Consuelo Gonzalez Rodriguez

What has been your most memorable case to date, and what made it stand out?

Choosing only one case is difficult because there have been many that have made a mark on me personally as a practitioner but also on our firm – from the first national designation that our firm received from an international registration, to recent challenges with the new Federal Law for the Protection of Industrial Property that keep us constantly learning.

I would have to say that, without naming a particular one, our most memorable cases are those in which our strategy allowed our clients to obtain additional recognition, such as cases where the Mexican Trademark Office designated a trademark as famous in response to an opposition, or those in which we prevented litigation.

As head of the firm’s trademark department, what does a strong prosecution team look like, and how do you go about building one?

Overall, one of our goals is to find people that are highly skilled and have well-rounded IP knowledge that is not limited to Mexican law or criteria. Individuals should understand the subject at hand from an international perspective, since most of our clients are foreign.

Currently, our team is built upon associates who have years of experience and of whom we are very trusting. Our main focus is to have constant communication and we are often debating and sharing possible strategies to promote all points of view, which is what nourishes our daily practice.

How has your membership with organisations such as INTA, AIPPI and the ABA contributed to your professional development?

Hearing different points of view, meeting people from around the world who share their perspectives and learning about the practice in their countries are the most important benefits of being a member of different organisations.

This not only allows me to stay up to date with legal changes in other countries, but also allows me to find analogous criteria that could be used in Mexico.

What inspired you to pursue a career in intellectual property, and what advice would you give to others considering a similar path?

My interest in intellectual property stems from a deep appreciation for creativity and innovation in all of its forms. The possibility of protecting and advocating for the ideas and creations that drive cultural and business advancements motivated me to embark on this professional path. What attracted me to this field was the complexity of balancing creators' rights with the public's needs, as well as the chance to work on cases that have a real and tangible impact on the world around us.

For those considering a career in intellectual property, my first piece of advice would be to prepare for a constant commitment to learning. This is a field in which laws and precedents can frequently change, and this requires adaptability and keeping updated in order to stay ahead.

Second, I would highlight the importance of understanding the global aspect of intellectual property. Even if your practice starts with focusing on national legislation, the nature of many industries means that you will deal with matters that cross borders. Therefore, an understanding of international treaties and how intellectual property is handled in different jurisdictions is invaluable.

Finally, I would encourage active involvement in relevant professional organisations. These not only offer educational resources and professional development opportunities, but also the chance to connect with peers around the world. These connections can be incredibly enriching and provide a wide range of perspectives and experiences that can inform and enhance your practice.

By following these tips, I hope that future IP professionals can find a career filled with interesting challenges, opportunities for continual learning and the satisfaction of knowing that they are significantly contributing to the protection of creativity and innovation.

If you could change anything about the prosecution process in Mexico, what would it be and do you think it is likely to happen?

Although the prosecution process in Mexico is one of the fastest in the world, the truth is that the examination criteria is constantly changing, which affects not only our daily practice but our clients and the users of the IP system.

I think that this is because of the frequent changes in leadership and administration of the Mexican Trademark Office. Therefore, it is important to ensure that all examiners have a homologous criteria, despite current or upcoming changes within the general administration of the office.

Your practice covers a wide array of industries, from fashion and luxury goods to pharma and biotech. How do you adapt your approach depending on the type of client you are dealing with?

Fortunately, from a trademark prosecution perspective, we do not have to significantly change our approach for our clients, despite the multitude of industries in which they operate.

For all of our clients, we first try to identify how deep their knowledge is, and depending on that, we will adjust our language to make things easier for them to understand.

We always try to break down every step of the actions that we are going to take, making sure that there is no doubt or confusion.

Which recent decisions or legislative developments are having the biggest impact on trademark strategy in Mexico right now, and why?

Since the amendments of the law came into force on 10 August 2018, as well as the publication of the new Federal Law for the Protection of Industrial Property, which has been in force since 5 November 2020, it is now compulsory to file a declaration of use at the third-year anniversary of a mark, along with the renewal.

For national registrations this is not a big issue, but for national designations derived from international registrations, this change has had a huge impact. There is still confusion concerning the dates, the timeframes in which the declaration of use will have to be submitted and the exceptions, which forces us to formulate special strategies and tailor-made suggestions.

What were some of the biggest challenges facing your clients in the last 12 months, and how did you help them to overcome these?

Again, one of our biggest challenges was understanding the computing of renewals and declarations of use derived from international registrations.

Also, the constant changes in the criteria applicable to oppositions has led us to take very specific approaches.

To what extent have you seen IP offices cancelling foreign marks as a result of geopolitical conflict, and should this be a concern or consideration for clients?

Fortunately, the Mexican Trademark Office does not get involved in geopolitical conflict and, at least until this point, has never taken sides or applied criteria that could cause negative repercussions for clients or users of Mexico’s IP system.

What are three key pieces of advice for foreign rights holders hoping to file in Mexico?

Foreign rights holders should keep in mind:

• the times of examination in Mexico, which are fortunately faster than filing using the Madrid System;
• that Mexico is a single-class application system, therefore multiclass applications are not allowed; and
• that in Mexico, although use is important, registration is what grants holders’ rights to take action against third parties.

As a bonus point, it is important to take into consideration that opposition procedures in Mexico are quite unique and are not similar to United States or European Union procedures.