IP Litigation

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IP Litigation

When litigation is necessary to protect clients’ intellectual property rights, the dedicated IP Litigation team at OLIVARES has an unmatched history of success. The firm’s attorneys have substantial experience in the Mexican administrative and judicial processes concerning intellectual property as well as exceptional technical knowledge. This expertise allows the firm to ensure the strongest likelihood of success in a courtroom or at a tribunal.

In recent years, OLIVARES’ IP litigation attorneys have won a number of precedent-setting cases in Mexico in patent, trademark and copyright matters, at both the Federal Circuit Court level and the Supreme Court level.

OLIVARES is often engaged by clients after other firms have failed. Consistently, companies and outside counsel approach the firm when they have been unsuccessful in the first instance of patent, trademark, and copyright registration litigation. The size and depth of expertise in the IP litigation department at OLIVARES is unparalleled, and this is reflected in the results the firm achieves on behalf of clients.

OLIVARES litigators represent intellectual property owners before various authorities:

  • Mexican Institute of Industrial Property (IMPI)
  • Mexican Copyright Office (INDAUTOR)
  • Federal Commission for Protection Against Sanitary Risks (COFEPRIS)
  • Federal Institute for the Protection of Consumers (PROFECO)
  • Federal Court for Administrative Affairs (FJA)
  • District Courts
  • Circuit Courts
  • Mexican Supreme Court
  • Internet Corporation for Assigned Names and Numbers (ICANN)
  • National Institute for Transparency, Access to Information and Personal Data Protection (INAI)
  • Mexican Customs Authority
  • Other regulatory and judicial bodies

Some recent notable success stories have come from all three IP areas:

In a landmark case, OLIVARES was the first firm in Mexico to represent a company at the Supreme Court level and use unfair competition law to secure an award for damages for trademark infringement, reversing the Federal Circuit Court’s decision, which was made using the wrong criteria. It is this type of 360 degree thinking that has made the litigation department at OLIVARES so successful.

In patent litigation, the firm is the pioneer of several of the common prongs in patent litigation in Mexico, such as: amounts of bonds and counter bonds, injunctions criteria, their enforcement and maintenance, legal standing, proof of experts, technical evidence, damages and other relevant issues during patent litigation that have been construed as legal precedents derived from OLIVARES cases.

Firm’s attorneys were able to gain Data Package Exclusivity rights for Pharma products for the first time in Mexico and obtained a correction resulting in an extension of the life term of pipe-line patents to match that of the ‘parent‘ patents granted abroad. This will now allow R&D Pharma companies to gain many more years of IP protection, and it is predicted that this decision will save well over $1 billion dollars in potential lost sales over the next few years.

In a landmark pro bono case, OLIVARES represented the producers and directors of a controversial documentary that challenged the Mexican criminal system and ended in a precedent-setting change that altered how image rights are handled within documentaries.

OLIVARES, in one of the most recent cases at the Mexican Supreme Court, defined actual use of a trademark, avoiding simulated or token use to preserve a trademark registration. This is critical for corporates and brands suffering from the continued activity of kidnapping or squatting on famous trademarks in Mexico. The decision in this case leads to the prevention of frivolously obtaining trademark registrations in Mexico.

WE KNOW IP LITIGATION

Alejandro Luna F.

Partner

Alejandro Luna joined OLIVARES in 1996 and being made partner in 2005, he has been instrumental to the firm’s IP Litigation, Regulatory, and Administrative Litigation practices. He co-chairs the Life Sciences & Pharmaceutical Law industry group and coordinates the Litigation Department.

Abraham Díaz

Partner

Abraham Díaz is a partner and co-chairs OLIVARES’ Privacy and IT Industry groups and has a wealth of knowledge across all areas of intellectual property (IP), with a focus on copyright, trademarks, unfair competition, litigation, licensing and prosecution matters.

Armando Arenas

Partner

Armando Arenas joined OLIVARES in 2000 and became a partner in January 2017. He has experience working on a range of IP matters, including consulting and litigation on trademark, patent, unfair competition, trade dress protection, and misleading advertising cases before the Mexican Institute of Industrial Property (IMPI), Federal Court of Tax and Administrative Affairs (FCTA), Federal Circuit Courts (FCC) and the Supreme Court of Justice (SCJ) Regulatory Affairs and Public Acquisitions.

Daniel Sánchez

Partner

Daniel Sanchez joined OLIVARES in 2000 and became a partner in 2011. He is one of the leading intellectual property (IP) and administrative litigators in Mexico and is recognized by industry rankings and publications.

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