As a nation brand, Mexico is the most valuable in Latin America. The country is also an alluring market for foreign investors, as a testament to this it regularly scores highly in trademark registration activity rankings. Meanwhile, the Mexican Trademark Law Reform passed in August 2018 significantly enhances the protections afforded to brand owners; non-traditional marks can now be registered; acquired distinctiveness will be recognised; certification marks can be protected; and a greater emphasis will be placed on evidence in opposition proceedings to which the trademark office will also be required to issue reasoned decisions. These are very positive changes for brand owners and should fuel increased trademark activity in the strategically important jurisdiction.
“Arochi is an exceptionally responsive firm which always finds a way to surpass expectations when providing trademark advice.” In Roberto Arochi, it has “the leading trademark lawyer in Mexico”, as well as an incredibly deep bench of experts collectively ready for anything. Alongside Robert Arochi in the gold tier are Heidi Lindner and María Teresa Eljure: Lindner takes the lead on patent litigation but is an ace on brand-related matters, too; Eljure is first-rate when it comes to both trademark prosecution and litigation, and is one of the country’s best brand specialists. The partners are flanked by an outstanding crew of associates. Bringing the hammer down on counterfeiters is enforcement department captain Diana Karina Martínez; while Aldo de Landa is an up-and-coming litigation star with a kaleidoscopic range of winning trial strategies up his sleeve.
AVA is a discerning choice for companies with diverse IP portfolios who want to be close-knit with their external service providers. The set’s comprehension of not just trademark law but the business of brands is rich – which has enabled it to consolidate its prosecution practice; it builds portfolios into coherent wholes and, crucially, gives them commercial impetus. Agustín Velázquez makes litigation and transactional matters additional fortes for the group. He has a loyal international client following and foreign associates swear by his commercial fluency.
Baker McKenzie’s IP team in Mexico is seamlessly integrated with dedicated groups of specialists in other Latin American jurisdictions, enabling it to furnish clients with tip-top trademark protection and enforcement solutions for the region in a way that other international players in Mexico cannot. When it comes to unlocking brand potential across borders, Sergio Legorreta has the keys. The multitalented lawyer is also a technology guru and abundant source of anti-counterfeiting expertise.
For prominent international corporations seeking a complete commercial and IP service, Basham, Ringe y Correa is an absolute must. The firm has a 107-year history and vast institutional experience, globally minded experts in myriad legal disciplines, an excellent network of contacts through Lex Mundi and a stacked team of IP connoisseurs including some very famous names; when it comes to brands, it all makes for a thorough, holistic and impressive service. Martín Michaus, Adolfo Athié and Eduardo Kleinberg D all top out the rankings. “Utterly dependable” Michaus has done much to advance the state of the art in Mexican and Latin American intellectual property through his leadership of the Inter-American Association of Intellectual Property and other IP organisations. Athié is a litigator and counsellor par excellence and the most experienced in Mexico when it comes to administrative litigation. He receives vital support from senior associate Eduardo Castañeda, an artful persuader who makes his debut in the WTR 1000 this year. Praised for his “responsiveness and clear communication”, Kleinberg brings strong leadership to the firm and to the IP division in his roles as managing partner and head of trademarks and licensing. He has done some boundary-pushing work in the field of non-traditional marks recently. Other big-hitters in the line-up include José Hinojosa, Jorge Vega and Juan Carlos Hernández. Hinojosa and Vega are excellent all-rounders with comprehensive knowledge not only of trademark law but patents and copyright, too; Hernández is a trademark, domain name and new technologies devotee.
“In the patent space, Becerril has a very strong tradition, but it is also extremely reliable on the trademark side, too.” The venerable ensemble is cited by foreign associates for its “high integrity and fast and clear communication”, and for being “very easy to partner with”. “Juan Carlos Amaro and Victor M Adames are great strategists who provide solutions when there are bumps in your way.” Amaro cuts to the chase in trademark litigation and enforcement scenarios, notching up win after win. Additional contentious firepower is supplied by Carlos Hernández. Leader of the trademark and copyright section Adames obtains ironclad trademark protection for clients and unlocks the value of their rights through astute monetisation efforts. He enhances his knowledge of black-letter trademark law with outstanding telecoms, media and technology, fast-moving consumer goods, automotive, food and beverage, retail and luxury sector insight.
C&L Attorneys ascends to the silver tier this year in recognition of its consistent growth and its high-quality, meticulous work on trademark matters. Fulfilling the needs of brand owners not just in Mexico but across Latin America is the raison d’être of Jorge León; clients put faith in his outstanding communication and organisational skills and are always richly rewarded with consistent and coherent IP strategies for the region. León’s right hand is Ana Castañeda, who renders holistic solutions to clients thanks to a panoramic perspective on the IP landscape. The pair have had a banner year taking over the entire trademark portfolio of Starbucks, handling Teva’s trademarks in Mexico and an additional six jurisdictions, enforcing the rights of Lindt & Sprüngli and doing much else besides.
Calderón & De La Sierra was originally established as a trademark agency but has grown over the past 35-plus years into a well-rounded corporate, regulatory and technology outfit. It hasn’t lost what made it special to begin with though, and is hailed by gold-ranked US sources as a “very responsive firm that consistently achieves terrific results in trademark cases”. Making the firm a destination for complex litigation and enforcement briefs is Carlos Pérez De La Sierra, an IP maestro who has fought and won numerous benchmark cases during his illustrious career. Alongside his cutting-edge courtroom work, extensive teaching and publishing activities keep him at the forefront of IP developments in Mexico. Alberto Huerta Bleck is another redoubtable litigator with many successes not just in trademarks but across the IP spectrum to his name. Cases complicated by dint of advertising, competition or regulatory matters are one of his specialties.
IP boutique Dumont has changed in significant ways in the past two years: it has implemented new technologies, made the move to a paperless environment and incorporated trademark attorneys and paralegals into the team, all of which has increased efficiency and enabled the firm to maintain its rapid-response speed even as it grows. Overseeing a practice which is strong in all trademark areas – prosecution, litigation, enforcement and transactions – is award-winning managing partner Laura Collada. An astute all-round IP strategist, she has lately been turning her tactical mind to opposition and litigation matters. Supporting her on the prosecution front is Christian Thomae, who makes his debut in the WTR 1000 this year. He has been delivering crisp results recently for watch brand Omega and the International Olympic Committee thanks to his clear lines of reasoning and astute argumentation.
“Goodrich, Riquelme y Asociados has always provided a cost-effective, practical and efficient service on trademark matters in Mexico.” A magnet for brand owners and foreign associates when there are complex problems to sort, Enrique Díaz “runs a busy and successful practice”. “He has excellent connections internationally and does a great volume of work for US entities. He is exceptionally detail oriented and further distinguished by his professionalism, responsiveness and experience.” His expertise encompasses all aspects of the protection and enforcement of intellectual property. Guillermo Sosa, meanwhile, specialises in IP infringement litigation and domain name disputes.
Representing the perfect marriage of local expertise and international capability, Hogan Lovells is a great choice for global brand owners looking to do business in Mexico and expand in Latin America armed with a strong IP portfolio. Bernardo Herrerías Franco is a motivational leader of the IP group and a poised litigator. He has decades of experience and knows the lay of the land extremely well, having participated in legislative reform efforts. His influence also comes by way of his leadership of the Mexican Association for the Protection of Intellectual Property. When you bring Herrerías and Alfredo Pineda Nieto on board, you’ve got more than enough firepower to take down the most tenacious counterfeiters. Pineda is an ace on border measures enforcement.
From its base in Mexico City, IBERBRAND renders a tight pan-Latin American trademark service. Highly appreciated for its prompt responses, diligence and timeliness – and recognised for its strategic creativity on cross-border matters – the team moves up to the silver band this year. Diego Rossi, Ana Vargas Ramírez and Gilberto Martínez Maldonado form a constellation of stars. Rossi, the ensemble’s general manager, is a “well-rounded professional who provides a personalised service. He’s unbelievably quick at answering queries and is really well connected.” He oversees filing and prosecution work for Xiaomi, Hanes and Puig, among many other well-known names. Vargas, who anchors the litigation and international departments, is known for her tenacity and the clarity with which she issues arguments and opinions. Maldonado serves as head of the trademark and copyright practice. He has an excellent business head on his shoulders and provides commercially attuned advice to brand owners. The three are very tight-knit and use each other as strategic sounding boards so that nothing gets missed.
“Legarreta is a dynamic player – it is active in the market and attracting new clients, and it certainly has the expertise to give them an excellent service.” Intellectual property is the first love of the firm, which has a strong line-up of lawyers to cater to the full needs of trademark rights holders. Luis Legarreta is the go-to for a strategic read on any complex problem; when it comes to litigation, Fermin Reyes is “highly efficient at bringing about successful outcomes”; Rafael Heres does a rigorous job on the prosecution front.
Companies who test out Mansur, Birman, Guakil y Wolff with routine tasks such as trademark clearance quickly find themselves sending increasingly complex and contentious work to the mid-sized firm; its IP partners are hands-on and facilitate quick wins in disputes, which saves clients time and money. Round-the-clock responsiveness is a hallmark of the team, but it’s not simply a case of ‘instructions received, thanks’; brand owners get detailed but clearly and concisely formatted advice very quickly. Top litigator and smart all-round counsellor Eduardo Birman Ripstein makes all the magic happen.
A young and spirited firm, Méndez + Cortés debuts in the WTR 1000 for 2019 after showing several years of strong growth. Its passionate and results-focused crew can’t help but notch up litigation and dispute resolution wins, spurred on by the energy of founding partner Jose-Juan Mendez. A leading light on copyright law and a go-to for advice and representation around the trademark opposition system in Mexico, he is a well-experienced lawyer with an excellent network of foreign contacts.
Müggenburg, Gorches y Peñalosa “provides practical and strategic advice on prosecution matters” but is at its best in complex IP infringement battles. Esteban Gorches Guerrero and Jean Yves Peñalosa Sol La Lande can both be relied on for a resonant performance when the chips are down. Gorches has sharpened his trial skills to a fine point as a result of the diversity of commercial, constitutional and IP cases he has handled throughout his career. The same is true of Peñalosa, who is also an authority on regulatory matters.
OLIVARES has a mantelpiece full of industry awards, a client roster stacked with household-name brands, a deep squad of experts, an outstanding résumé of trademark prosecution and enforcement victories and a long track record of improving the Mexican IP system; quite clearly, then, it is a leader in the field. There are a lot of individuals to get through, but Sergio Olivares and “major influencer” Antonio Belaunzarán Martínez are good names to start with – they provide inspiring leadership not just to the firm but also to the entire market, and are a wellspring of innovation in terms of IP practice and client service delivery in Mexico. Several others fit the thought-leader mould, too, including Alejandro Luna Fandiño and Luis Schmidt: Luna is a big-time litigator and a regulatory law aficionado; Schmidt is the top name in Mexico in the media and entertainment sector. Busy in the same, Abraham Díaz flexes high-calibre copyright expertise; but he’s a superb IP all-rounder and great on matters at the intersection of trademark and IT law, such as domain names and data privacy. Alonso Camargo is the embodiment of one of the firm’s greatest strengths – an ability to communicate with and get results out of the Mexican Institute of Industrial Property (IMPI). Commentators describe him as “responsive, client focused, fast working and highly knowledgeable”. Should obstacles arise during prosecution, Daniel Sanchez can sort them out effortlessly thanks to his mastery of administrative litigation proceedings before IMPI. He excels in heavily regulated industry sectors.
For effective IP solutions, Panamericana can be relied on 110%; over the course of nearly 80 years it has guided clients strategically through the process of obtaining valuable patent and trademark registrations in Mexico. Appreciative of the value of trademarks as business assets, Georgina Esteva leads the way. “She is far and away one of the best trademark practitioners south of the US border. She stands out for her pragmatism, timely interventions and highly insightful advice.” Liliana Chaveznava also acquits herself with distinction on the non-contentious front, displaying dexterity in prosecution and IP transactional negotiations. Anchoring a robust patent and trademark litigation practice is Mauricio Escoto Martínez de Castro.
The professionals at TMI do trademark work with a glimmer in their eye; they get a buzz out of innovating on litigation tactics and pulling out wins against tenacious opponents. Managing partner Kiyoshi Tsuru Alberú sets the tone here. He comes up with the right strategy at a case’s outset, pursues it tenaciously and stays on top of everything along the way, meaning he doesn’t miss opportunities to do damage to the other side. His partner Rodolfo Rangel deep-dives into market research to turn things in favour of his clients, but also simply outworks others to help bring disputes to a successful close for his side.
Illustrious firm Uhthoff, Gómez Vega & Uhthoff has been at the vanguard of IP development in Mexico for well over a century; there’s virtually nothing it hasn’t seen or done before. The 11 partners who currently run the IP practice don’t just sustain the organisation’s legacy of excellence, they further it. On the brand side, principal responsibility for this falls on the shoulders of consummate professional Consuelo González-Rodríguez, a “dependable” senior lawyer who knows all about the business of brands. She brings more than three decades of trademark experience to the table and is described by foreign associates as “simply fantastic all round”. Prosecution and enforcement dynamo Eryck Castillo has over 25 years’ experience. He garners positive feedback, too, and is lauded as a “highly proactive lawyer who maintains outstanding relationships with clients”. Cited particularly for her counselling and trademark prosecution proficiency, Marcela Bolland Gonzalez, like her partners, finds lots of ways to enhance the value of her service thanks to broad experience across the contentious/non-contentious divide. Head of litigation Saúl Santoyo Orozco is the best choice for cases in which only a win will do. He’s a no-nonsense enforcer for prestigious clients who routinely presents textbook-worthy arguments to judicial authorities.
General practice outfit Von Wobeser y Sierra is eminently capable in intellectual property and dispenses a full suite of trademark services characterised by a commercial focus on quick, efficient but satisfying results. The group manages international trademark portfolios with alacrity and has clients well covered when trouble brews thanks to the combined experience of Rupert Hüttler and Marco Tulio Venegas. Corporate and IP partner Hüttler is a reference for multinationals investing in Mexico and constantly fields IP questions; he’s quick to reply with watertight protection strategies. Venegas has vast experience coordinating complex litigations and arbitrations in intellectual property and many other disciplines.
IP devotee Ernesto Erreguerena is proficient across the IP spectrum and has excellent technical skills. From his base at Erreguerena y Abogados he maintains a cost-effective but high-quality IP protection, franchising and litigation offering. At González Calvillo, Pablo Hooper is “a superior problem solver who provides a great service”. His touch is particularly deft in transactional negotiations. Litigation boutique Malpica, Iturbe, Buj y Paredes maintains the highest international standards. Alvaro Huerta takes the reins there on a compact but potent IP litigation practice. Experienced IP connoisseur Gloria Isla of Isla Del Campo is a global international thinker; she was educated in the United States and practised for nearly a decade at Clarke, Modet & Co, whose footprint spans many territories. She applies international best practices in her Mexican trademark work, which runs the gamut. “Fernanda Ortiz Monasterio is uber-responsive and has a knack for getting great results in really difficult situations.” The popular miracle maker runs the show at Ortiz Monasterio Marcas y Patentes, a smart boutique that thinks holistically about brands. Alfredo Rangel heads the IP section of Noriega y Escobedo. He’s a leading authority on the law whose extensive speaking and writing engagements require him to stay up to date on all the latest developments in it. Vianey Romo de Vivar renders her outstanding trademark service with a personal touch. She gets to know what makes each client tick and works assiduously to accomplish their IP protection goals. The founding partner of Romo de Vivar V IP Services is highly efficient and commercially attuned.