Eryck Castillo

You have amassed an impressive 35 years of experience in IP portfolio management for Mexican and international companies. How do you envisage brand portfolio management practices might change in Mexico in the next five years, especially in the digital domain?

Technology is evolving rapidly, so I believe the use of AI will be a crucial factor to consider when managing high-volume portfolios. Nowadays, we can use several digital tools for managing trademark portfolios and this has helped to accurately manage our cases. I believe that more advanced options will appear soon, making this process far easier than what we are currently experiencing.

Nonetheless, the human aspect of what we do will always be relevant and cannot be substituted. Machines cannot replace personal touch, which should be provided to clients when protecting and enforcing their IP rights. When counselling clients on how to better protect their brands and in which jurisdictions, the human element plays the most critical role that can never be substituted with AI. Not all projects are the same, and we must focus on the client’s instructions, budget and urgency to provide the solution that best meets its needs.

What are the biggest issues that your clients are currently facing, and how are you adjusting your strategies to overcome these?

Issues in counterfeiting are some of the most important problems that trademark owners face all over the world. The number of individuals involved in illegal activities grows every year, and we are now seeing fake products in almost every sector of commerce. In our office, we have a robust anti-counterfeiting team that assists clients in day-to-day activities, but my job is mainly to counsel clients and help them to build a strong and multifaceted portfolio that assists in the enforcement of their IP rights in Mexico. For example, clients should no longer rely on protecting their trademarks alone to enforce them against counterfeiters. Other rights (eg, copyrights and industrial designs) can come in handy when additional protection is desired to make a stronger case against unlawful uses of their proprietary rights. It is key to think outside the box when dealing with counterfeits, so one must be creative in the protection and enforcement of clients’ IP rights in our country.

Generative AI made headlines in 2023, and looks set to continue being a hot topic in 2024. What is your take on its potential to impact the brand space?

I believe that we should be open to all kind of possibilities concerning the creation of intellectual property. Any tool available to creators should be used responsibly and with care. If a brand owner uses AI to create a new logo, this does not necessarily mean that the creation is novel and exempt from being similar or identical to another that already exists. We are only beginning to live with AI, and we must be cautious with how we integrate these tools. Of course, they will help to provide a more efficient service for our clients, but we must move with care when using them.

Our job is to properly advise our clients on the necessities. If they use AI to create a new trademark or logo, then we must conduct clearance searches before they begin using them to avoid any possible challenges in the future.

You were chair of the Unreal Campaign Committee in 2022 and 2023. How have you been educating young people on the dangers of counterfeit products, and what further steps could the industry be taking to raise awareness about the dangers of infringement among consumers?

It is often assumed that counterfeit products cannot put your health at risk. Most people think of fake handbags, running shoes or perfumes. However, counterfeits are now everywhere – we often discover illegal medicines, food products and personal care products, which can indeed endanger consumers’ health. Therefore, we need to constantly educate youngsters on the risks involved when it comes to purchasing fake goods. Moreover, we must inform them that organised crime is often behind these illegal activities, and that by buying fake products, they are indirectly supporting these organisations in their other unlawful actions, such as drug dealing or sex trafficking.

Youngsters often do not consider the consequences of buying illegal merchandise. They do not want to spend a lot of money, so the cheap fake products are an attractive alternative. Unfortunately, such goods can create problems for their health or put them in danger. For example, a counterfeit phone charger could start a fire and burn other things or even a house down. These risks are never thought through when buying imitation goods; the reasoning is often that only when it fails to work that is it time to buy another.

This kind of education must not be restricted to teenagers or university students – it should be given to consumers of all ages because the risk of buying illegal merchandise affects everybody. With the boom of electronic commerce, the offer of counterfeit goods on social media platforms and the Internet is open to everyone.

What are some key challenges that you have overcome in your career, and what lessons could others learn from how you prevailed?

The key word here is: adapt. Everything is so quick nowadays that we need to adjust to the velocity of changes occurring every day. In our practice, clients expect prompt and professional advice, so we need to have the best IP professionals who can respond to a fast turnaround with creative and proactive solutions. When I began working in intellectual property, most communications were received by airmail and fax. This gave me time to study the cases and act accordingly without the time pressures that we now face. We have adapted to the new way of working; one can no longer be disconnected because clients will reach out via mobile phone, video conference or email. I have created an expert team of lawyers that help with the day-to-day activities so that no case goes unanswered and no instruction is unattended.

The IP ecosystem has evolved significantly over the past few decades, especially amid the rapid advancements of the digital sphere. Against this backdrop, what changes would you like to see in the Mexican trademark landscape in the coming years, and do you think these are likely to happen?

I fully agree that changes are occurring rapidly in the IP ecosystem. Our country is not exempt from these because Mexico is an attractive market for trademark owners.

Our country has one of the world’s top 20 economies, so we see a lot of multinational companies investing here. Being neighbours with the United States, the world’s largest economy, is both a blessing and a curse. Every year we see more companies looking to establish themselves in our country and this provides us with the opportunity to assist them in the protection of their IP portfolios. The process before the Mexican Institute of Industrial Property is not bad, however I would like for it to have a more open relationship with practitioners to improve the filing, prosecution, maintenance and enforcement of IP rights in our country.

What are your top tips for keeping costs down in a volatile economic climate?

Companies are always seeking lower costs without harming the quality of the services that they receive. One important lesson that I learned from my predecessors was to always confirm any order from the client and never assume, suppose or take the instruction for granted. This golden rule has allowed me and my team to avoid errors that would have led to additional costs for clients and delays in the resolution of their cases.

In portfolio management, there is a need to protect trademarks in different jurisdictions outside of Mexico. To provide competitive costs to our clients, I have built a strong relationship with law firms in many countries. This network of associates has been instrumental in providing high-quality services with reasonable costs to all of our clients.

You played a crucial role in the discussion and approval of Mexico’s new Federal Law for the Protection of Industrial Property. How has the law impacted your practice, and how do you anticipate that it will affect trademarks in Mexico?

The enactment of our new law had been a long-lasting dream for many of us involved in the IP scene. Our former law had been in force since 1994 and although several reforms had been passed, our IP system was still lacking several concepts to better protect and enforce trademark owners’ rights. I am glad to say that the first draft of the law that I reviewed is quite different from the one that was eventually voted on in Congress in 2020. I was part of a team that had discussions with the senator who prepared the first draft, and we were able to share many comments that helped to modify several aspects of our current law. We now have a modern law that contemplates the protection of non-traditional marks, aims to improve our opposition system, provides a mediation process and many other benefits that assist trademark owners in the protection of their IP rights.

One downside is that the Regulations for the 2020 law have not yet been published by our authorities. This is important because they will help to avoid temerarious interpretations of some of the provisions of our law. Unfortunately, I have no information regarding whether such regulations will be published soon (hopefully I will by the time that people read this), but it has been more than three years since the law was enacted and there is still no light at the end of the tunnel.

What has been your most memorable case to date and why?

This is a difficult question to answer. I have had the opportunity to handle many cases and each one has had interesting aspects that made it special and memorable. I remember in the first few years at my law firm, one of the founders taught me to “always treat each case as if it is the most important, the multimillion brand”. These words inform the way I have worked every day and how I treat clients. A trademark owner, even if they have a small business, considers their trademark to be a very valuable possession, so we must treat every case entrusted to us as a valuable and important element of our clients’ business.

Consequently, it is difficult to mention one memorable case – all of them are special because our clients trust us to protect and enforce their trademarks and the client’s satisfaction is the most precious reward.

ICANN is pledging to make progress on providing increased visibility when it comes to domain name registrants, particularly with its WHOIS database. Do you feel optimistic about this promise, and what changes are you hoping to see?

Domain names play a key role in the IP environment. I truly hope that this project takes place because it will provide us with more information on the data of each domain name.