Trade Marks, Grumpy Cats and Tequila: An IP Conversation with Armando Contreras Vaal
In this special international episode of Elise Explains IP, Elise sits down with Mexican intellectual property lawyer Armando Contreras Vaal, founder of Guru.Legal, to discuss the realities of trade mark protection in Mexico, some unforgettable client stories, and the challenges businesses face when expanding into new markets.
From representing internet celebrities and world-famous athletes to navigating trade mark squatting and geographical indications, this episode offers a fascinating insight into the Mexican IP landscape.
In This Episode
How Armando Found His Way into IP
Like many IP lawyers, Armando didn't set out to specialise in intellectual property. What started as a university job opportunity has turned into a career spanning almost two decades and the creation of his own boutique IP practice, Guru.Legal.
The Grumpy Cat Trade Mark Story
One of Armando's most memorable matters involved representing the famous Grumpy Cat brand in Mexico.
The Mexican Trade Mark Office initially raised concerns because of Disney's character Grumpy from Snow White. Armando successfully argued that consumers were unlikely to confuse a globally recognised internet cat with one of Disney's seven dwarfs, supported by evidence of Grumpy Cat's enormous popularity in Mexico.
Protecting Trade Marks Before It's Too Late
Armando discusses a common problem faced by entrepreneurs worldwide:
- Investing in branding before conducting trade mark searches
- Building websites and marketing materials before checking availability
- Discovering a trade mark conflict only after significant investment
The discussion highlights why clearance searches should be one of the first steps in building a new brand.
Unusual Trade Marks: Smells and Sounds
The conversation explores non-traditional trade marks, including:
- Smell marks such as the distinctive scent associated with Play-Doh
- Sound marks registered in Mexico
- The challenges of proving distinctiveness for non-conventional branding assets
It's a reminder that trade marks can extend far beyond words and logos.
Mike Tyson and Trade Mark Rights
Armando also shares a story about representing Mike Tyson in Mexico, overcoming objections based on an earlier registration for wrestler Tyson Kidd.
The case demonstrates how reputation and context can play an important role in trade mark examination and enforcement.
Tequila, Mezcal and Geographical Indications
No discussion about Mexican IP would be complete without mentioning tequila.
Armando explains how Mexico protects products through designations of origin and discusses the regulatory framework surrounding tequila and mezcal production and international use.
Trade Mark Squatting in Mexico
The episode concludes with practical advice for businesses entering Mexico, including:
- Conducting searches before launching
- Keeping evidence of use
- Understanding prior use rights
- Acting quickly when expanding internationally
- Avoiding trade mark squatting risks
These lessons apply not only in Mexico but in many jurisdictions around the world.
Key Takeaways
- Trade mark searches should happen before brand launch.
- International expansion creates unique trade mark risks.
- Non-traditional trade marks can include sounds, smells and other distinctive features.
- Evidence of use can be critical when enforcing rights.
- Trade mark squatting remains a significant issue in many countries.
- Local advice is invaluable when entering a new market.
Connect with Armando Contreras Vaal
Guru.Legal
🔗 https://www.linkedin.com/in/armandocontrerasvaal/
Connect with Elise
If you'd like advice on protecting your intellectual property, trade marks, copyright, business ownership structures or commercialisation strategies, you can book a strategy call via:
🌐 https://www.elisesteegstra.com
Disclaimer: This podcast is intended to provide general information only and does not constitute legal advice. Always obtain professional advice tailored to your circumstances before acting on any legal issue.