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CDavilaPeniche

Carlos Davila-Peniche

Associate
Baker & McKenzie Abogados, S.C.

Biography

Carlos Davila is an associate in Baker McKenzie's Intellectual Property Practice Group in Mexico. He advises mainly on copyright, trademark, domain names, franchising and licensing, trade secrets protection, unfair competition, branding, advertising and protection in the digital environment, and privacy issues litigation. Carlos also heads the Firm’s Brand Enforcement department and investigation team, handling covert investigation and operations against counterfeit and piracy issues, as well as commercial and trademark use investigations.

Practice Focus

Carlos focuses on transactional IP and Litigation. His practice covers the drafting, review and enforcement of licensing and franchising agreements as well as technology and intangible assets transfer. He also counsels on clearance and litigation strategies locally and regionally, including Brand Enforcement. He represents clients from various fields and industries, such as heavy machinery, luxury and fashion goods, cosmetics, pharmaceuticals, entertainment, restaurants and hospitality, wine and spirits, toys, technology, banking and advertising.

Representative Legal Matters

  • Coordinated the investigation, advised and represented an auto parts manufacturers in the largest seizure derived from a raid of counterfeit parts in simultaneous locations.
  • Advised on the IP aspects and risks of a multimillion dollar transaction of a leading Mexican telemetry services company, with special focus transfer of know-how, trade secrets and proprietary software. 
  • Represented a car rental company in the negotiation of its local main franchise and subfranchise agreements.
  • Represented and advised a social network company in privacy-related disputes with Mexican authorities.
  • Provided IP and business advice for several cosmetics and fashion companies in litigation and strategies to deter gray market products, including enforcement of rights on-site and in digital environments.
  • Represented and negotiated for a hospitality company in a copyright and digital media dispute.
  • Advised on brand enforcement issues for a heavy machinery duty company and auto parts manufacturers.
  • Advised major pharmaceutical and life sciences companies on their strategies for the enforcement of IP rights in Mexico.
  • Advised several clients on the recovery of hijacked trademarks and domain names.
  • In cooperation with the Firm's Hong Kong office, advising a Mexican government agency on combatting piracy issues in China.

Professional Honors

  • Best Student Paperwork on Intellectual Property Matters, for thesis on “Secondary Meaning or Acquired Distinctiveness of Trademarks: A Comparative Law Analysis and its Perspective under Mexican Law,” Asociación Mexicana para la Protección de la Propiedad Industrial, 2010

Professional Associations and Memberships

  • American Chamber Chapter México - Member
  • Asociación Mexicana para la Protección de la Propiedad Industrial (AMPPI) - Member
  • International Anti-Counterfeiting Coalition - Member
  • International Trademark Association - Member

Admissions

  • Mexico (2010)

Education

  • Instituto Tecnológico Autónomo de México (Post Graduate Course Legal Argumentation) (2013)