Arturo Ishbak Gonzalez

What prompted your transition from private practice to in-house, and what advice do you have for anyone considering a similar move?

I started my career at one of Mexico’s most prestigious IP law firms. It is a common belief that in-house attorneys do not handle cases themselves, so I was hesitant about my future; I wanted to venture outside of trademark prosecution but I did not want to miss out on the fun of handling cases. Then I found Grupo Bimbo, the world’s largest bakery company, which had a large legal team and whose in-house attorneys handle cases without outside counsel. I was thrilled because I was prosecuting trademarks and copyrights, heading the IP litigation team and coordinating the IP strategy in Asia. However, my new job brought some challenges. I had to do a lot of typical paralegal work, draft briefs and file them in person at the Mexican Trademark Office or the courts.

My current role at the LEGO Group allows me to coordinate with law firms and handle cases myself. Consequently, I highly advise young lawyers to practise law in a law firm first to learn how to do things before considering the move to in-house. The most important learning curve for me as an in-house lawyer was not that I have piles of files to take care of but to think strategically when securing our IP rights.

How are you handling the growing rise in online counterfeiting and the post-pandemic bounce-back of offline counterfeiting – and what do these strategies look like?

In 2022, the creation of the LEGO Group’s legal tech department was key to fighting online counterfeiting. We now have an entire team taking care of online enforcement actions using tools provided by e-commerce and social media platforms. My collaboration with this team has strengthened my efforts against counterfeiting and helps me collect data to improve my offline strategy. With the post-pandemic return of offline counterfeiting, I integrated my colleagues’ online strategy into my offline strategy. We identify top online infringers and go after them in the field with legal actions before taking down their listings to preserve evidence. We have experienced positive results against resellers and manufacturers.

Our integrated strategy lets us fight the roots of infringements. Alliances and communication with e-commerce and social media platforms allow us to develop tailored strategies for better outcomes. We are also now exploring possible joint court actions with online platforms against top resellers to prevent crime in the field.

You are responsible for the LEGO Group’s IP protection strategy throughout Latin America. How do you adapt your strategy to take account of jurisdictional differences?

First, it is crucial to understand the business in order to support it in the key markets in which it operates. I need to pick my battles by identifying priority countries – jurisdictions we dedicate more resources to supporting. In order to succeed, it is essential to choose the right outside counsel to develop and implement IP strategies in different countries. I find it helpful to understand the different IP legislation in the region to determine which jurisdictions and authorities provide more benefits against counterfeits, as opposed to countries that seem to be sloppier with their approach. Certain tools, such as the recently published WTR Anti-Counterfeiting Strategy Playbook, ease my burden in this regard.

What are the biggest challenges the LEGO Group has faced in Latin America in the last 12 months, and how are you overcoming these?

In most Latin American countries, we are only now receiving decisions for procedures started in 2020. Customs trainings have also been challenging because the pandemic allowed me to perform virtual trainings and now I must choose wisely where I travel to do in-person trainings.

Traditionally, we enforced trademarks and copyrights in Latin America, but we also have a robust design patent portfolio in other jurisdictions, which we found useful for our brand protection strategy. It has been challenging to develop non-trademark-based strategies and educate infringers about our design patent portfolio.

What are the key attributes you look for in outside counsel?

Quick responses and availability to assist on short notice; deadlines in the anti-counterfeiting world are usually under two days. A proactive outside counsel is also key to implementing our IP strategy. Thinking outside the box is much appreciated when providing legal assessments matching our policies and budget. Finally, understanding the business and becoming familiar with the company are essential to fit our needs.