Juan Carlos Amaro

What has been your biggest professional challenge in the last 12 months, and how did you overcome it?

The Mexican Institute of Industrial Property (MIIP) has a new general director. The MIIP has several challenges ahead – namely, complying with Mexico’s commitments in international treaties.

Moreover, the MIIP has the challenge of maintaining and increasing its management and good standards (ie, timing and quality services) by hiring duly trained staff for patent and trademarks prosecution and contentious matters.

Another challenge is to link intellectual property closer with geographical indications (GIs), appellations of origin, creators and innovators in order for the MIIP to be reliable and influenceable as a guide and leader for enhancing the IP culture in our country.

You lead your firm’s IP litigation group. What are your top tips for keeping litigation costs down in the current economic climate, especially as more people are taking cases to court?

It is crucial to develop a litigation budget that includes estimated costs for each stage of the litigation process. One should also engage experienced legal counsel that can provide valuable insights and strategic advice on how to manage litigation costs. Finally, focus on settlement negotiations as an end goal.

What are the most frequent mistakes that foreign rights holders make at the local level in Mexico – and how can they avoid them?

Foreign rights holders often fail to register their trademarks in Mexico, which can lead to trademark infringement and costly legal disputes. Foreign rights holders should register their trademarks with the MIIP.

Another frequent mistake made is failing to enforce their IP rights. This can lead to a loss of rights over time and can make it increasingly difficult to enforce those rights in the future. To avoid this mistake, foreign rights holders should monitor their IP rights in Mexico and take swift action to enforce them when necessary.

Ignoring local laws and regulations is another issue. It is important to be aware of local laws and regulations governing IP rights in Mexico to avoid fines, penalties or even the loss of rights. Foreign rights holders should seek local legal counsel and ensure that they understand Mexico’s legal framework.

Finally, one more common mistake is that foreign rights holders fail to conduct due diligence before entering into business agreements or transactions that involve IP rights.

Which recent decisions or legislative developments have had the biggest impact on the trademark landscape in Mexico in the past few years?

The most important recent legislative development was the entry into force of the Federal Law for Protection of Intellectual Property, which substituted the Mexican IP Law. It considers several possibilities, including:

  • obtaining partial invalidation actions against trademark registrations;
  • cancelling a trademark registration if the date of first use is false and its holder cannot prove otherwise;
  • non-use cancellation actions of a registration if the protected product is not in use;
  • conciliation proceedings in trademark infringement actions; and
  • claiming damages through two independent actions: filing a parallel procedure before the MIIP or filing a civil suit before the civil courts.

Last year, the metaverse and NFTs were headline news when it came to brand protection. How do you expect this conversation to evolve – or even dissipate – in the next 12 months?

This conversation is likely to continue and evolve in the next 12 months as these technologies gain more traction and popularity. As more companies and individuals enter the metaverse and create virtual assets, the need for brand protection and IP rights in these environments will increase.

For NFTs, the conversation around brand protection is likely to continue as NFTs become more mainstream and are used in various industries, such as art, music and sports. As NFTs increase in value and attract more attention, there may be more instances of infringement and misuse, which will require effective brand protection and enforcement measures.

It is possible that new legal and regulatory developments related to the use of NFTs and metaverse technologies may emerge, which could impact brand protection and IP rights. For example, some jurisdictions may introduce new laws and regulations specifically for NFTs and metaverse technologies, which would require compliance from companies and individuals.

Juan Carlos Amaro

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Juan Carlos Amaro has been a firm partner since 2010, and has almost 20 years of administrative litigation, constitutional law and international trade experience. Mr Amaro leads the firm’s IP litigation, trademark and copyright and corporate and commercial groups. He works with clients on their IP and commercial global strategies and has represented domestic and international clients in more than 500 litigation cases.

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