Carlos Davila-Peniche
Biography
Carlos is a partner in Baker McKenzie's North America Intellectual Property Practice Group. He provides strategic consulting on copyright, distinctive signs, domain names, trade secrets protection, unfair competition prevention, branding, advertising and protection in the digital environment, and privacy issues litigation. Carlos also implements and develops anti-piracy actions, handling undercover investigations and operations against intellectual property rights counterfeiting matters.
Practice Focus
Carlos Dávila's professional practice covers the different areas of intellectual property. On the one hand, his practice covers the drafting, negotiation, review and enforcement of licensing and franchising agreements as well as technology and intangible assets transfer. On the other hand, he also counsels on clearance and litigation strategies locally and regionally, including brand Enforcement. Finally, Carlos develops and coordinates anti-piracy strategies and actions in Mexico, in the digital environment and in the region. He represents clients from diverse fields and industries such as heavy machinery, luxury goods and fashion, 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
- Managing IP, Rising Star in Intellectual Property (Mexico), 2019
- 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 of Commerce - México Chapter
- Asociación Mexicana para la Protección de la Propiedad Industrial (AMPPI)
- British Chamber of Commerce - México Chapter
- International Anti-Counterfeiting Coalition
- International Trademark Association
Admissions
- Mexico (2010)
Education
- University of California at Berkeley (LL.M.) (2021)
- Instituto de la Propiedad Intelectual y Derecho de la Competencia (Copyright Law) (2018)
- Instituto Tecnológico Autónomo de México (Legal Argumentation) (2013)
Baker & McKenzie Abogados, S.C. is a member of Baker & McKenzie International, a Swiss Verein.