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

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Who Represents Who

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As well as handling a large, diversified trade mark portfolio, and being active in trade mark infringement litigation, Headrick Rizik Alvarez & Fernández has stand-out strength in patent prosecution. Widely recommended senior associate Lilly Acevedo heads the ‘capable, dynamic, responsive and cost-effective’ team, which counts Merck Sharp & Dohme, Pfizer, GlaxoSmithKline and Novartis among its clients. Recent matters include advising Grupo SID on regulatory and compliance-related matters, as well as assisting the client with the IP aspects of its acquisition of an oatmeal company. Other matters included trade mark infringement cases on behalf of clients including Corporación Habanos and EGE Haina, and the practice also assists clients with the IP elements of criminal fraud cases. Partner-in-charge Mary Fernández is ‘deeply knowledgeable’ and provides ‘swift, accurate IP advice’; however, Luisa Nuño -whose practice included patents work- has left the firm to move in house at Banco BHD Léon.

The IP team at 11-strong boutique firm Troncoso Leroux is co-led by current ASIPI president Maria del Pilar Troncoso and firm managing partner Pedro Troncoso, who each have over 20 years’ IP experience. Perhaps best known for its strength in core IP matters such as trade marks, patents and unfair competition, the team also has excellent contentious IP capabilities and recently represented Crocs and Victoria’s Secret (as plaintiffs) in the local aspects of two separate worldwide trade mark infringement disputes. On the patents side, the team won a Supreme Court decision on behalf of Eli Lilly guaranteeing the right to patent-term extension for all patents granted post-2008, even if the application was originally made prior to that date. Senior associates Vanessa Cabrera and Alexander Ríos are also noted. Other clients include Viacom International, TUV SUD and Ron Barceló.

Although only founded in May 2016, the partners at boutique firm Angeles Pons have lengthy trajectories and huge experience in the sector. The team covers consumer rights, regulatory matters, data privacy, distribution law, IT and unfair competition as part of an expanded IP department that also handles trade mark, patent and copyright issues. In addition to his particular niche expertise in IT-related matters, Jaime Ángeles has broad IP expertise and also handles corporate work. The highly experienced Wallis Pons works across the entire IP sector but is particularly known for her abilities in the data privacy area. The seven-strong team also undertakes contentious IP matters and is particularly noted for its active involvement in anti-piracy investigations, work that differentiates it from the majority of its competitors. Associates Lucía Castillo Arbaje and Laura Veloz Guerrero are noted. Clients include Diageo, Nestlé, PepsiCo, Nike, Converse, Chanel, Louis Vuitton and Oakley.

A spin off from the former Biaggi & Messina, recently established IP-boutique Bufete Messina-Lugo IP brings together two key names in the sector: Zaida Lugo Lovaton and Ana Isabel Messina. Lugo is currently president of the Dominican IP association ADOPI and Messina a former president of the same, and current national ASIPI delegate; between them, the pair can draw on over 50 years’ experience in the sector. Unsurprisingly, the practice covers the full gamut of IP matters, including contentious matters, and counts trade mark infringement, industrial design and anti-counterfeiting work among its particular strengths. Clients include L’Oréal and Univision.

The widely praised Sharin Pablo is the key IP contact at JJ Roca & Asociados; her extensive corporate experience makes her well-equipped to deal with the IP aspects of corporate transactions. The practice handles matters ranging from IP audits and the management of trade mark portfolios to patents, copyright and sanitary registrations, as well as more complex IP negotiations, contracts and litigation. Moreover, the team is active not only in the Dominican Republic but across much of the Caribbean. Senior associate Ana Paula Campusano is well regarded and active in trade mark registration and maintenance, and has experience with copyrights, patents, utility models, industrial designs and domain names. Associate Melissa Mercedes is also noted.

Miniño Abogados’ department provides a full-service IP offering and coordinates IP protection and enforcement not just in the Dominican Republic but also in the Caribbean more widely. Urko Ochoa heads the practice, with strong support from managing partner Orietta Blanco and associates Arlene Herrera and Pamela Hernandez. Ochoa and Hernandez acted for Red Bull in several trade mark infringement cases, and Ochoa and Herrera advised Western Digital Technologies on the protection of its trade mark portfolio across the Caribbean region. The practice has also been increasingly busy with data protection matters, where clients include Hotelbeds Group; with patents, where Bayer and AstraZeneca are representative clients; and with telecoms signal piracy work.

Tania Castillo heads the nine-lawyer team at Castillo y Castillo which assists clients with IP matters across all industry sectors and is particularly strong on trade mark and patent portfolio protection. Ongoing matters saw Castillo advise ExxonMobil (as plaintiff) in a case regarding the infringement of its ‘Exxon’ trade mark, and represent Samsung Electronics in various trade mark infringement cases concerning smuggled, counterfeit mobile-phone accessories. On the patents side, the team defended Sanofi against a nullity claim filed against one of its patents. Senior associate Sebastian Jiménez Báez, in the firm's Santiago office, and associates Farah Vásquez and Carimer Guzmán are all noted; senior associate José Manuel Batlle engages in the sector on contentious matters.

The Dominican member of the Terralex law firm alliance, Troncoso y Cáceres boasts one of the oldest IP practices in the country and fields a strong team comprising members of various IP associations, such as INTA, ASIPI, FICPI and ADOPI. Active on contentious and non-contentious matters, the department assists clients with trade marks, copyrights, patents and industrial designs, and acts for clients on the renewal, amendment and transferral of their IP rights. Smuggling, counterfeiting and parallel imports also fall under the team’s remit. María Félix Troncoso heads the practice, and is particularly strong in trade mark protection and enforcement. A capable second tier of senior associates includes Geridania Sepulveda, Joely García Enríquez, and litigator Jaime Rafael Lambertus. The team was further strengthened by associate Claudia Vargas-Matos’ return to the firm in July 2016.

Associate Adelin Villalobos heads DMK Abogados | Central Law’s practice group, with junior partner Patricia Read is also very active in the sector. Recent work saw the team assist Roche and Grupo Roble with trade mark surveillance, and advise Oriflame on obtaining import and distribution permits and sanitary licences, as well as handling the protection of its IP rights. Other clients on the regulatory side include Laboratorios Silanes, Stendhal and Hard Rock Hotel & Casino Punta Cana.

Praised for its ‘level of service and results’, the ‘experienced’ IP team at Guzmán Ariza is best known for its work in the trade mark subsector. However, it also frequently handles copyright and patent work and is increasingly active in piracy and privacy matters. Practice head Fabio Guzmán Saladín has ‘a firm grasp on business solutions’, and leads on a workload in which trade mark related matters have predominated of late. Nevertheless, around a third of mandates in the sector are of a contentious nature and here ‘excellent litigatorAlberto Reyes is highlighted as a ‘real fighter’. Clients include Honda Motors, Gold Star Tobacco, Uniconf and Fuxion Biotech, and the team was further strengthened by the arrival of Pamela Benzán in August 2016.

With experience in trade marks, copyrights, patents, utility models and industrial designs, Jiménez Cruz Peña is strong on the regulatory and contentious aspects of the IP sector, and has particular ability in the crossover between IP and corporate transactional work. Key sectors of activity include manufacturing and distribution, pharmaceuticals, hospitality, and sports and entertainment. Name partners Luis Jiménez and Marcos Peña are the key contacts.

Best known for its work in the IP sector, the ‘veritableJorge Mera & Villegas Abogados is ‘deeply engaged in intellectual property matters’ – as reflected by its affiliation to ADOPI AIPPI, AIPLA, ASIPI, ICPI INTA and the PTMG. Practice head Patricia Villegas is a ‘highly regarded’ and ‘very capable’, and can draw on support from the experienced Carmen Prieto Villegas. Marquee clients include Procter & Gamble. With a broad practice, Orlando Jorge Mera is also active in the IP sector.

The practice at OMG comes into its own where IP intersects with corporate and finance transactions. It also has particular experience in IT-related IP. Senior associate Luis Eduardo Aquino is the key contact, and is supported by specialised associates and IP Angeanette Tejeda and Marianna Vargas. Recent matters saw the team advise INICIA Educación on the structuring and protection of its IP rights in relation to the implementation of its ‘Effective School Program’. Other clients include Grupo Blandino and Ourofino Saúde Animal.

Rosa Campillo leads the team at Russin, Vecchi & Heredia Bonetti, which primarily undertakes trade mark and industrial property matters, although it is increasingly active in copyright work. Recent mandates saw the practice assist Puerto Rico Medical Supply on the IP aspects of its incorporation in the Dominican Republic, including the registration and protection of its trade marks; and successfully defended Photoshop Caribe against a trade mark infringement claim brought by Adobe Photoshop. Senior associate Mónika Fiallo Paradas is highly active, particularly in IP relating to pharmaceuticals and IT. Intel is another representative client.

Recommended for its strength in prosecution and opposition work, as well as for contentious IP matters, Valdez Albizu Abogados has over 40 years’ involvement in the sector and ‘stands out for its service levels’. Led by ‘driving force’ Alejandra Valdez, the practice covers the full range of IP matters, from core trade mark and patent matters to franchising, unfair competition and comparative advertising. Key support comes from associate Diana Isabel Abreu, and founding partner Jacobo Valdez Albizu brings ‘profound knowledge’ of the sector.

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