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Costa Rica > Intellectual property > Law firm and leading lawyer rankings

Editorial

Index of tables

  1. Intellectual property
  2. Leading lawyers

Leading lawyers

  1. 1
    • María del Pilar López - Zürcher Lawyers
    • Giselle Reuben - BLP
    • Harry Zürcher - Zürcher Lawyers

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Undertaking both contentious and non-contentious work, the intellectual property department at BLP fields a five-strong team of ‘qualified and experienced professionals with deep knowledge of Costa Rica’s IP regulations’. The practice is led by Giselle Reuben, who ‘excels at everything she does’, and handles the full array of related services, including the registration, defence and enforcement of patents, trade marks, copyrights and industrial designs, as well as litigious cases related to infringement, counterfeiting and unfair competition. Recent activity includes assisting Pandora Jewellery with confiscation actions against counterfeit products; advising BASF on the registration of its patent portfolio before the Costa Rican Patent Office; and assisting Grupo Agroindustrial Numar with trade mark matters and the registration of its products before the Ministry of Health. Uri Weinstok, who is noted for providing ‘assertive answers to all queries with prompt and effective attention’, recently advised British American Tobacco on the illegal importation of cigarettes that infringe its trade marks, along with labelling and advertising matters. The client roster, which also includes Unilever, Scotiabank and Microsoft, encompasses local, regional and international companies from a variety of industries, such as pharmaceuticals, technology, and food and beverages.

The seven-strong IP department at Zürcher Lawyers (the IP-arm of corporate market-mainstay, Zürcher, Odio & Raven), stands out for its considerable experience in the IP sector, including trade mark and patent filings, prosecution, enforcement and litigation, as well as regulatory issues and anti-counterfeiting matters. While spanning a variety of industries, the practice packs a particular punch in the life sciences and data privacy areas. The highly recommended María del Pilar López heads the practice; associate Esteban Monge is also a key figure and handles litigious and transactional IP work. Harry Zürcher is also active in the department. The team’s client base includes both regional heavyweights and international blue-chip companies.

Jointly led by Mariana Vargas and Andrey Dorado, the department at Arias has vast experience in both contentious and non-contentious IP-related matters, including patent and trade mark applications, enforcement, oppositions and prosecution. Practice co-head Vargas is particularly adept in cross-border IP matters, PCT applications, and patent drafting-and-filing in the technology, agrochemical and biotechnology sectors. The team also regularly advises domestic and international companies, such as Mondelez, on general IP strategy and portfolio management. The team’s client base also includes Sanofi, Lactalis and Walmart.

Intellectual property is the key mainstay of Castro & Pal Abogados, as evidenced by its vast expertise across the sector, including anti-counterfeiting, patent and trade mark applications, enforcement and litigation. Recent highlights include being appointed local counsel by General Motors for its trade mark portfolio, and by Bayer Pharma and its subsidiaries for its patent portfolio. Managing partner Luis Diego Castro heads the team and Simón Valverde and Luis Pal are also key figures. In November 2017, the department strengthened its trade mark enforcement and anti-counterfeiting practice with the hire of José Paulo Brenes, as of counsel, from the former Pacheco Coto.

Dentons Muñoz’ IP practice is led by senior associate Monserrat Guitart and handles patent and trade mark strategy-development and registration, as well as contentious IP and data privacy matters. Recent work saw the team advise a tequila producer on its trade mark strategy as part of its entry into Central American markets, as well as the registration of a 3D trade mark. Other work includes the successful defence of a corn flour and products manufacturer against a trade mark opposition filed by direct competitors. Another key feature of the practice is its expertise in plant variety registration, as evidenced by its recent advice to a pineapple merchandising and developing company on related matters. Litigation practice head Roy Herrera, who is frequently involved in contentious IP matters, also deserves mention.

The IP practice at E-Proint distinguishes itself through ‘quality and efficiency’ note clients, for some of whom it is a ‘one-stop shop for Central America and especially the Caribbean region’. The ‘proactive and analytical’ team handles the full array of matters concerning trade marks, copyright and patents, often with contentious and cross-border aspects. The practice is co-led by the ‘extremely flexible, committed and supportive’ Gabriela Bodden and Aaron Montero; associate and ‘talented litigator’ Karla Corrales is another name to note. The firm’s client base includes domestic, regional and international companies from a variety of sectors, such as food and beverages, pharmaceuticals and consumer products.

Faycamark is the affiliated IP-arm of Facio & Cañas and advises domestic and international clients on patents, trade marks, copyrights and regulatory law. The team’s expertise spans both contentious and non-contentious matters and it also advises on preventive portfolio development and management. Recent work includes advising Inversiones Oridama on the packaging design for its entire medical portfolio, in order to avoid infringement actions by third parties; assisting Haribo with the registration of its trade mark and iconic bear logo in 3D; and advising Crossfit on enforcement matters. The practice is led by Milagro Chaves and Jorge Tristán, and associate Laura Valverde is also noted.

The practice group at Consortium Legal advises local and international clients on the full array of IP matters, but is particularly experienced in trade mark registration, prosecution and enforcement. Led by senior associate and practice head Fabiola Saenz the team recently assisted Toldos Fiesta with the registration of its trade mark. In other work, Saenz continues to advise Ferretia Barosa on the registration of its sound mark.

EY Law Central America’s IP practice is led by Hernán Pacheco O, who joined the firm in course of its absorption of Pacheco Coto in January 2018. The department handles licensing, patent registrations, renewals, and prosecution and enforcement procedures, and is also particularly active in advising international clients on the IP aspects of their market entry into Costa Rica and Central America. Roxana Cordero Pereira, who is particularly experienced in trade mark protection, is another key figure in the department. The client roster includes domestic and multinational companies, such as Grupo Bimbo and Avon.

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