Saúl Santoyo Orozco

What inspired you to pursue a career in intellectual property, and what advice would you give to others considering a similar path?

Before I decided to become a lawyer, I wanted to be an artist, specialising in painting and sculpture. I knew that artists rely on their inspiration and ideas to create original artwork. When I first connected with IP law, I learned that it, among other functions, helps to protect an artist’s work. I found it extremely interesting to identify ways to protect creativity. For that reason, I decided to look for a job opportunity associated with intellectual property, and after a couple of years, I found my passion for IP law. I advise people considering a similar path to focus on new trends, like protecting and enforcing IP rights in the metaverse.

The INFORM Consumers Act is imminent in the United States, Europe is seeing big cases such as the Christian Louboutin/Amazon decision and there are new rules in China. What do brand owners in Mexico need to be aware of when it comes to platform liability for counterfeit activity?

Mexican law provides trademark owners with a series of valuable mechanisms to protect their brands within the digital space, including the capacity of the authorities to enact orders to take down or block infringing content, even if the platform or website as a whole does not infringe any right. Conversely, my advice to platform and portal operators would be to take more care in monitoring who is using such websites, as they could be held liable for the actions of infringing third parties using their portals or platforms if proper care is not taken.

What are three pieces of advice for taking counterfeiters to court – and why is this advice worth heeding?

First, obtain as much evidence as possible, including information regarding who performs the infringing conduct and who may be behind it. Second, be diligent and patient; most legal procedures in Mexico are slow and expensive, and some can take years to resolve and provide tangible results. Finally, be realistic about the goals and expectations of exerting legal actions. The odds of obtaining millions of dollars through compensation or the recovery of damages and losses are low; the best result is the one that allows you to successfully put a stop to infringing conduct without damaging your brand’s identity or your company’s public image.

How do you predict the blockchain domain challenge to evolve in the next 12 months?

It is an interesting attempt to increase the availability and flexibility of domain names in general. It could also fuel disputes over trademark use in such domains, as its anonymity and decentralised nature could allow pirates and infringers to seize opportunities to cause trouble to legitimate businesses that have invested heavily in building a brand identity and keeping it consistent with their online image. We will see in the coming months how we can keep this trend from becoming a new ‘digital pirate haven’ due to the lack of central regulation and the anonymity of its users.

What are your top tips for keeping the litigation costs down in the current economic climate, especially as more people are taking cases to court?

We would recommend planning as much as possible and anticipating possible weaknesses in your current trademark enforcement strategy to avoid litigation, which could be lengthy and costly. As with many situations in life, prevention is critical to mitigating unforeseen costs and engaging in formal legal actions to defend valuable intellectual property.