Mexico

Although there is a disconnect between what can be accomplished through the recently introduced Mexican opposition system and what brand owners want to achieve, rights holders and their representatives are generally positive about this important market development. The system will doubtless mature and improve in the coming years and become less of a ‘lite’ option and more of a substantive one. Meanwhile domestic companies, turned off by President Trump’s inflammatory rhetoric towards Mexico, have been looking at new markets in Europe and Asia for potential growth. This has boosted the offerings of Mexican IP firms with strong foreign associate networks. Otherwise it remains business as usual for the country’s strong roster of IP boutiques and full-service firms.

Firms

2
Calderón & De La Sierra
Goodrich, Riquelme y Asociados AC
Hogan Lovells BSTL SC
Müggenburg, Gorches y Peñalosa SC
Panamericana De Patentes y Marcas SC
3
AVA
Baker McKenzie Abogados, SC
IBERBRAND, SC
Legarreta y Asociados SC
Mansur, Birman, Guakil y Wolff SC
Mcoy Abogados
TMI Abogados
Von Wobeser y Sierra SC
Arochi & Lindner SC
“Arochi & Lindner is, without doubt, the leading firm in Mexico, especially if you’re talking about enforcement and litigation; excellent all around, it is also strong in prosecution.” Among the firm’s “reliable, responsive professionals who exceed expectations at every turn” are some very big names. Dubbed “the top trademark lawyer in the country”, famous enforcer and jurist Roberto Arochi casts an imposing shadow, while Heidi Lindner gets rave reviews from clients for her mastery of IP litigation. “She is particularly sharp and well informed, and has a keen intuition for the best legal strategies. Her comprehensive knowledge of clients’ industries and competitors can give you a definite edge.” Patent cases are Lindner’s metier, but she has street smarts when it comes to trademarks too. This is also true for Jorge Mier y Concha, who heads the patent and copyright divisions. A perennial gold tier name, María Teresa Eljure supplies resolute leadership to the trademark department she captains. She has a wealth of experience across the contentious/non-contentious divide, but is especially feted as a tough litigator who stays the course on the most demanding cases. Helming the enforcement unit is talented associate Diana Karina Martínez. “Highly professional, laser-focused, knowledgeable and an engine of the practice”, this is her debut in the WTR 1000. Another rising star is Aldo de Landa, an IP litigator with tactical trial insights way beyond his years.
AVA
Business oriented to the core, AVA looks for solutions with dogged perseverance; unlike some of its competitors, it does not get sucked into disputes unless this is in the client’s best interests. The firm is taking its unique brand to the masses and maintains a strong IP presence in multiple cities – including Cancun, Guadelajara, Merida and Mexico City – while also building up operations in Monterrey. It is active internationally, with a focus on Spain and the United States – although it does not compete directly with local entities in those jurisdictions – and Cuba. Agustín Velázquez is the man in charge and the commercial tone setter. He has a talent for getting the side’s trademark, regulatory, litigation and commercial lawyers all on the same page, so that clients benefit from multi-layered advice.
Baker McKenzie Abogados, SC
Baker McKenzie is the only international outfit that can truly be said to have cracked the Latin and Central American IP market and it is a top-of-the-line option for brand owners looking to secure and enforce their marks across borders. Heading up the regional practice and steering the ship in Mexico is Sergio Legorreta, who also co-chairs the global anti-counterfeiting taskforce; he has a lot of internal and client responsibilities on his shoulders, but this never weighs him down. Brilliant at enforcement, he has an abundance of tactical anti-counterfeiting experience; he is also an ace at strategic brand development and portfolio management. Advising Twitter in a broad, multi-jurisdictional regulatory capacity, paving the way for Tesla to operate in Mexico and anchoring an unfair competition dispute against a trademark hijacker for Tommy Hilfiger are just some of the activities that have kept Legorreta and his dynamic crew on the frontlines of Mexican trademark practice of late. Basham, Ringe y Correa sets industry standards with the rigour of its trademark counsel and has been doing so for many decades. “The firm has been able to sustain its incredible work quality” thanks to the talent and diligence of a squad of “extraordinarily good lawyers”. Supervising this sizeable set of high-calibre operators is Eduardo Kleinberg, the managing partner and head of the trademark and licensing practices. As well as being a “great lawyer and clear communicator”, “he has outstanding team-building and leadership abilities”. “A pillar of the practice”, Martín Michaus is “the finest Mexico has to offer” in the trademark sphere. The former president of the Inter-American Association of Intellectual Property is a brands guru with a fantastic network of associates in the region who always has his ear to the ground for the latest international developments. Joining these two in the gold tier is Adolfo Athié, a litigator who resolves disputes, rather than just fights them. In terms of high-level talent, Basham has an embarrassment of riches: José Hinojosa supports brand and business development by providing legal guidance to clients across all areas of intellectual property; Jorge Vega is another IP polyglot, although trademark and copyright law is his main calling. These names have all graced the pages of the WTR 1000 before, but new to the list this year is Juan Carlos Hernández, a specialist trademark consultant with a knack for IP commercialisation. “He is a rising star and very active within the Mexican Association for the Protection of Intellectual Property. His work reflects his outstanding intelligence.” Passionate about innovation and all elements of intellectual property, Becerril, Coca & Becerril is a must for companies looking to bring exciting new products and services to the market. Altough perhaps best known for its patent prowess, the firm’s understanding of the trademark area is nonetheless as rich as can be. Whether elevating the discussion from within international IP associations, tightening legal security for brand owners, inking important IP contracts or presenting resonantly in a litigation context, Becerril never fails to provide unique branding insights. Legal chief Juan Carlos Amaro runs a tight ship when it comes to administrative trademark proceedings, court litigation and anti-counterfeiting. Another key cog in this well-oiled machine is Carlos Hernández, who proves equally effective in a behind-the-scenes strategic capacity and in frontline roles. A pro when it comes to well-known marks and myriad other trademark topics, Victor M Adames manages the trademark department with alacrity. Whispers of C&L’s superlative service have become a roar of late and the nimble IP boutique has a rapidly growing client catalogue as a result. “The team is incredibly reliable, cooperative and flexible in adapting to your specific needs. It carries out instructions swiftly and accurately and charges a fair price at the end of the day.” Keeping many household-name brands happy is Jorge León; lately, he has been on the job for Teva, handling its Mexican trademarks – and parts of its wider Latin American portfolio – and advising Sony on all aspects of domestic trademark registration and protection. Fiercely results-oriented, but a down-to-earth, friendly and approachable lawyer, he is also an excellent litigator who inspires confidence as he guides his clients along enforcement pathways. He and fellow partner Ana Castaneda frequently collaborate, effectively giving patrons a two-for-one. Clients rave about Castaneda: “She provides detailed responses to queries immediately and always gives concrete recommendations on how to proceed. Her advice is to the point and informative, and her rates are extremely competitive.” One satisfied customer confides, “For me, she is by far the best in Mexico for trademarks.”
Calderón & De La Sierra

Much respected corporate, regulatory, dispute resolution and IP outfit Calderón & De La Sierra has cemented its status as a trademark powerhouse in recent years. “The firm has been hiring excellent lawyers and expanding and is one of the market’s notable success stories. There is a good atmosphere there and the lawyers are happy, which positively impacts the work and service they provide.” The IP group is best known for its litigation prowess; whether facilitating early wins or going the distance on hotly contested infringement matters, the Calderón lawyers use their razor-sharp skills to strengthen legal security for their clients. At the forefront of the practice is Alberto Huerta Bleck, “a great communicator and advocate who studies hard and identifies the most effective arguments”. As an example of his recent work, he has been acting for Danone on a complicated comparative advertising and unfair competition dispute with a large Mexican competitor. Another powerful persuader is managing partner Carlos Pérez De La Sierra, a man of unique erudition whose extensive extra-curricular teaching, writing and speaking activities keep him at the forefront of modern IP development.

Focused on quality and the provision of bespoke solutions, Dumont Bergman Bider & Co is a popular port of call for discerning brand owners. From the routine to the intricate, all trademark questions from registration to infringement are handled with care and there is no problem the team cannot get to grips with; advice is always moulded to an IP-owner’s commercial objectives. A “clever and brilliant professional”, award-winning Laura Collada is the star of the show. As managing partner, she reaffirms the ensemble’s commitment to excellence every single day and has helped oversee the implementation of sophisticated technical tools to allow for an incredibly efficient service. The 360-degree IP counsellor recently showcased her strategic abilities at the Mexican Institute of Industrial Property, advising Sanyu Rec on a registration matter which clarified the question of distinctiveness of graphic elements combined with literal elements to allow for the coexistence of phonetically identical marks. Her partner Armando Pinto is another lawyer to have on speed dial; an astute litigator, he also has a deft touch when it comes to alternative dispute resolution.
Goodrich, Riquelme y Asociados AC
Throughout its rich history, Goodrich has gone to great lengths to study and understand the industries in which it works, with a view to providing the most business-relevant advice possible. This is something that in-house trademark counsel love to see, as it gives them a heightened sense of confidence when reporting to the C-suite. Supporting a predominantly international client base, the team dishes up a comprehensive selection of trademark and other IP services that are not restricted to the domestic market but are much more regional in scope. IP chief Enrique Díaz – one of four senior partners within the organisation – “demonstrates expertise on trademark law in multiple jurisdictions in Central and Latin America and is always willing to assist”. He manages cross-border prosecution programmes with poise, but also shepherds disputes to a successful close in pragmatic fashion. Leading the charge on the litigation front, is Guillermo Sosa. Making the most of all available civil, administrative and criminal tools, he deploys his wide-ranging experience to great effect.
Hogan Lovells BSTL SC
Firms with rich IP resources on both sides of the Mexico-US border are a rare breed, but Hogan Lovells is one of the best among them. On multiple fronts, the Mexican IP team has been building impressive momentum over the past two years. Taking cost-effective, business-oriented paths to enforcement success has certainly created a buzz around the practice, while running sweeping programmes for Procter & Gamble and Hewlett-Packard has seen Bernardo Herrerías and Alfredo Pineda Nieto at their best. A tailor-made strike force for prestigious clients, the pair know how to get the best out of customs authorities and stop counterfeiters in their tracks. Drawing on over three decades of experience, Herrerías guides the firm’s Mexican IP practice with a steady hand; Pineda Nieto is endorsed by contemporaries as a rich source of insight on anti-counterfeiting and border measures. They are also at the forefront of a thriving prosecution practice, which has lately been in hot demand among Asian – and particularly Japanese – corporates; being direct and clear about courses of action and working to get clients a return on their IP protection investment has been key to successfully bridging the cultural divide.
IBERBRAND, SC
Efficiency is at the core of IBERBRAND’s ethos; the patent and trademark attorney boutique makes regional Latin American IP protection a breeze, while its ‘IBERBRAND RENEWALS’ service ensures stress-free ongoing protection. However, efficient service does not mean robotic; the professionals here display creativity in their legal thinking and take commercially purposeful action. Diego Rossi, Ana Vargas Ramírez and Gilberto Martínez Maldonado form a close-knit team. Within his management remit, and as part of his everyday client activities, Rossi has cultivated a far-reaching network of quality foreign associates, which he leverages astutely when protecting trademarks across borders; Vargas Ramírez blends expertise on litigation and portfolio management to great effect; Martínez Maldonado has the back of in-house trademark counsel and their senior managers who appreciate his pragmatism and send prosecution and transactional assignments his way without hesitation.
Legarreta y Asociados SC
Legarreta y Asociados offers an eclectic range of services and has specialist expertise in corporate law, immigration, foreign investment and insurance. However, its foundational area of practice is intellectual property; its compact team has been producing sterling results in the field for over two decades. With expertise encompassing all aspects of brand protection and enforcement, the firm leaves no question unanswered and is a reliable choice for rights holders seeking a more personal touch. For prosecution, look to Rafael Heres and for litigation, Fermin Reyes is your man; founding partner Luis Legarreta supplies high-level strategic insight in plenitude.
Mansur, Birman, Guakil y Wolff SC
A full-service firm which looks and feels like a boutique, Mansur, Birman, Guakil y Wolff scores high marks from users of its trademark practice. “The team is always available, answers quickly and proposes dynamic and effective solutions while rendering a personal service. Its high quality comes with a reasonable and competitive price tag.” Endorsements for Eduardo Birman Ripstein are especially plentiful. “In Mexico, it can be difficult to find law firm partners who directly assist you, rather than immediately delegating your matter to someone junior. This isn’t the case with Eduardo – he makes you feel cared for and secure. His response times are spectacular and he is a true IP expert with a high degree of specialisation.” Peers call him “a brilliant attorney with a very keen eye for detail” and “a safe bet for any client”. He has a pristine track record when it comes to both filing and litigation.
Mcoy Abogados
In terms of strategies that cross the contentious/non-contentious divide, Mcoy delivers results when many larger competitors cannot. Rather than simply getting marks on the register, the prosecutors obtain enforceable rights which work to help achieve long-term commercial objectives. The team makes sure it comes to any infringement battle with deep file history knowledge, putting it at a distinct advantage. Throughout 2017 the firm sustained its impressive growth trajectory, a move to new premises has given it more room to breathe and an opportunity to create new efficiencies. As leader of the company, Alejandro Cardenas provides inspiration to colleagues and clients. A former Basham associate, he has rock-solid legal training, while a stint as trademark prosecution director at Clarke & Modet has given him invaluable insight into cross-border regional IP protection. A repository of trust for foreign associates – and multinational brand owners – Eduardo Miravete Martínez earns effusive praise from all who cross his path. One source comments: “His level of service is of the highest grade, and he is one of the most professional and reliable lawyers worldwide with whom we have cooperated in over 60 years of international work. He possesses deep knowledge and broad expertise in various industries, and is an invaluable adviser on a plethora of matters in Mexico.”
Müggenburg, Gorches y Peñalosa SC
Müggenburg, Gorches y Peñalosa offers highly specialised IP advice backed up by the resources and wider perspective of a general practice law firm. Its trademark experts manifest a rare faculty for sophisticated infringement litigation and are best known for their whetted trial skills. Esteban Gorches Guerrero and Jean Yves Peñalosa Sol La Lande are experienced advocates who keep even the most determined infringers at bay. Gorches Guerrero has a particularly broad legal vision which he leverages to find creative solutions and ways forward for his clients. Peñalosa Sol La Lande’s focus on intellectual property and technology is laser-focused, but like his colleague, he is an open-minded counsellor.
OLIVARES
“OLIVARES is outstanding as an IP firm, but it has a broad commercial view of the world”; while upholding “the highest ethical and quality standards”, it is “hugely influential in the Mexican market”. Few, if any, can navigate Mexico’s enforcement system and infrastructure as well as OLIVARES, which is known for pioneering many of the most effective litigation strategies; it is worth noting that sophisticated anti-counterfeiting work – which is dangerous due to its links to organised crime in Mexico – has become a staple of its contentious practice in recent years. With five on the list – Sergio Olivares, Alejandro Luna Fandiño, Daniel Sanchez, Antonio Belaunzarán Martínez and Abraham Díaz – OLIVARES has more WTR 1000-ranked enforcement and litigation partners than any other firm in Mexico. Firm talisman Sergio Olivares oversees the organisation with poise and has kept it at the cutting edge throughout his tenure of more than 20 years as a partner, overseeing initiatives which include the opening of new industry and practice groups. The formalisation of an administrative law unit, headed by Luna Fandiño, is a recent example of this. Luna Fandiño has done much to shape the development of Mexico’s litigation and regulatory environments and is a reliable ally for any party in a dispute. Sanchez also blends litigation and regulatory wisdom and is an ace when it comes to administrative proceedings at the Mexican Institute of Industrial Property (IMPI). The sophistication of Belaunzarán Martínez’s legal thinking is the talk of the town; he has an ardent following of famous brand names, but also generously gives his time to mentoring younger lawyers within the organisation. Díaz adds value for those with diverse portfolios as a result of his tripartite copyright, trademark and unfair competition expertise. An anchor of the firm’s smooth-running, efficient and business-oriented prosecution practice, Alonso Camargo is the sixth partner ranked in the guide. Clients love his unpretentious style and draw confidence from his complete dedication to their cause.
Panamericana De Patentes y Marcas SC
Panamericana has a first-rate reputation for trademark filing and prosecution and is home to “a solid and hard-working group which performs its tasks in honest and transparent fashion”. Georgina Esteva is a leader within a fantastic line-up of trademark practitioners who has long been applauded by the market. “Her advice is thorough from a legal perspective, but practical too, and in terms of delivery, everything comes right on time.” “She’s a really classy individual – never pushy – and one of the best attorneys to recommend.” While her expertise extends from trademark clearance and registration to litigation, Liliana Chaveznava leans more towards transactional intellectual property, although she has an equally healthy bedrock of prosecution knowledge. For an out-and-out litigator, look no further than Mauricio Escoto Martínez de Castro.
TMI Abogados
TMI rightly prides itself on identifying and executing innovative solutions to trademark and IP conundrums of all stripes. A multi-pronged approach to complex trademark infringement disputes has become the practice’s hallmark thanks to pathfinder-in-chief Kiyoshi Tsuru. “When you require a seasoned IP expert in Mexico, reach out to Kiyoshi and his team; he will respond immediately with sophisticated advice and superb creative thinking. An excellent ally to have, he provides a rare level of service and is truly committed to his clients.” “Available 24/7, Kiyoshi is always willing to help. The whole team at TMI is professional and experienced and they pay attention to the small details, too. They are very used to working with European clients.” Taking his cue from Tsuru, Rodolfo Rangel is a lawyer who eschews the standard playbook and is unafraid to test boundaries. Relentless in their pursuit of client-defined wins, the dynamic duo make for aggressive enforcers with a knack for talking round IMPI and the courts. The name Uhthoff, Gómez Vega & Uhthoff is synonymous with size, tradition and quality; it is one of the largest IP firms in Mexico by headcount and is a prolific filer and litigator. The set has been a prominent presence on the market for over a century and employs eminent partners who lead by example. Demonstrating a remarkable intuition for the prevailing mood at IMPI, head of the trademark group Consuelo González-Rodríguez navigates clients through the prosecution process with an unerring compass. Eryck Castillo also “has an excellent relationship with examiners at the trademark office”. On difficult matters where typical approaches will not cut the mustard, “he is willing and able to think of creative solutions”. Also highly rated for prosecution and portfolio management is Marcela Bolland Gonzalez. She brings a litigator’s eye to her work and is able to build protection matrices which can withstand the rigours of the marketplace. The litigation vanguard is manned by Saúl Santoyo Orozco, who knows how to mount an unflinching defence of clients’ rights the moment an instruction comes through the door. He deploys quickly and with a sense of urgency, instilling confidence in clients that they are in good hands in civil and criminal contentions.
Von Wobeser y Sierra SC
Full-service outfit Von Wobeser y Sierra overlays its knowledge of black-letter trademark law with a strategic and commercial approach; as a crucial part of this, its IP team is not walled off from the rest of the firm, but integrated into it in a manner that allows for maximum knowledge and experience sharing. The firm’s IP service capability runs coast to coast from clearance and prosecution to commercialisation and litigation; with regard to the latter, the group’s alternative dispute resolution nous is an invaluable takeaway for interested parties. The cosmopolitan Marco Tulio Venegas has worked with the International Chamber of Commerce’s International Court of Arbitration and has parlayed that experience into a successful career in front of Mexican arbitral tribunals. He knows how to play it in the courtroom and has a cool head for high-stakes commercial and IP cases. The other key contact is Rupert Hüttler, who has a more non-contentious disposition. He helps companies kick start and grow their business in Mexico; part of what makes his broad advisory practice so attractive is his ability to put in place the right IP protection from the get-go and maintain at the appropriate and most commercially expedient level over time.

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
Heidi Lindner - Arochi & Lindner SC
Martín Michaus - Basham, Ringe y Correa, SC
Saúl Santoyo Orozco - 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 Cardenas E - Mcoy Abogados
Laura Collada - Dumont Bergman Bider & Co, SC
Abraham Díaz - OLIVARES
Enrique A Díaz - Goodrich, Riquelme y Asociados AC
Mauricio Escoto Martínez de Castro - Panamericana De Patentes y 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 Abogados, SC
Jorge León - C&L Attorneys, SC
Alejandro Luna Fandiño - OLIVARES
Jose-Juan Mendez - Méndez + Cortés SC
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 Alberú - TMI Abogados
Aldo de Landa - Arochi & Lindner SC
Carlos Hernández - Becerril, Coca & Becerril SC
Diana Karina Martínez - Arochi & Lindner SC
Jorge Mier y Concha - Arochi & Lindner SC
Eduardo Miravete Martínez - Mcoy Abogados
Alfredo Pineda Nieto - Hogan Lovells BSTL SC
Armando Pinto - Dumont Bergman Bider & Co, SC
Rodolfo Rangel - TMI Abogados
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 Ramírez - IBERBRAND, SC
Agustín Velázquez GL - AVA
Marco Tulio Venegas - Von Wobeser y Sierra SC

Individuals: prosecution and strategy

Antonio Belaunzarán Martínez - OLIVARES
Enrique A Díaz - Goodrich, Riquelme y Asociados AC
María Teresa Eljure - Arochi & Lindner SC
Georgina Esteva - Panamericana De Patentes y Marcas SC
Eduardo Kleinberg D - Basham, Ringe y Correa, SC
Martín Michaus - Basham, Ringe y Correa, SC
Sergio L Olivares Jr - OLIVARES
Fernanda Ortiz Monasterio - Ortiz Monasterio Marcas y Patentes, SC
Eduardo Birman Ripstein - Mansur, Birman, Guakil y Wolff SC
Alonso Camargo - OLIVARES
Eryck Castillo - Uhthoff, Gómez Vega & Uhthoff SC
Liliana Chaveznava - Panamericana De Patentes y Marcas SC
Laura Collada - Dumont Bergman Bider & Co, 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 Miravete Martínez - Mcoy Abogados
Alfredo Rangel - Noriega y Escobedo
Kiyoshi Tsuru Alberú - TMI Abogados
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 - Erreguerena y Abogados
Rafael Heres - Legarreta y Asociados SC
Juan Carlos Hernández - Basham, Ringe y Correa, 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
Close

Register for more free content

  • Read more World Trademark Review blogs and articles
  • Receive the editor's weekly review by email
Register now  
Issue 72