Arturo Ishbak Gonzalez on Steering LEGO Group’s IP Strategy Across Latin America Amid Counterfeiting Challenges

Arturo Ishbak Gonzalez began his legal career at one of Mexico’s most prestigious intellectual property law firms, where he gained foundational experience in trademark prosecution and litigation. Despite initial hesitation about moving in-house—fearing a loss of hands-on casework—he found an ideal fit at Grupo Bimbo, the world’s largest bakery company. There, Ishbak led the IP litigation team, prosecuted trademarks and copyrights, and coordinated IP strategy across Asia, while also managing traditional paralegal tasks such as drafting briefs and filing them in person at the Mexican Trademark Office and courts.

Currently, as the head of the LEGO Group’s IP protection strategy throughout Latin America, Ishbak balances direct case handling with coordination alongside external law firms. He advises young lawyers to first gain experience in private practice to master legal fundamentals before transitioning in-house, emphasizing that the critical skill for in-house counsel is strategic thinking in securing intellectual property rights rather than just managing case volumes.

Addressing the growing challenges posed by online and offline counterfeiting, Ishbak highlights the LEGO Group’s establishment of a dedicated legal tech department in 2022. This team focuses on online enforcement actions, leveraging tools provided by e-commerce and social media platforms to identify and remove infringing listings. Ishbak collaborates closely with this team, using data collected from online enforcement to inform and strengthen offline anti-counterfeiting efforts.

With the post-pandemic resurgence of offline counterfeiting, the LEGO Group has integrated its online and offline strategies. The approach involves identifying top online infringers and pursuing legal actions against them in the field before taking down their online listings, thereby preserving critical evidence. This integrated strategy has yielded positive results against both resellers and manufacturers, addressing the root causes of infringement.

Ishbak underscores the value of alliances and open communication with e-commerce and social media platforms, which enable the development of tailored enforcement strategies. The LEGO Group is also exploring joint court actions with online platforms against leading resellers to further deter counterfeit activities at their source.

In managing IP protection across Latin America, Ishbak stresses the importance of understanding the LEGO Group’s business priorities to focus resources on key markets. He selects priority countries where enforcement efforts are concentrated and chooses outside counsel carefully to implement effective IP strategies adapted to each jurisdiction’s legal environment.

He notes that familiarity with regional IP legislation helps identify jurisdictions and authorities that offer stronger protections against counterfeiting, as opposed to those with less rigorous enforcement. Tools like the WTR Anti-Counterfeiting Strategy Playbook assist in navigating these complexities.

Over the past year, the LEGO Group has faced challenges including delays in receiving decisions on enforcement procedures initiated in 2020 and logistical difficulties in conducting customs training amid shifting pandemic conditions. While virtual trainings provided some flexibility, Ishbak now prioritizes in-person sessions strategically to maximize impact.

Expanding beyond traditional trademark and copyright enforcement, the LEGO Group leverages a robust design patent portfolio in select jurisdictions as part of its brand protection strategy. Educating infringers about these design patents remains a challenge but is integral to diversifying enforcement tools.

Ishbak highlights the necessity of rapid response capabilities in anti-counterfeiting work, where deadlines often require action within two days. He values proactive outside counsel who think creatively and align legal assessments with the company’s policies and budget constraints.

Understanding the business and becoming deeply familiar with the company’s needs are essential for outside counsel to effectively support the LEGO Group’s IP strategy, according to Ishbak.

Before joining the LEGO Group, Arturo Ishbak served as an IP manager at AB InBev and practiced law at Grupo Bimbo. His earlier experience includes roles as an international associate at Brinks Gilson & Lione and as a junior associate at Uhthoff. He holds an LLB from Universidad La Salle and an LLM from the UNH Franklin Pierce School of Law.