Colombia > Intellectual property
Index of tables
- Luz Helena Adarve - Dentons Cardenas & Cardenas
Juan Pablo Cadena -
Brigard & Castro
- Tatiana Carrillo - Lloreda Camacho & Co.
María Fernanda Castellanos -
Brigard & Castro
- Jorge Chávarro - Cavelier Abogados
- Juan Pablo Concha - Baker McKenzie S.A.S.
- Álvaro Correa - Baker McKenzie S.A.S.
- Luz Clemencia de Páez - Cavelier Abogados
- Mauricio Jaramillo - Gómez-Pinzón Zuleta
- Alicia Lloreda - Lloreda Camacho & Co.
- Ricardo Metke - Baker McKenzie S.A.S.
- Laura Michelsen - Triana, Uribe & Michelsen
- Carlos Olarte - OlarteMoure
In a progressively more regulated and competitive IP market, Baker McKenzie S.A.S. is ‘well placed to deliver an outstanding level of services, paired with excellent judgement and a results-oriented approach’. The practice is led by the ‘responsive and efficient’ Álvaro Correa and Juan Pablo Concha, who focuses on IP enforcement through administrative, civil and criminal litigation. They join forces with the ‘experienced’ Ricardo Metke, who is also a recognised arbitrator, and Cristina Matiz, who is noted for her general IP expertise. Among its recent highlights, the team acted for Inversiones Dama in an unfair competition claim with a bearing on the IP market, as the judgment clarified the statutory limitations for continuous acts of unfair competition; and successfully acted for Hoteles Royal in an annulment claim against a decision of the Trademark Office to grant registration of a mark affecting the client’s rights.
Brigard & Castro is the IP arm of leading full-service firm Brigard & Urrutia, and is noted for its ‘impressive knowledge of the sector’, acting for a range of major clients in relation to advisory and contentious matters. Juan Pablo Cadena led advice to FIFA on its application to register the MUNDIAL 2018 trade mark in several categories. María Fernanda Castellanos, who co-heads the practice with Cadena, successfully represented a well-known Colombian publisher in a conciliation hearing with an entertainment company which had infringed the client’s trade mark rights. Other clients include Coca-Cola, Palmolive, Colgate, Google, and Levi Strauss.
With a sizeable IP team, Cavelier Abogados maintains its ‘top-flight’ practice, covering transactional and contentious instructions. Edna Sarmiento led advice to Danone in an unfair competition claim against ALPINA relating to a registered trade mark; the first instance court found in favour of the client, and the case has been appealed. Eduardo Varela successfully acted for Sony in a copyright action seeking to stop a frozen food company from advertising products under the ‘Los Pollos Hermanos’ name and logo, from the television series Breaking Bad. Other clients include Bayer, Facebook, Hermes and Dunkin’ Donuts. Luz Clemencia de Páez is ‘a respected and experienced practitioner’, and Jorge Chávarro is ‘very well versed in foreign jurisdictions and prosecution work’. Head of patents Andrés Rincón, who arrived at the firm from OlarteMoure in 2015, has now been appointed partner.
Lloreda Camacho & Co.’s IP group ‘provides an excellent service and maintains a close relationship with clients in order to maximise customers’ benefits’; ‘its advice is very thorough and its analysis accurate’. The ‘very impressive’ Alicia Lloreda heads the IP department and is recommended along with Tatiana Carrillo, who leads on trade mark and copyright matters, and Ana María Castro, who heads the patent department. The firm successfully defended Hewlett Packard Colombia before the first instance court against several actions initiated by PC Smart on grounds of alleged trade mark infringement and unfair competition; it also manages Gilead Sciences’ patent portfolio across Latin America.
Dentons Cardenas & Cardenas has a longstanding presence in the IP market, and is noted for its ‘high-quality and appropriate’ advice. The team acts for local and international companies, and has expertise in the food, healthcare, consumer products, IT, aviation and clothing sectors. It also manages the worldwide IP portfolio of Colombina, and advises a major air services corporation on the organisation, systematisation and control of its IP portfolio. Other clients include SAB Miller, Microsoft, Newell Rubbermaid and Manufacturas Eliot. The team is led by the ‘knowledgeable’ Luz Helena Adarve, and Juanita Acosta is ‘superb’.
Gómez-Pinzón Zuleta has ‘one of the most comprehensive IP departments in the country’, with the 16-strong practice receiving praise for its ‘appropriate advice and excellent level of service, which is also good value for money’. The firm acted for multinational coffee chain Juan Valdez in the negotiation of franchises in several countries; and also acts for Inovia in relation to the filing of patent applications in the country and elsewhere in Latin America. Grupo Argos, Experian, Bancolombia and ThyssenKrupp also feature among its clients. With more than 20 years of experience, Mauricio Jaramillo has ‘deep knowledge of the sector’; and senior associate Juanita Pérez is also very experienced in implementing IP protection strategies.
OlarteMoure is well respected as ‘an important player in the IP sector in Latin America’; the ‘highly sophisticated practice is the best option for complex and difficult IP instructions’, and ‘offers good value for money’. Its recent work includes successfully registering a patent protecting nanotechnology material for Allotment Corporation; and acting for a well-known corporation as the defendant in landmark proceedings initiated for alleged infringement of rights relating to building machinery. Novartis, Merck, GlaxoSmithKline, Grupo Nutresa and Pfizer are among its other clients. Carlos Olarte has ‘an outstanding reputation in the area’, and Juan Guillermo Moure is ‘an expert in trade marks and unfair competition matters’.
Under the leadership of ‘experienced practitioner’ Mauricio Patiño, Philippi Prietocarrizosa Ferrero DU & Uría’s IP group is known for its work in trade marks, including filings, and is praised for ‘its excellent knowledge of the relevant areas and its strategic approach’. The team acted for oil corporation Mansarovar Energy on the registration and protection of its EXPLORA programme, covering trade mark and copyright protection, privacy and data protection. The firm also acted for Discovery Communications in its dispute with Juan Carlos Restrepo over the registration of the ‘Discovery Channel’ name in the country; and advised Frank Sinatra Enterprises on its opposition to the application to register the ‘Sinatra’ name. Other clients have included Sodimac, Dupont Colombia and Europcar.
Posse Herrera Ruiz’s IP practice is praised for ‘its high-level service and the good service provided by its highly qualified lawyers’. The eight-lawyer team acted for a major global corporation in opposing the registration of a trade mark on grounds of similarity to one of its internationally known registered marks, successfully applying for the extension of its declaration of notoriety; and assisted Cencosud in the registration of the name ‘JBO Family Care’ despite oppositions filed by Biotecnik. The firm’s other clients include Prebel, Suramericana, Enjoy Casino & Resort, and Sociedad Minera de Santander. Helena Camargo and Ernesto Cavelier lead the team.
Castellanos & Co is a specialist boutique with experience across patents, trade marks and regulatory issues. It serves an array of local and international clients from all industries, but has particular strength in the biotechnology and chemicals sectors. Managing partner Ximena Castellanos heads the trade mark department, covering registrations and oppositions, while Margarita Castellanos leads on the patent side; both are very experienced. The team successfully assisted Aesculap in its appeal to register the ENNOVATE trade mark, which had originally been rejected by the Colombian national trade marks office. It also advised a major beer producer in connection with challenges to an internationally known registered trade mark.
Holland & Knight has incorporated ‘respected IP specialist’ Danilo Romero Raad and his team (previously at Romero Raad Abogados) into its ranks. The practice benefits from the firm’s outstanding network, and covers industrial property, trade mark, patent and domain name matters, with a focus on the contentious side. The group is assisting Saraluz in relation to unfair competition matters and an opposition to registration filed by the owners of the Colombian trade mark MARIO HERNANDEZ. It also provides advisory services to Major League Baseball Properties in connection with its IP portfolio in Colombia.
MBC/Márquez Barrera Castañeda is praised for its ‘industry knowledge, solid advice, business approach and good response times’; ‘its services represent good value for money’, and it stands out for its ‘personalised service and willingness to accompany clients at all stages of the process’. The firm is notable for its work in the media and entertainment field, and acts for some of the country’s key film and television producers. It recently advised Colombian music band Monsieur Periné on matters relating to copyright over its songs and other artistic creations, while other clients include Mazda Colombia, Exim Entertainment Division, Emepé and Patagonia Films. Pablo Márquez, Julio César Castañeda and Natalia Barrera are the key names.
Boutique firm Triana, Uribe & Michelsen’s practice covers advice on trade marks, patents, denomination of origin, health registration, unfair competition and regulatory matters, and has gained a solid reputation among peers. The team is led by the very experienced Laura Michelsen, and Fernando Triana adds strength on the contentious side, with expertise in commercial and IP litigation. Clients include Alcon Laboratories, Gap, Dell and El Tiempo.
Andrés Márquez leads the IP practice at Rodriguez Azuero Contexto Legal Abogados. It acted as counsel to Industrias Haceb in its application to register the notoriety of the HACEB mark in Colombia; and also advised a major business group on its application for a patent for an innovative mechanism to assemble furniture without the use of tools. Solla, Ecoflora Agro and Industrias Médicas Sampedro are also clients.