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Colombia > Intellectual property > Law firm and leading lawyer rankings

Editorial

Index of tables

  1. Intellectual property
  2. Leading individuals
  3. Next generation lawyers

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Who Represents Who

Find out which law firms are representing which Intellectual property clients in Colombia using The Legal 500's new comprehensive database of law firm/client relationships. Instantly search over 925,000 relationships, including over 83,000 Fortune 500, 46,000 FTSE350 and 13,000 DAX 30 relationships globally. Access is free for in-house lawyers, and by subscription for law firms. For more information, contact david.burgess@legal500.com.

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Baker McKenzie S.A.S. provides ‘good quality services with tailor-made and quick responses’ in all transactional matters related to intellectual property rights including licensing, technology transfer and purchasing arrangements. Juan Pablo Concha, who is ‘very responsive and client-oriented with a practical approach to each issue’, heads the 15-strong team with Álvaro Correa, Ricardo Metke and director of the Bogotá IP group Cristina Matiz as key members. The team represented Ferring in a controversy over the registration of ‘Bio-Tropin’ owned by Laboratorios Chalver de Colombia, which had obtained the registration with Ferring’s consent under the compromise of a subsequent assignment; despite initial difficulties, the team managed to recover the trade mark without entering into litigation. Other highlights include representing Deka Products before the Colombian Patent Office (CPO) in the process of obtaining patent protection for an invention related to a healthcare device.

The IP arm of full service corporate firm Brigard & Urrutia, Brigard & Castro handles the registration and protection of all IP rights, including litigation. Co-head Juan Pablo Cadena advised BIOVAXIM on a case which had initially been rejected by the Patent office on grounds of lack of novelty and inventive step; after filing technical arguments, the patent was granted. The team is also acting for Inditex, owner of clothes retailer Zara, successfully ensuring that the Colombian Trade mark Office denied the registration of a class 25 trade mark "ZARK" to Grupo Zahar. María Fernanda Castellanos, Carlos Alberto Carvajal and Valentina Montero are also key members of the practice.

Cavelier’s practice is one of the largest in this area, a 50-strong team including five listed lawyers: Jorge Chávarro, Luz Clemencia De Páez, Andrés Rincón, Edna Sarmiento and Eduardo Varela. The firm has a strong presence in each and every field of IP, having partners with specialized education and practical knowledge in each of its fields, including patents, trade mark and copyright. The team is currently acting for Bayer in a dispute with Alcafleu Management for the registration and use of trade marks FLUDORA and FLUDARA.

A highly qualified and widely recognized IP law firmLloreda Camacho & Co. does ‘excellent work, with timely response on all trade mark matters, and high expertise and experience in trade mark practice’. Tatiana Carrillo and Alicia Lloreda, both highly regarded, co-head the team. The practice is handling more than 700 patent applications for Gilead in Central America, Caribbean and the Latin America region; and achieved the granting of 23 invention patents on behalf of F Hoffmann-La Roche. Senior associate Natalia Franco is also a key team member.

An ‘exemplary’ firm that displays a ‘broad knowledge’ of intellectual property law, Dentons Cardenas & Cardenas provides ‘more practical advice and options’ than competitors, according to clients. Lead by ‘market leaders’, Luz Helena Adarve and Juanita Acosta, who are strongly recommended, the 12-strong practice has been acting for Microsoft, processing 50 patent registrations (including 23 new applications), all related to software. The team also filed an opposition on behalf of Instagram against a third party’s (international classes 42 and 45) trade mark application for YUMMYGRAM. Other clients include Avianca, Facebook, Ferrari, Jaguar, Oracle and Verifon.

Gómez-Pinzón Abogados (GPA) provides a wide range of IP services across all areas of innovation management. The 16-strong practice is led by Mauricio Jaramillo and counts senior associate Juanita Pérez as an additional key figure. The firm advised Alpina throughout negotiations with IBM and SAP regarding the implementation and operation of new software for enterprise resource planning; the advice involved the simultaneous negotiation of seven contracts with SAP and IBM, including software licenses, among others. The team also acted for Decathlon to recover the Quechua trade mark in Peru, already registered by a local company; the strategy included oppositions based on the Paris Convention, cancellation actions and a negotiation with the Peruvian company, until the trade mark was finally assigned to Decathlon. Other clients include Grupo Argos, Experian, Bancolombia, Inovia and Servientrega.

Specialist boutique OlarteMoureis a benchmark in the area of industrial property, particularly in patents’ and drafted over 150 patent applications for local clients covering over 20 technology sectors during the course of 2017. The practice also covers trade mark, copyright, regulatory matters and litigation. Carlos Olarte and Juan Guillermo Moure head the practice and both are recommended as having ‘a global vision, strategic analysis, efficiency, order and response capacity’. They are also ‘creative when it comes to proposing new products and services to the IP community’. The practice has won recognition for having dual background professionals (law and science), both at the partner and associate level, and is responsible for prosecuting large patent portfolios across Latin America for clients such as Novartis, Merck, Pfizer, GlaxoSmithKline and Bristol-Myers Squibb. The firm is representing Industria de Alimentos Zenú (by instruction from Reed Smith LLP) in US litigation against LatinFood Corp, which registered and is selling products branded in the US with the clients’ well-known trade mark ZENÚ.

Philippi Prietocarrizosa Ferrero DU & Uría continues to consolidate its region-wide practice, with a focus on Andean countries, Central America, Chile, Uruguay and Paraguay, providing advice to local and foreign clients in a wide array of sectors, including pharmaceuticals and life sciences. The nine-strong practice is representing Discovery Channel in a trade mark prosecution battle for the registration in Colombia of "Discovery Channel" and "Discovery Expedition" in International Classes 18 and 25 against a local claim that alleges previous rights over the discovery expression. Mauricio Patiño co-heads the practice along with associates Camilo Suárez, head of IP and unfair competition, Gerardo Flórez, who leads the international trade mark prosecution, copyright and data protection team, and Zoraida Fonseca who heads the local trade marks and patents department. Tropical Foods, Alimentary Health, RCN Group and Mondelez Colombia are among the team’s clients.

Posse Herrera Ruiz's team answers ‘in a very timely manner with absolute knowledge of the issues’. The practice offers a one-stop service that centralises IP filings in 23 Latin American countries and ‘well-respected’ head of the practice, Helena Camargo, led advice to Bozicevic Field & Francis on a filing on behalf of Regeneron Pharmaceuticals and Zogenix International of pharmaceutical patents in Colombia, Mexico, Peru, Brazil, and Chile. The team also acted for Banco Davivienda in protecting its Daviplata Global trade mark for a service that enables Colombian expatriates to send funds back to the country. Ernesto Cavelier and associates Mónica Bonnett (‘very fast and accurate in her responses as well as having lots of experience in patent cases’), and Annabelle Angarita are also key members of the practice. Clients include SBS Seguros Colombia, Grupo Energia de Bogotá, Prebel and Google.

Castellanos & Co provides ‘very professional answers’ and their lawyers ‘know the market very well’. The boutique acts across the full range of IP work including prosecution, enforcement and litigation, transactional and advisory work. Ximena Castellanos and Margarita Castellanos who are both praised for ‘the speed and precision in their answers’, head the firm. Sanofi, owner of the trade mark registration for "Enterogermina" and other "Germina" trade marks, instructed the firm with the filing of an opposition against the registration of "Biotigermina" by a major generics pharmaceutical company in Colombia. The practice won the opposition. The team has also been acting for Hyundai, Swatch and Carolina Herrera among others.

Holland & Knight attracts praise for providing ‘quality of service, personal attention and accuracy’. ‘Highly qualified’ Danilo Romero leads the five-strong practice, which is assisting Global Brands Group in matters related to its intellectual property portfolio in Colombia, including the trade mark "Behrens Redugras"; in particular assistance in matters related to non-use cancellation actions, Andean oppositions and regular oppositions. Other clients include Bridgewood Capital, Terpel, Illinois Tool Works Colombia and Grupo Plenia – Locatel.

Boutique firm Triana, Uribe & Michelsen advises on trade marks, patents, denomination of origin, health registration, unfair competition and regulatory issues. Clients have included Alcon Laboratories, Dell and newspaper El Tiempo. Fernando Triana and Laura Michelsen are the key names.

New entry to the ranking, boutique BBGS Barrios Montenegro advises various domestic and foreign clients on protecting their trade marks, trade names, emblems, slogans, patents, utility models, industrial designs, domain names and trade secrets. The firm successfully acted before the Trade mark Office for "2WayComm" after receiving a cease and desist letter for the use of the sign "Goodwill" by a Colombian company owner of the trade mark "Goodwill Comunicaciones" in class 35. Myriam Montenegro and Nidia Osorio are the key names.

Recommended practitioner Andrés Marquez Acosta heads the IP group at Medellín-based Contexto Legal Abogados. The seven-strong practice attracts praise as having ‘knowledge, especially in litigation matters’ and for its ‘fast answers and competitive prices’. The team successfully represented Nutrifruta in an infringement case concerning the trade mark "Mamba Wamba". The team also advised Cientech on 15 projects that concluded in patent applications. Associate Camila Correa is also a key member of the team.

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