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Dominican Republic > Intellectual property > Law firm and leading lawyer rankings

Editorial

Index of tables

  1. Intellectual property
  2. Leading lawyers

Leading lawyers

  1. 1

Who Represents Who

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Commended for its strong IP knowledge and its responsiveness, the team at Headrick Rizik Alvarez & Fernández is led by senior associate Lilly Acevedo, who is recommended along with name partner Mary Fernández and associate María Gabriela Fernández. The team is active in patent prosecution, assisting clients such as Pfizer, GlaxoSmithKline and Novartis in the field, as well as advising MSD and Lundbeck on the implementation of DR-CAFTA provisions such as patent term adjustment. On the trade mark side, Mary Fernández and Jaime Senior advised Metro International on its brand registrations as well as on the acquisition of brands from third parties; in conjunction with Acevedo, Fernández also assists Hilton International with its trade mark portfolio. Other high-profile clients include the US Embassy.

With one of the oldest IP departments in the Dominican Republic, Troncoso y Cáceres handles a wide variety of cases, both contentious and non-contentious. The team assists with the registration of trade marks, copyrights, patents and industrial designs, and advises clients on the renewal, amendment and transferral of their intellectual property rights. Smuggling, counterfeiting and parallel imports are also areas covered by the firm as part of its broader service offering. The return of Maria J Felix Troncoso as head of the IP department in mid-2015 was a major boost to the firm’s strength in the sector: an IP all-rounder with particular profile and expertise in contentious IP matters, she had previously spent 18 years at the firm. Key support comes from IP-focused associates Geridania Sepuveda and María Rodríguez Viñas, while on the contentious side, Jaime Rafael Lambertus acts on general IP litigation and Camilo Antonio Caraballo on counterfeiting actions.

New IP boutique Angeles Pons was only established in May 2016 but earns a ranking immediately due to the track record of its founding partners. The firm brings together two key players from the Dominican Republic’s IP field. A former co-founding partner of Ángeles & Lugo Lovatón, Jaime Ángeles has wide-ranging IP practice and particularly niche expertise in IT-related matters. Similarly, the ‘reliable and creative’ Wallis Pons, formerly IP practice head at Biaggi & Messina Abogados, is praised for her ‘high level of expertise’ across the sector and also has in-depth knowledge of data privacy matters. The nine-lawyer team currently acts for clients including Diageo, Nestlé and PepsiCo on trade mark and regulatory matters, and also handles Nestlé’s contentious portfolio, particularly in relation to unfair competition; current anti-counterfeiting clients include Chanel, Louis Vuitton and Oakley. Also noted are Laura Veloz Guerrero for corporate and trade mark matters; and Carlos Ramírez Perez for anti-counterfeiting and contentious matters.

Castillo y Castillo’s ‘excellent’, ‘knowledgeable’ practice counts Ladas & Parry, Hanesbrands, RGC Jenkis and Grupo Bimbo on its client roster. Led by Tania Castillo and praised for its ‘clear advice’, the team advises clients on transactional and contentious IP matters and licensing projects, as well as assisting with the protection of patent and trade mark portfolios. It recently acted for ExxonMobil Corporation in infringement cases regarding the use of their trade mark “EXXON”, and defended Sanofi against a nullity claim brought against several of its patents. Samsung Electronics is another client, and instructed the team in infringement cases against various distributors importing counterfeited mobile phone accessories bearing the Samsung trade mark. Associates Farah Vásquez and Carimer Guzmán are recommended.

Miniño Abogados’ department represents a ‘gold standard for communication, creativity, accessibility and performance as a team’. It is led by Urko Ochoa, who is supported by managing partner Orietta Blanco, and both are commended for their ‘excellent service’ and ‘thoughtful expertise’. The team counts Edwards Lifesciences Corporation, Thomson Reuters, NagraStar and the San Francisco office of Orrick, Herrington & Sutcliffe LLP among its recent client wins. Recent work saw the practice provide Twitter with strategic advice regarding trade mark prosecution and enforcement strategy in the Caribbean; and it also acted for Alpargatas in a trade mark and copyright infringement dispute against a local manufacturer and distributor. Other clients include Bayer Group and Sanofi.

The ‘outstanding’ department at OMG is praised for its ‘agility, extensive market knowledge’ and ‘robust, comprehensive local expertise’; it is also very well connected and described as ‘proactive in seizing opportunities in litigation’. Led by Luis Eduardo Aquino, with support from associates Mónika Melo, Angeanette Tejeda and Marianna Vargas (‘one of the best entertainment lawyers in the country’), the team counts Roundhouse Multimedia, Terra RD Partners and Cislo & Thomas among its recently acquired clients. Its recent caseload includes advising Baxter International on the design strategy for the commercialisation of renal products in the Republic, and assisting Max International with the review and registration of the trade marks for its nutritional and cosmetic products lines, in preparation for the client’s entry into the Dominican market.

The ‘responsive, business-focused and insightful’ team at Biaggi & Messina Abogados is commended for its value for money and ‘clear, detailed advice’. Senior partner Ana Isabel Messina is an acclaimed IP lawyer and both a former President of the Dominican Association of Intellectual Property (ADOPI) and national delegate of ASIPI. Recent work has seen the four-strong team assist Baxter International with a cancellation action against Model Farma, which had allowed the CLINIZOL trade mark to fall into disuse; and represent Société des Produits Nestlé in a $1m infringement action against Quala Dominicana, which had used Nestlé’s registered industrial design for stock cubes. However, in May 2016, practice head Wallis Pons – who led on much of this work – departed to establish new IP boutique Angeles Pons; she has, in turn, been replaced by Zaida Lugo Lovaton of the now defunct Angeles & Lugo Lovaton, who joins as senior partner of the firm’s IP arm, now re-branded as Biaggi & Messina – Lugo IP. The practice is also active in anti-counterfeiting and assisted Federal Mogul Corporation with a criminal lawsuit against Claritza Alcántara Fermín regarding the import of counterfeit boxes. Other clients include L’Oréal and Univision Corporation.

With offices in Punta Cana, Puerto Plata and Las Terrenas as well as Santo Domingo, DMK Abogados | Central Law’s IP team is particularly visible in the tourism and hospitality sector (and to a lesser degree in real estate) but it is also a noted player in the pharmaceuticals and retail industries. The team is led by Llilda Solano with key support from Patricia Read and associate Gleirys Cruz. Given the firm’s membership of Central Law, the department has noteworthy cross-jurisdictional capabilities, and recent mandates saw Solano and Cruz assisted Grupo Rica with protecting its intellectual property rights in Cuba. In the hospitality sector, the team advised Sol Melia Vacation Club and Inversiones Zaena (Hard Rock Hotel & Casino) on licensing and product-related matters (and also consumer rights); while in the pharma sector, Read advised drugs manufacturer Roche on trade mark surveillance issues. Other clients of the practice include Univision, Stendhal, Diamonds International and Grupo Roble.

Guzmán Ariza’s IP department is active in various areas, including entertainment, manufacturing, technology and pharmaceuticals. Led by Fabio Guzmán Saladín, the team has been very active in the last year: it assisted Honda Motor Company with various trade mark registrations, and advised Groupe Canal Plus on registering the industrial design of its television decoder in the Dominican Republic. Other work saw Guzmán and associate Lidio Duval act for Dominican cigar company La Matilde on acquiring trade mark rights in the Republic and other countries, and assist the company with the relaunching of its brand. Clients include Lionbridge Capital, Senninger Irrigation, Fuxion Company and Amarin Pharmaceuticals Ireland.

Rosa Campillo leads the team at Russin, Vecchi & Heredia Bonetti, and has done so for nearly 25 years; she is supported by associates Monika Fiallo Paradas and Laura Cruz Félix. The department assists clients with the protection of their trade marks, industrial designs, software and domain names and copyright, as well as offering advice on protection against online piracy. Longstanding clients include Pfizer, Facebook, Apple Inc and Novartis; more recently, the team has been instructed by South Hills Designs and Nature’s Sunshine Products.

Boutique firm Troncoso Leroux is a recent entrant in the market having been founded in July 2015; nevertheless it provides full-service capability in the IP sector, handling both contentious and non-contentious issues. Key contact María del Pilar Troncoso has an outstanding reputation for IP matters, as suggested by her current role as President of ASIPI; her practice covers the full spectrum of matters from infringement, copyright and trade secrets, to licensing, entertainment and advertising. Managing partner Pedro Troncoso Leroux has a slightly broader practice that, in addition to IP matters, covers corporate, commercial and contractual matters, labour and immigration, and litigation regarding all the foregoing.

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