Central America 2016: IP
Alignment with international IP law in most Central American countries only began in the late 1990s. The US has pursued strong commitments to IP law with its trade partners and more stringent IP protection was afforded by the CAFTA-DR. Panama also established similar provisions within its Panama–US Trade Promotion Agreement. The CAFTA-DR has increased trade between its parties by over 70 per cent – $35 billion in 2005 to $60 billion in 2013 – divided almost equally between imports and exports.
As a result the practice of IP law has grown and become increasingly specialised within the countries party to the treaty over the last ten years. IP practices are common in full-service firms and the practice is also the basis for a relatively large number of boutique outfits, which has resulted in a diversified offering. The larger regional Central American law firms do have prominence in this field, but they are outnumbered by more specialised outfits, who also claim a number of global brands as their clients.
Barrow and Williams is a commercial law firm in the centre of the capital, covering all areas of trademark portfolio management, as well as representing trademark, patent and copyright holders in IP disputes. Tania Moody is the key figure and “an experienced handler of IP matters”.
Zurcher Odio & Raven tops our research in Costa Rica. Head of the department María del Pilar López advises clients on the full range of their IP protection and enforcement strategies for both domestic and international companies. She is described as “the best IP lawyer in the country” by a number of respondents, who find her to be “very responsive and very accurate”. Founding partner Harry Zurcher is “a prestigious name” in the Costa Rican legal market with a longstanding practice in IP and corporate law.
Castro & Pal is a respected name in IP law with both its founders recognised as being among the country’s foremost specialists. Luis Diego Castro is a longstanding expert in the drafting, filing and prosecution of patents, trademarks and copyright; meanwhile, Luis Pal is highly recommended for his trademark expertise. The team is described as “responsive and technically strong”.
BLP is one of Costa Rica’s leading business law firms, with an excellent reputation across the board. Its IP practice is becoming more pronounced under the guidance of Giselle Reuben, who has reportedly “developed a great practice over the last few years”.
Facio & Cañas’ head of IP Milagro Chaves is one of the most experienced IP lawyers in the country. Respondents states that she has “excellent contacts and a commercial approach”. Clients include international brands such as Coca-Cola and Kimberly-Clark.
Troncoso y Caceres has one of the most established IP practices in the country. The “outstanding” María Josefina Félix Troncoso heads the practice with a focus on trademark prosecution, enforcement and litigation. She has over 20 years of experience handling IP portfolios of both local and international brands, including Coca Cola and Pepsi.
Castillo & Castillo’s managing partner and head of the firm’s IP department Tania Castillo has been practising in the area for over two decades. She popular among her clients for her “hands-on and creative approach” to IP enforcement, and is also particularly recommended for her strong anti-counterfeiting practice.
María del Pilar Troncoso recently founded Troncoso Leroux. She is one of the most experienced practitioners in the market and is widely endorsed for her “market-leading trademark infringement practice”.
Headrick Rizik Alvarez & Fernandez is widely regarded as one of the best law firms in the country and its IP practice is no exception. Founding partner and IP head Mary Fernández Rodríguez is a “high-profile lawyer” with “standout professionalism and an excellent next work of contacts”, according to respondents.
Jorge Mera & Villegas has a longstanding specialism in IP law. Orlando Jorge Mera is a key figure in relation to the portfolio management of both domestic and international companies. Sources find him “knowledgeable and creative”.
Head of the IP practice at MINIÑO Abogados, Urko Ochoa focuses on all aspects of trademark and patent prosecution and enforcement. He is reportedly “commercial aware and really knows his stuff”; respondents also describe him as “a pleasure to work with”.
Consortium Legal’s country IP head Suzanne Julieta Berrios De Tablas is one of the highest-profile lawyers in her field with 25 years of experience. One source was particularly effusive, stating: “Her local knowledge is peerless, and she is very dependable and responsive.”
Arias & Muñoz’s IP department head Morena Zavaleta is one of the country’s most experienced handlers of international IP portfolios, including the prosecution and enforcement of rightsholders. She is described as “a sophisticated lawyer who is very committed to her clients”.
Espino Nieto & Asociados has a strong IP practice led by the “first-class” Danilo Rodríguez Villamil, who handles the trademark portfolios of a number of Fortune 500 brands in the country, including Wal-Mart and LinkedIn.
Romero Pineda & Asociados’ managing partner José Roberto Romero is among the most experienced IP lawyers in the country, having practised in the area for two decades. One respondent says, “He is extremely well known and often gets referred work on the back of his deserved reputation for excellence.”
Head of IP at Portal & Asociados Edy Portal is has two decades’ worth of experience in both trademark and patent management for both domestic and international clients. Sources report that “she has excellent knowledge and can navigate the local legal scene with skill”.
The specialist IP outfit De La Gasca & Cia is a prominent regional player in trademark, patent and copyright prosecution and enforcement. Head and founder Giancarlo de la Gasca is experienced in handling both domestic and international portfolios with “a strong commercial understanding and excellent strategic insight”.
At Guandique Segovia Quintanilla – LatamLex, Luis Ernesto Guandique Chavez is recommended as “an experienced and practical lawyer who will get the job done well”.
Arenales & Skinner-Klée – LatamLex’s IP department head Luis Ruiz is “at the top of any list for trademark, patents and anti-counterfeiting matters in Guatemala”, remarks one respondent. He is praised for his “user-friendly nature” and “strong technical and commercial skillset”. Prominent clients include Wal-Mart and Google.
Guillermo Lopez Davis heads the respected IP practice at Bufete Lopez Cordero. He advises both international and regional clients in the full range of trademark prosecution and enforcement, with a number of referrals from US and UK law firms. Prominent clients include Unilever, GlaxoSmithKline and Google.
Consortium Legal’s country IP head Ninoshka Urrutia is “without a doubt one of the top names in Guatemala”. In regards to trademark and copyright matters she is reportedly “dynamic and resourceful”, and one source also praises the “high quality and practicality” of her written advice.
IP boutique Viteri & Viteri is internationally renowned for its ability to effectively handle large trademark portfolios. Lead practitioner Ernesto Viteri is well known in Central America and in the US for his “excellent practice”.
Palacios & Asociados has a strong IP practice led by “definite inclusion” Marco Antonio Palacios, who is considered “a leader in trademark and advertising law”.
Saravia & Munoz’s Salvador Saravia is “a celebrated veteran” of commercial and IP law in the country.
Specialist outfit Bufete Mejia & Asociados is the top firm in Honduras for IP expertise, according to our research. Practice head Ricardo Mejia is considered “the go-to lawyer” for trademark and patent prosecution and litigation by Fortune 500 companies and US practitioners.
At Bufete Melara & Asociados, founder Oscar Armando Melara Facussé is a famed Honduran corporate lawyer who also stands out for his strong expertise in trademark law.
Consortium Legal’s Nicaragua IP department head Darliss Gordon is “a key figure in the market” in relation to the protection of their trademark and patent rights. Respondents note that her advice is “well-articulated, practical and responsive”. Major clients include Bayer Healthcare, Repros Therapeutics, Banamex and Wal-Mart.
Guy Jose Bendana-Guerrero & Asociados is an IP boutique many consider “one of the best in the region”. Lead practitioner Julian Bendaña-Aragón is recommended on the basis of his “practical, constructive and commercially orientated advice”, as well as his personable manner.
Francisco Ortega Gonzalez, founding partner of Francisco Ortega & Asociados, has a broad practice that includes acting for multinational clients in the filing and enforcement of their trademarks in Nicaragua. Respondents find him to be “judicious and very professional”.
IP is one of the core areas of practice for Jarquin – García. Head practitioner María Eugenia García Fonseca focuses on multi-jurisdictional trademark and patent portfolio management. Sources point to her “excellent drafting skills” and “client friendly manner”.
Benedetti & Benedetti is a heavyweight in regional IP for both domestic and international companies, including Nike, Samsung and Amazon. Ramon Benedetti is one of the most experienced and dedicated IP practitioners in our research with over three decades in specialist practice; he is considered to be “a dean of Central American IP law”. Audrey Williams is very active in both the prosecution and enforcement of IP rights in Panama. Clients find her “intelligent, hard-working and hands-on”.
Icaza González-Ruiz Alemán has a strong IP department with two well-known partners. Department head Gabriela Tejada de Britton is focused exclusively on IP and is one of the most respected lawyers in the country in this regard. One source states, “She is a very strong and knowledgeable practitioner, who is equally adept at drafting and in negotiations.” Hugo Morán has a longstanding practice in IP law, with “specialised knowledge” and “a focused approach” to enforcement matters.
Alfaro Ferrer & Ramírez is a highly respected law firms in Panama and its IP practice is equal to its international status. Department head Marissa Lasso De La Vega is “terrific” in all aspect of patent and trademark protection. She is “a leading figure in the region” and “very well respected”, according to peers.
Vallarino Vallarino & Garcia-Maritano’s Luis Guinard is considered by commentators to be “one of the best in central America” in relation to IP law. As one client observes, “He is a discerning lawyer, who gives due attention and consideration to his clients.”
IP boutique De Puy & Asociados is well known both regionally and internationally for its practice. Respondents recommend Miguel De Puy III for his “precise written work” and his “proactive and aggressive style in anti-counterfeiting matters”.
Fábrega Molino & Mulino’s Farah Molino is described as “an up-and-coming IP specialist” who earns praise for her performances as co-counsel in trademark litigation.
Jimenez Molino y Moreno’s Edwin Molino is extensively experienced in trademark and patent prosecution and litigation. He is particularly praised for his “excellent industry awareness”.
Orlando López of Durling & Durling is noted for his experience in handling IP assets. He reportedly has “an excellent understanding of domestic and international IP management” and provides “thoughtful and considered advice”.