Areas of practice
Intellectual Property and Franchising
Our firm provides legal advice to protect industrial and intellectual property rights, including the assistance in the registration of trademarks, patents, industrial designs, software programs, domain names and author’s patrimonial rights, as well as all aspects of prosecution and advisory services in the fields of patent, industrial design, trademark, copyright, trade secret law and registration request filed by third parties, which can conflict to the rights held by our clients.
Additionally, we have vast experience in the analysis, negotiation and drafting of technology transfer agreements, technical assistance agreements, license and assignments, license and assignment of industrial and intellectual property rights agreements and franchise, as well as their recording before the corresponding authorities when applicable.
Our practice also includes performing legal due diligences in this area to identify contingencies related to industrial and intellectual property rights, or any limitations in the exercise of such rights by their owners and/or licensees.
Our lawyers have developed expertise in:
- Contracts related with IP matters in Mexico and in Latin America.
- Copyright and Digital Media
- Domain name disputes
- Industrial and Trade Secrets
- IP Enforcement and Compliance
- IP Protection
- Litigation
- Social media disputes
Franchising and Licensing
Our firm’s Franchising, Licensing and Distribution Practice Group has a developed expertise at counseling domestic and foreign clients, from the scheme design to the implementation of franchises in Mexico.
We provide comprehensive advice to clients in all legal and business-related aspects, including the corporate, contractual, intellectual property and tax matters to be taken into consideration for the structuring of franchises, licensing, distribution and marketing of their products and services.
We have substantial experience providing legal opinions on the scope and implications of franchising, licensing and distribution schemes in Mexico and its impact on a global scale business standpoint, including the structuring and establishing of franchise networks and master franchises, as well as in area development and unit franchise agreements, with the drafting and negotiation thereof and their registration before relevant Mexican authorities. We also advise on the analysis of potential breach and/or unfair competition, to undertake applicable legal actions, from cease-and-desist orders to representing clients in litigation and dispute resolution proceedings.
We advise our clients on the planning and managing of a complete franchise, license business and their intellectual property portfolio, reporting on the laws, regulations, treaties, requirements, processes, renewals, and other required aspects to achieve effective legal protection. In this regard, our team works closely with clients to efficiently assess their needs and thereafter provide tailored advice.
We are actively involved in national and international associations related with franchising and often invited as speakers in conferences organized by these, including the Mexican Franchise Association (Asociación Mexicana de Franquicias -AMF), the International Franchise Association (IFA), International Bar Association (IBA), the American Bar Association (ABA), and the Mexican Bar Association (Barra Mexicana de Abogados – BMA).
We have a good blend of clients, which includes renowned franchises from a wide range of industries.
Our lawyers are experts in:
- Customs and International Trade
- Franchising, Licensing and Distribution
- Manufacturing and Maquila Operations
- Marketing
- Technology and Outsourcing
- Little Caesar Enterprises
- American Airlines
- Italian Coffee Company
- Banorte
- Red Bull with the registration of “reservation of rights” related to “Red Bulletin” magazine, as well as the processes for administrative permits, certificates, and authorizations, before the “Comité Calificador de Publicaciones y Revistas Ilustradas”.
- Amazon/ Audible by drafting and legal advice on the respective agreements to protect Audible’s copyrights inherited within the Audio Books.
- AAA, worldwide professional Mexican wrestling company with analysis and legal advice. We devised a legal strategy to have professional wrestlers recognized of all characters and copyrights in favor of the AAA.
- KioNetworks in obtaining the patent named “Centro de Datos Móviles ATOM”. We conducted prior art searches, legal opinion, and all stages of patent prosecution in Mexico, the US and Europe.
- Protactic with the registration processes related to all tactical uniforms used in the military industry.
- FCA US, LLC with the registration of several patents used across the automotive industry in Mexico.
- KioNetworks, where we defended the client in an allegedly patent infringement action filed by American Resources, S.A. de C.V., related to the Vehicle Entry and Exit Control System in Customs Areas, which concluded in a resolution favorable to our client.
- Envases Universales, with the patent cancellation action related to the technology applicable to the bottom of a 2.5 lt recyclable PET bottle owned by Continental Pet Technologies, Inc, which resulted in cancelling such Patent, and in consequence, the non-infringement by our client.
- Sigma Alimentos/Yoplait, where we implemented a legal strategy to nullify the trademark registration “GRIEGO” for dairy products, which was owned by Nestlé. This was a relevant since by cancelling such trademark, the exclusivity is no longer with Nestlé and could be used by any third party without infringing trademark rights.
- British Petroleum in the drafting of formats for the franchise agreement and sub-lease agreement to be used by BP with convenience store operators. We also assisted in adapting the formats for several specific stores. We advise them on a daily basis on follow-up issues.
- Wyndham Hotels in all the implications of its franchise agreements in Mexico. We prepared the current standard form of its franchise agreement and we have carried out due diligence regarding more than 15 hotel franchise agreements, to verify that they comply with the requirements set forth by Mexican franchise law.
- Diltex in the implementation and structure of a joint venture with Etam, for the marketing, distribution, and sale of specific textile products in Mexico, which shall serve as the vehicle for the development and growth of the Fiorentina and Etam trademarks and business within Mexico.
Lawyers in this area
