Intellectual & Industrial Property

Services

Our Intellectual Property practice primarily focuses on the protection of intangible assets, including the registration of trademarks, trade dress, distinctive signs, utility models, patents, industrial designs and creative works, for foreign companies entering the Mexican market and domestic companies seeking to protect their creations and inventions. We conduct preliminary analyses and develop strategies for the protection of intangible assets. An important part of our practice also involves assisting Mexican clients in the registration and protection of their assets abroad.

We assist companies in implementing intangible asset capitalization structures, including the legal implementation of franchise models and the preparation of licensing agreements. We train the relevant business areas and work on the implementation of personal data management systems in accordance with applicable law. Likewise, in cases of unauthorized use or infringement of rights, we initiate opposition proceedings, administrative actions for nullity, cancellation and infringement, nullity lawsuits, and mediation and arbitration proceedings.

Our Intellectual Property practice covers various aspects of the field, with a particular focus on the following services:

1. Trademark registrability studies in Mexico and abroad.
2. Development of strategies for the protection of intangible assets.
3. Trademark registrations in Mexico and abroad.
4. Intellectual property contentious proceedings.
5. Commercial infringement actions before IMPI.
6. Trademark infringement actions before IMPI.
7. Arbitration proceedings in industrial property and copyright matters.
8. Domain name disputes.
9. Protection of inventions in Mexico and abroad, in accordance with international treaties.
10. Preparation and negotiation of franchise and licensing agreements.
11. Preparation and negotiation of sports sponsorship agreements.
12. Preparation and negotiation of confidentiality and non-disclosure agreements.
13. Preparation and negotiation of collaboration and correspondence agreements for the use of appellations of origin.
14. Registration of collaboration and correspondence agreements for the use of appellations of origin before IMPI and the CRT.
15. Preparation and negotiation of work-for-hire agreements.
16. Image rights protection proceedings.
17. Specialized intellectual property advisory services.
18. Development and training for the implementation of personal data protection policies and confidential information management.
19. Development of guidelines for the implementation of privacy notices and personal data management.

Representative Matters

Vino Tres Mujeres (2022). We filed a trademark application that was rejected by IMPI on the grounds that it was confusingly similar to a previously registered trademark. We initiated a nullity lawsuit against the refusal decision, in which the Specialized Intellectual Property Chamber ruled in our favor and recognized, for the first time, the principle of trademark specialty or specialization.

Entertainment Industry (2017). An unauthorized publication of an individual’s image was made by a nationally circulated magazine. We initiated a commercial infringement proceeding before IMPI; the infringement was declared and the Specialized Intellectual Property Chamber upheld the decision. The case recognized the right to self-determination over one’s own image, including for highly exposed individuals, such as entertainment industry artists.

Trademark Registered in Mexico and Guatemala (2021). Due to the unauthorized use of a trademark that infringed the exclusive rights of the owner of a duly registered and actively used trademark in Mexico and Guatemala, with prior rights, we initiated infringement proceedings for unauthorized trademark use. The opposing party counterclaimed by filing an administrative nullity action. Before IMPI issued its final determination, the parties reached a mutually satisfactory settlement, which we helped structure and document. The claim was relevant due to the specialized nature of the market and the claimant’s relevance within that market.