Carlos Reyes

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Carlos Reyes

Carlos Reyes joined OLIVARES in October 2008. The main focus of his practice is in TRADEMARKS, providing counseling and legal advice in trademark Law and the protection of trademark rights. He is also devoted to a large variety of trademark’s prosecution and litigation matters in the firm, including domain name/trademarks LDRP and UDRP disputes before WIPO.  He also advises the firm’s clients on how to better assure their trademark rights, overcoming provisional refusals based on trademark’s distinctiveness or likelihood of confusion, negotiating letters of consent or coexistence agreements and preparing and filing invalidation and non-use cancellation actions.

Articles

  • “SPECIALIZED IP COURT CORRECTS IMPI” Managing Intellectual Property [May 2010]
  • “LEGAL EFFECTS OF COEXISTENCE AGREEMENTS” Managing Intellectual Property [Oct 2013]
  • “TRADEMARK USE IN MEXICO: A SERIOUS ISSUE” The Trademark Lawyer Magazine [Oct 2014] with Antonio Belaunzaran (Partner)
  • “PROTECTING NON-VISIBLE SIGNS” Managing Intellectual Property [Oct 2015]
  • “URGENT UPDATES TO TRADEMARK LAW IN MEXICO” The Trademark Lawyer [May 2017] with Antonio Belaunzaran (Partner)

When I’m not being a lawyer…

I’m interested in literature from all over the world and in music of very different times and styles: from Gregorian Chants to contemporary film music; from orchestral and chamber music to Latin salsa and Jazz. Over the past few years I’ve been practicing yoga, a discipline of which I am a big fan.

Representative Cases
  • Varco I/P, Inc. vs Mexican Industrial Property Office (IMPI) and third- successfully arguing before Courts absence of likelihood of confusion between client’s DWD TOTCO mark and MD TOTCO & Design (2009).
  • Varco I/P, Inc. vs IMPI -successfully arguing before Courts distinctiveness for TUBO-WRAP in regard to class 40 services (2009).
  • Lehigh Consumer Products Corp. v IMPI –successfully arguing before Courts distinctiveness for SECURELINE mark in regard to class 6 and 22 products (2009).
  • SAS Jules vs IMPI and third – successfully arguing before Courts absence of likelihood of confusion between client’s JULES & Design mark and JULES RIMET CUP & Design (2009).
  • Santo Spirits, Inc. vs IMPI – successfully arguing before Courts distinctiveness for AMBHAR mark in regard to class 33 products (2009).
  • Ivanka Trump Marks Inc. vs Arabela, S.A. de C.V. – obtaining cancellation of Arabella’s registered mark for IVANKA in class 14, however used for complementary products (2010). Important as including successful arguments on the nature of clothing accessories.
  • Millipore Corporation vs IMPI – successfully arguing before Courts distinctiveness for ADVANCING LIFE SCIENCE TOGETHER mark in regard to several class products/services (2010).
  • Laureate Education, Inc. vs IMPI – successfully arguing before Courts distinctiveness for TEACHER OF TEACHERS mark in regard to class 41 services (2010).
  • Cirque du Soleil i.i.i. S.A. vs IMPI and third – successfully arguing before Courts absence of likelihood of confusion between client’s TOTEM CIRQUE DU SOLEIL mark and TOTEM & Design (2011). Important because the Court reverted IMPI’s decision considering confusingly similar the marks without considering the high distinctiveness of CIRQUE DU SOLEIL mark.
  • Honeywell International Inc. vs IMPI and third – successfully arguing before Courts absence of likelihood of confusion between client’s PROFIT mark and PROFIT FROM OUR EXPERIENCE slogan mark (2013). Important because the Court reverted IMPI’s decision not considering the different nature of slogans and trademarks.
  • Best Buy Stores, S.R.L. de C.V. vs. IMPI and OMX, Inc. – successfully arguing before Courts the lack of distinctiveness of BLACK FRIDAY in relation with class 35 advertising services (2014). Important because IMPI considered that the fact that BLACK FRIDAY was not used in Mexico in relation with a sales campaign implied distinctiveness in Mexico while it was duly proved that the term was clearly known by Mexican consumers as referring to sales campaign.
  • KIA Motors Corporation vs IMPI – successfully arguing before Courts the absence of likelihood of confusion between client’s KIA A DIFFERENT BEAT & Design mark and BEAT in class 12. Important because rebutting an IMPI’s decision based on the “inclusion” criterion, determining likelihood of confusion derived on the fact that the earlier mark is included into the new, without considering the different overall impression of the marks.
  • ROLEX SA vs IMPI – successfully arguing before Courts distinctiveness for TWINLOCK in regard to class 14 products (2016). Important because IMPI refused registration for the mark assuming this described a feature of the products (DOUBLE LOCK), which was proved was false as the term was ambiguous and required imagination and cognitive effort from the consumers.
Education
  • Catholic Pontifical University of Peru. Law Degree in 1993
  • Centre for International Intellectual Property Studies (CEIPI) – University of Strasbourg (France), Master’s Degree in Industrial Property Law and Agreements in 2001
  • Centre for International Intellectual Property Studies (CEIPI) – University of Strasbourg (France), Master’s Degree in Intellectual Property and Internet Law in 2002
Languages
  • English
  • French
  • Spanish
Carlos Reyes

Attorney

+52 (55) 5322 3000 Ext. 3806

Vcard


Practice Areas

Offices

Mexico City

Pedro Luis Ogazon 17
01000

T: (5255) 5322 3000
F: (5255) 53 22 30 01