiz Monasterio - Ortiz Monasterio Marcas y Patentes
Eduardo Birman Ripstein - Mansur Birman Guakil y Wolff SC
Alonso Camargo - Olivares
Eryck Castillo - Uhthoff, Gómez Vega & Uhthoff SC
Liliana Chaveznava - Panamericana De Patentes & Marcas SC
Laura Collada - Dumont Bergman Bider & Co, SC
Georgina Esteva - Panamericana De Patentes & Marcas SC
Consuelo González-Rodríguez - Uhthoff, Gómez Vega & Uhthoff SC
Bernardo Herrerías Franco - Hogan Lovells BSTL SC
José Hinojosa - Basham, Ringe y Correa SC
Gloria G Isla - Isla Del Campo SC
Eduardo Kleinberg - Basham, Ringe y Correa SC
Eduardo Miravete - Mcoy Abogados
Alfredo Rangel - Noriega y Escobedo
Kiyoshi Tsuru - TMI Abogados SC
Jorge Vega - Basham, Ringe y Correa SC
Victor M Adames - Becerril, Coca & Becerril SC
Marcela Bolland Gonzalez - Uhthoff, Gómez Vega & Uhthoff SC
Ana Castaneda - C&L Attorneys SC
Ernesto Erreguerena-Gonz - Calderón & De La Sierra
Rafael Heres - Legarreta Y Asociados SC
Pablo Hooper - González Calvillo SC
Rupert Hüttler - Von Wobeser y Sierra SC
Gilberto Martínez Maldonado - IBERBRAND SC
Vianey Romo de Vivar - Cervera & Romo de Vivar SC
Alejandro Rossi - Gonzalez Rossi & Asociados SC
Mariano Soní - Bufete Soní
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Issue 69