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Professional Profile

Juan is a Partner and Chair of the Intellectual Property (IP) practice of Ibarra, del Paso y Gallego, S.C. advising on the strategic planning, economic and intangible interests’ (brands and others) portfolio analyses and counselling on complex IP matters. As also a member of the Dispute Resolution practice of the Firm, he handles and prosecutes all kinds of matters involving trademarks, patents, copyrights, domain names and related judicial and administrative litigation with administrative, civil and criminal courts.

He also Co-Chairs the Life Sciences practice of the Firm overseeing important IP aspects for the pharmaceutical, chemical, technological and food and beverage industries. Juan permanently interacts with the Corporate, M&A and Transactional areas of the Firm in the protection, assessment and negotiation of IP components in transfers or dispositions of IP rights, as well as with our Civil, Commercial and Labor litigation practices in the preparation and enforcement of sophisticated non-compete and non-disclosure agreements. Juan is a Mediator for Intellectual Property Disputes before the World Intellectual Property Organization (WIPO).

Before joining the Firm, Juan was a partner at Insurance and Complex Litigation law boutique Ocampo 1890, S.C. (2015-2019) as well as at Cervantes Sainz (2005-2011), where he led the IP practice, respectively. His more than twenty-five years of trajectory in Intellectual Property began at the largest and most prominent IP boutiques in Mexico, such as Arochi & Lindner (2002-2005), Clarke Modet (1999-2002) and Olivares & Cia (1997-1998).

Some of the companies that Juan has recently represented in relevant matters and transactions are the following:

  • Burger King Corporation, in the defense against an alleged infringement lawsuit for the preservation of one of the company’s lawfully registered trademarks. The Firm has prevailed on the matter in two different processes with the IMPI (Instituto Mexicano de la Propiedad Industrial) and the Specialized IP Court of the Federal Tribunal of Administrative Justice.
  • Dan Post Boot Company (a Texas based company), in the registration of a trademark in Mexico that happened to be already registered but not in use in Mexico, for which the Firm claimed and obtained the declaration of cancellation of the trademark based on its expiration for lack of use with the IMPI, thus enabling the new registration.
  • Discovery Communications, LLC, in the disputed registration of the trademark MINI BEAT POWER ROCKERS (a very popular Discovery Channel TV show). As part of a business and marketing plan, Discovery Communications pursued the registration with an initial rejection due to the existence of a similar trademark in the same class. Through two appeals, the Firm successfully challenged and obtained the registration by proving the exclusive uses and distribution channels of the client, still within the same class, which represents an important recent precedent of its kind.
  • World Trade Centers Association (the company that connects World Trade Center operations and WTC licensees around the world), in a claim for the wrongful and unauthorized use of one of its trademarks by a priorly revoked Licensee in the State of Puebla. The Firm prevailed with both the Specialized IP Court and the Federal Administrative Circuit Court in the res judicata cancellation of the wrongful trademark.
  • Tesla International, in the registration of its trademarks’ portfolio in seven different classes for its famous Model S in Mexico.
  • Qualcomm Incorporated (the world’s leading chip manufacturer for cellular phones, used by Samsung and LG, among other renowned brands), in the IP protection of its latest development: the “Snap Dragon” chip, including the registration of its related trademarks and protection of the tag line “We invent the Tech the World Loves” related to their 5G microchips line. The Firm has also successfully filed several dozens of oppositions, thereby preserving the company’s quintessential creativity, innovation and knowledge.
  • Choice Hotels International, in connection with clearance and portfolio protection for Choice Hotels’ renowned brands and logos in Mexico, including Comfort Inn, Clarion, Econo Lodge and Quality Inn, among others. The Firm’s representation extends to the permanent filing of oppositions for the preservation of the company’s unique IP assets.

Juan obtained his Law degree (JD/LL.B. equivalent) from Universidad Anáhuac (Mexico City) in 1998. He also obtained a Master’s degree in Intellectual Property at the University of Alicante (Spain) in 1999.

In 2000 he obtained a specialization post graduate degree in Intellectual Property from the Instituto Tecnológico Autónomo de Mexico (ITAM).

Juan is a Spanish native speaker and is fluent in English.

With over two decades of teaching experience at the graduate and post-graduate levels in prestigious universities in Mexico, Juan is a renowned Professor of Intellectual Property and Industrial Property through his passage at the Universidad Anáhuac Law School (Mexico City), Universidad Anáhuac de Xalapa MBA Program (Xalapa, Mexico) and the Centro de Estudios Profesionales Fray Bartolomé de las Casas MBA Program (Tuxtla Gutiérrez, Chiapas).

Currently, Juan is a professor at the Master in Intellectual Property program of the Universidad Panamericana (UP) Law School at the Mexico City and Aguascalientes campuses, as well as with the iLab Business Hub in Xalapa, Veracruz.

Juan is an active member of the most important associations of the field, both internationally and domestically, including the World Intellectual Property Organization (WIPO, Switzerland), the Association Internationale pour la Protection de la Propiété Intellectuelle (AIPPI, France), the Asociación Mexicana para la Protección de la Propiedad Intelectual (AMPPI, Mexico), the Asociación Nacional de Abogados de Empresa (ANADE, Mexico), the Barra Mexicana, Colegio de Abogados, A.C. and the International Trademark Association (INTA, USA) where he also serves as a Member to the Bulletin Committee (Latin America Subcommittee).

T. +52 (55) 5202-0717

E. jmalvarez@ibarrapg.com

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