Overview

José Luis Villareal is a Mexico City attorney who represents Mexican and international clients from a wide variety of sectors. Mr. Villareal advises on complex transactions and litigation proceedings related to intellectual property rights, including trademarks, slogans, tradenames, trade secrets, patents, utility models, industrial designs and copyrights.

Mr. Villareal has successfully handled several intellectual property transactions, including the purchase, sale, transfer, licensing and due diligence of intellectual property rights. He also is experienced in advising on numerous administrative procedures and litigations related to intellectual property rights. He has represented plaintiffs and defendants against several highly acknowledged corporations before the Mexican Institute of Industrial Property and the Mexican Federal Courts. He also has coordinated the registration and enforcement of intellectual property rights abroad.

As part of his experience, Mr. Villareal collaborated for nearly 10 years with a former senior legal officer of the World Intellectual Property Organization and also former deputy general director of the Mexican Institute of Industrial Property. In addition, he has served as guest speaker for one of the Legal Culture Centers of the Mexican Supreme Court of Justice, for which he has presented on several industrial property topics.

Prior to joining Holland & Knight, Mr. Villareal formed part of the intellectual property practice of another top-tier global law firm in Mexico.

Mr. Villareal's representative matters include:

  • representing a global pharmaceutical giant on Mexico-related industrial property matters related to the potential acquisition of a section of another global pharmaceutical company
  • representing one of the global market leaders in the pasta industry in connection with the registration of its trademarks before the Mexican Institute of Industrial Property (IMPI), and the enforcement and defense of its trademarks before the IMPI and Mexican Federal Courts
  • representing a prestigious private university in Latin America with offices around the world in connection with the registration of its trademarks before the IMPI, the coordination of hundreds of trademark registrations abroad, the enforcement and defense of its intellectual property rights before the IMPI and Mexican Federal Courts, and diverse advertising campaigns
  • representing one of the main food and beverage companies in the north of Mexico in connection with trademark-related administrative procedures before the IMPI and litigation before Mexican Federal Courts involving several claims against an international food and beverage leader
  • providing legal advice to a Mexican hardware distribution industry leader in connection with numerous administrative procedures before the IMPI and representation in various litigations before Mexican Federal Courts arising out of several claims against one of the main hardware vendors in Mexico and Latin America, related to several patents and industrial designs
  • representing one of the largest international storage solution companies, in connection with the registration of its trademarks before the IMPI and defense of its intellectual property rights before Mexican Federal Courts
  • providing legal advice to one of the main banking institutions in the north of Mexico on the registration and enforcement of its trademarks before the IMPI, the elaboration of the defense of its intellectual property rights before Mexican Federal Courts and advice on diverse advertising campaigns
  • representing one of the leading manufacturers of sports supplements in connection with the Mexico-related aspects of the acquisition of certain intellectual property rights
  • providing legal advice on franchise and trademark matters of a well-known and award-winning luxury hotel chain in connection with its international expansion program
  • representing one of Mexico's industry leaders on the design and manufacture of plumbing products in connection with the registration of its industrial designs before the IMPI
  • representing a global sports media network in connection with the registration of its trademarks before the IMPI
  • representing a volunteer-based global nonprofit organization in connection with the registration of its trademarks before the IMPI
  • representing one of the Big Four auditors in connection with the maintenance of its trademarks registrations before the IMPI
  • representing one of the world's leading producers of paper in connection with the registration of its trademarks before the IMPI
  • representing one of the main financing agents for development in Brazil in connection with the registration of its trademarks before the IMPI

Experience

  • Represented a global pharmaceutical giant on Mexico-related industrial property matters related to the potential acquisition of a section of another global pharmaceutical company
  • Represented one of the global market leaders in the pasta industry in connection with the registration of its trademarks before the Mexican Institute of Industrial Property (IMPI), and the enforcement and defense of its trademarks before the IMPI and Mexican Federal Courts
  • Represented one of the most prestigious private universities in Latin America, with international offices around the world, in connection with the registration of its trademarks before the IMPI, the coordination of hundreds of trademark registrations abroad, the enforcement and defense of its industrial property rights before the IMPI and Mexican Federal Courts, and diverse advertising campaigns
  • Represented one of the main food and beverage companies in northern Mexico in connection with trademark-related administrative procedures before the IMPI and litigation before Mexican Federal Courts involving several claims against an international food and beverage leader
  • Advised a Mexican hardware distribution industry leader in connection with numerous administrative procedures before the IMPI and representation in various litigations before Mexican Federal Courts arising out of several claims against one of the main hardware vendors in Mexico and Latin America, related to several patents and industrial designs
  • Represented one of the largest international storage solution companies in connection with the registration of its trademarks before the IMPI and defense of its industrial property rights before Mexican Federal Courts
  • Advised one of the main banking institutions in northern Mexico on the registration and enforcement of its trademarks before the IMPI, the elaboration of the defense of its industrial property rights before Mexican Federal Courts and advice on diverse advertising campaigns
  • Represented one of the leading manufacturers of sports supplements in connection with the Mexico-related aspects of the acquisition of certain industrial property rights
  • Advised on franchise and trademark matters of a well-known and award-winning luxury hotel chain in connection with its international expansion program
  • Represented one of Mexico's industry leaders on the design and manufacture of plumbing products in connection with the registration of its industrial designs before the IMPI
  • Represented one of the main global sports media networks in connection with the registration of its trademarks before the IMPI
  • Represented a volunteer-based global nonprofit organization in connection with the registration of its trademarks before the IMPI
  • Represented one of the Big Four auditors in connection with the maintenance of its trademarks registrations before the IMPI
  • Represented one of the world's leading producers of paper in connection with the registration of its trademarks before the IMPI
  • Represented one of the main financing agents for development in Brazil in connection with the registration of its trademarks before the IMPI

  • Advised Banco Multiva on a MXN$1.18 billion (US$62 million) loan granted to the Mexican state of Chihuahua, as part of a MXN$28 billion (US$1.47 billion) financial reorganization.
  • Represented Banco Multiva on several financings for a combined amount of MX$11.3 billion granted to the State of Nuevo Leon, some of them as part of a MX$42 billion financial reorganization
  • Represented Banco Multiva on a MX$5 billion financing granted to the State of Veracruz as part of a MX$46 billion financial reorganization
  • Represented Banco Multiva on a MX$3.9 billion financing granted to the State of Veracruz
  • Represented Banco Multiva on two financings for a combined amount of MX$6 billion granted to the State of Chihuahua
  • Represented Banco Multiva on two financings for a combined amount of MX$5.1 billion granted to the State of Coahuila
  • Represented Banco Multiva on a MX$5 billion financing granted to the State of Quintana Roo as part of a MX$19 billion financial reorganization
  • Represented Banco Multiva on two financings for a combined amount of MX$900 million granted to the State of Oaxaca
  • Represented Banco Multiva on a MX$838.5 million financing granted to the State of Morelos
  • Represented Banco Multiva on a MX$500 million financing granted to the State of Baja California
  • Represented Banco Multiva in two financings for a combined amount of MX$16 billion granted to the State of Coahuila, as a part of a MX$37 billion financial reorganization
  • Represented Banco Multiva in a MX$220 million financing granted to the State of Tamaulipas
  • Represented Banco Multiva in a MX$279 million financing granted to the Municipality of Hermosillo, Sonora
  • Advised the State of Sonora on the structure of a potential MX$20.6 billion financial reorganization
  • Advised the State of Hidalgo on the structure of a potential MX$5.1 billion financial reorganization
  • Advised Moody's de México on the legal analysis of two financings for a combined amount of MX$2.8 billion granted to the State of Mexico

  • Advised Infonacot on a MX$4 billion consumer loan securitization on the Mexican stock exchange as part of Infonacot's MX$6 billion structured debt program
  • Advised Infonacot on a MX$2 billion securitization on the Mexican stock exchange as part of Infonacot's MX$10 billion debt program
  • Advised Infonacot on a MX$6 billion structured debt securitization program
  • Advised Infonacot in connection with the cancellation of two securitizations for a combined amount of MX$4.8 billion
  • Advised PNC Bank on five loans for a combined amount of more than US$1 billion
  • Served as counsel to Bladex in its capacity of lender in a project financing to UNIFIN Financiera S.A.B. de C.V., SOFOM, E.N.R. for US$50 million
  • Advised Abanca Corporación Bancaria on a US$16 million loan granted to Promotora Paseo de la Reforma
  • Advised Bancomext on a US$5.5 million loan granted to ICD SITRA SA. DE C.V.
  • Advised BankUnited on a US$5 million loan granted to Saco Trading
  • Advised SICREA on certain assignment agreements related to a MX$250 million securitization

  • Advised UBS on a US$75 million loan to Aeroservicios Especializados S.A. de C.V. for the acquisition of aircraft
  • Advised Apple Bank on three US$10 million loans to Mexican companies for the acquisition of three aircraft
  • Advised East West Bank on a US$6.5 million loan to Aeromexico for the acquisition of aircraft-related equipment

  • Represented lenders in the financings of the acquisitions and leases of vessels and rigs related to the oil and gas sector

  • Represented Buenavista Renewables (BVR) in the financing of the first utility-scale solar park in Mexico through a self-supply scheme with private off-takers
  • Represented Elite Energy in the financing of a 360 MW combine-cycle power plant
  • Represented Banco Multiva in the financing of a public-private partnership (P3) project in the State of Mexico
  • Advised Oak Creek Energy Systems Inc., a California-based wind projects developer, in the development, project financing and sale of the first two construction-ready stages of its Tres Mesas Wind Project to funds managed by Goldman Sachs and Corporativo GBM
  • Represented a bilateral agency and a Mexican bank in the US$100 million project financing of a wind project in northern Mexico
  • Represented a bilateral agency in a biomass project financing

  • Advised Nacional Financiera on a MX$350 million venture capital investment in seven private equity funds

  • Advised JPMorgan in connection with its compliance with Mexican law related activities
  • Advised Infonacot in connection with their active securitizations
  • Assessment to Investa Bank in connection with their legal risk status for fiscal years 2015 to 2017
  • Advised PRB in connection with a compliance manual as requested by a Goldman Sachs loan agreement

  • Advised national and international companies as well as investment funds in operations susceptible to the authority of the Mexican Antitrust Commission
  • Represented and advised AWAS in seven aircraft leases for VivaAerobus
  • Advised BBAM Aircraft Management in connection with several aircraft lease agreements with Aeromexico
  • Advised East West Bank in a US$6.5 million loan to Aeromexico for the acquisition of aircraft-related equipment
  • Advised U.S. Bank in two US$10 million loans to Mexican companies for the acquisition of two aircraft
  • Advised AAR Corporation in the acquisition of aircraft from Aeromexico
  • Advised CIT Group in the recovery of aircraft in Mexico
  • Advised UBS in a US$75 million loan to Aeroservicios Especializados S.A. de C.V. for the acquisition of aircraft

  • Represented the controlling shareholders of a prominent Mexican mortgage company in the MX$400 million sale of 49 percent of the company
  • Represented several Mexican and foreign companies in general corporate matters

  • Advised national and international clients in the acquisition of real estate for the development of industrial plants, commercial centers, and residential and tourism complexes
  • Advised national and international clients in the preparation, review and discussion of purchase and sale agreements, lease agreements, easement agreements, trust agreements, escrow agreements and insurance policies

Credentials

Education
  • Facultad Libre de Derecho de Monterrey, J.D.
  • The University of Texas at Austin, Certificate, Energy Finance
Bar Admissions/Licenses
  • Mexico
Honors & Awards
  • The Legal 500 Latin America, Banking and Finance, 2019
Spoken Languages
  • English
  • Spanish

Publications

Speaking Engagements

News