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Fernando Robles-Pesqueira

Fernando Robles-Pesqueira

Partner
Baker & McKenzie Abogados, S.C.

Biography

Fernando is partner of the Intellectual Property Practice; he has been helping domestic and foreign clients to resolve their IP needs in Mexico and abroad since 2001, with a proven history and capabilities to resolve the most challenging and complex IP mandates, and as excellent IP litigator and negotiator.

After starting his career, and working for an IP boutique in Mexico City for seven years, Fernando joined Baker McKenzie on 2008, and he was promote to Partner on 2013. From 2008 to 2013, he created the IP Litigation and Enforcement Group in our Mexico City Office. On 2013, he moved to Guadalajara to create an IP Practice in such office, and better serve our beverage industry clients, particularly those on the tequila business. Currently, he coordinates the IP Practice in our five offices around Mexico.

Practice Focus

Fernando helps clients from practically all industries, but mostly from the industries of Consumer Goods & Retail (particularly those on sectors of foods and beverage, fashion and luxury and cosmetics) and healthcare and life science, such big pharma companies.

He normally assist foreign and domestic companies with global business, on their trademark portfolio management; all kind of IP disputes (specially oppositions, cancellation and invalidation actions); copyright advice and disputes; patent disputes; enforcement actions; trade secrets advice and enforceability; and IP and technology transactions.

Fernando constantly deals with the Mexican IP Institute (IMPI); the Federal Administrative Court, Federal District and Circuit Courts; as well as with the Supreme Court of Justice, among other relevant Authorities for his practice, like Customs and Federal Prosecutors. With around two decades of expertise, he has many contacts in the field, in Mexico City, Guadalajara, and around the whole country.

He is well known for helping clients in the most challenging and complex mandates, which mostly of them are resolved through litigation or negotiation. He frequently advises on IP issues in relation to other areas of law such as life science, tax, data privacy, parallel imports, employment, corporate, foreign trade, antitrust, and criminal and civil law.

Representative Legal Matters

  • Advising on at least 10 cases that produced jurisprudence in Mexico.

  • Handling worldwide one of the biggest trademark portfolios for a Mexican company. Handling trademark work of one of the biggest portfolios worldwide from the Consumers & Goods Industry.

  • Expertise in litigation for innovative intellectual property matters, such as secondary meaning, trade dress, extension of life-term on patents.

  • Representing in Mexico one of the biggest retail companies to recover their main trademark in Mexico.

  • Negotiating a 28 million dollar case about a trademark infringement to finalize the negotiation half million.

  • Helping tequila companies, to deal with trademark litigations and dealing with the regularity Authorities for the designation of origin.

  • Participate on the anti-counterfeit action, which finished with the most expensive seizure in the history of Mexico.

  • Design complex strategies for the Fashion and Luxury companies to recover "hijacked trademarks" in Mexico, including civil, criminal and IP actions.

Professional Associations and Memberships

  • American Chamber of Commerce of Mexico
  • Mexican Association of Internet
  • Mexican Association for the Protection of Intellectual Property (AMPPI)
  • International Trademark Association (INTA)
  • International Anti-Counterfeiting Coalition (IACC)
  • Endeavor - Mentor (Pro Bono)
  • Partners & Mentors - Mentor (Pro Bono)

Admissions

  • Mexico (2005)

Education

  • Instituto Tecnológico Autónomo de México (Diplomado en Derecho Tributario) (2008)
  • Universidad Marista (Master Constitutional Law (M.D.)) (2006)
  • Universidad Marista (Lic. en Derecho) (2004)

Languages

  • English
  • Spanish

Previous Offices

  • Mexico City