Juan Carlos Amaro

You have been involved with several published commentaries on Mexican law; what advice would you give to young professionals just entering, or perhaps studying, law in Mexico?

My advice to young professionals, or perhaps to those studying law in Mexico, is that this career is not an easy path, as it involves developing problem solving and analytical skills and requires hard work, because the law is not understood and applied by the authorities and courts based only on legislation. In this sense, the new generation of lawyers must be conscious that they will improve their practice not only by applying the law, but also by balancing the system of rights that guarantees justice and protection for trademark holders against any violation of their rights.

What with NFTs, the pandemic, the metaverse, we seem to be living through a period of disruption in the trademark world. What advice can you give to fellow practitioners looking to future-proof their practices?

In recent years, it has become known worldwide that NFTs have gained popularity. In fact, trademark applications have significantly increased due to NFTs. Considering the above, it is essential that fellow practitioners analyse and study how NFTs are evolving, taking into consideration their international protection and what advantages and disadvantages they will have in coming years. Therefore, practitioners must recommend to their clients, including companies, that they act quickly to ensure the protection of their rights over intangible assets in the face of possible infringements.

Huge amounts of capital are pouring into the NFT space, yet it is a bit of an enigma to brand owners and even many IP professionals. What legal issues are the growth of NFTs creating and how can they be dealt with?

Ownership and licence rights are the main issues with NFTs. Most people participating in the NFT market are not familiar with the legal restrictions relating to copyrighted work, which leads to potential infringement liability. The solution is to approach an expert in IP law.

What are the main challenges that companies in Mexico face when it comes to trademark protection?

One of the biggest challenges to the protection of a trademark in Mexico is that many companies do not have the proper registration of their intangible assets including trademarks, patents and copyrights, which represents a significant issue in properly ensuring enforcement. Additionally, another challenge is that, due to the outbreak of covid-19, there have been substantial delays in the protection and enforcement of IP rights, which implies that trademark applications are not registered as quickly as they were before the pandemic and that litigation actions are not resolved as hitherto. A further significant challenge is the fact that some people have acted in bad faith, obtaining the registration of trademarks used or registered abroad, which represents a major problem since the holders of such trademarks that wish to use them in Mexico must file legal actions within the timeframe established in law to challenge registrations and be able to legally use them.

You have worked extensively in international trade, which is experiencing a period of disruption. What direction is emerging for the future of trademark law in this space?

Certainly, in international commerce and due to the rise of e-commerce, it is common to find parallel importations that lead to an increase in the grey market and the way in which trademark holders and licensees or authorised resellers face this issue.

This scenario obliges trademark holders to be able to track and identify unauthorised resellers and importers, alongside trademarks at risk of being targeted by grey market websites, leading to complaints from distributors, damaged reputation and ultimately loss of revenue.