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.