Alejandro Cárdenas

PROFILE

Alejandro is the Head of the IP Department of the Firm and oversees all enforcement matters. The Firm benefits from his more than 20 years of experience in IP. Alejandro is one of the top ranked IP litigators in Mexico (WTR1000 Rankings 2017). Recent high profile cases include an IP infringement case in the oil & gas industry and an infringement case involving trade dress and design rights for a pharmaceutical company. His clients appreciate his success rate in contentious matters (over 75%) but also come to him for his ability to understand their business expectations. He works with his team to provide strategic advice on IP portfolio management; ensuring his clients' IP rights have the broadest protection and the narrowest possibility of being challenged. Alejandro has an international perspective, being involved in international committees and task forces and holding an LL.M. in IP from the University of Alicante, Spain.

Talking notes on your unique selling propositions:
  • now that an opposition regime has been introduced, our advocacy skills are more important then ever in prosecution matters
  • expertise in copyright law – many TM attorneys are not as well versed in copyright law and how it can be used to supplement protection.  I have a particular expertise in this area and have been actively involved in trying to bring changes to the law in Mexico.
  • as a litigator I am accustomed to looking beyond the obvious areas of the law to find any thing (regulations/legislation) that can support the case.  This allows me (and our whole team) to offer more strategic advice then perhaps a pure IP prosecution expert would offer.   This perspective is certainly useful during Oppositions, infringement opinions and any steps towards enforcement (like drafting cease and desist letters, customs seizures etc).
  • my perspective as a litigator is supplemented by my partner’s experience in commercial matters.  This allows us to expertly handle licenses, assignments, distribution agreements, franchise agreements and other issues inherent in bringing products to market.
  • as a litigator I also have a more immediate relationship with the law and the institutions in our country.  I understand their capabilities and limitations.  Sometimes you have to get creative and involve other regulatory regimes and institutions.
  • I have an MA from Alicante in Spain and, over the last 20 years, have continued to study and have an interest in IP regimes internationally.  I think that this helps me better understand the expectations of my clients from other jurisdictions.  I don’t argue with them or tell them that “it doesn’t work that way in Mexico”.  I simply try to find an analogous result in Mexico based on my understanding of their needs.  Sometimes that means patching together different laws and methods but my team and I almost always find a way!

Contact

cardenas@mcoy.com.mx

Areas of specialization

IP Practice: Intellectual Property Laws and Treaties; Industrial Property Law; Author’s Rights Law; Trademarks; Trademark Registrations; Trademark Prosecution; International Trademark Registrations [Madrid Protocol]; Integration of Trademark Portfolios, both national and international; Commercial Slogans; Patents; Patent Prosecution; Patent Litigation; Industrial Designs; Utility Models; Author´s Rights or Copyrights; Administrative Litigation; Intellectual Property Litigation and Enforcement; Industrial Property Litigation and Enforcement; Industrial Property Infringement cases; Patent Litigation and Enforcement; Trademark Litigation and Enforcement; Copyright Infringement; Copyright Enforcement; Software Litigation; Entertainment Law; Franchises and Technology Transfers; Anticounterfeiting; Anticounterfeiting Actions; Anticounterfeiting Strategy; Unfair Competition Actions; Plant Variety Litigation; Amparo.

Languages

Spanish and English.