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

Editorial

Index of tables

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

Leading lawyers

  1. 1
    • Jaime Angeles - Angeles Pons
    • María Félix Troncoso - Troncoso y Cáceres
    • Mary Fernández - Headrick Rizik Alvarez & Fernández
    • Zaida Lugo - Bufete Messina-Lugo IP
    • Urko Ochoa - Miniño Abogados
    • Sharin Pablo - JJ Roca & Asociados
    • Wallis Pons - Angeles Pons
    • Maria del Pilar Troncoso - Troncoso Leroux
    • Pedro Troncoso - Troncoso Leroux

Next generation lawyers

  1. 1

Who Represents Who

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The ‘proactive, effective’ team at Angeles Pons provides ‘unparalleled service’ and ‘keeps clients abreast of market changes’; it covers a wide range of IP work, and handles matters pertaining to Cuba and Jamaica as well as the Dominican Republic. Wallis Pons and associate Johanna Almonte are ‘very knowledgeable’ and ‘always go the extra mile’; Pons acted for Stokely-Van Camp in trade mark opposition actions against Hack, which tried to introduce a drink bottle resembling that used by the client. The ‘excellent’ Jaime Angeles provides ‘effective, immediate advice’; on the copyright side, he advised Claro on its negotiations with Sociedad Dominicana de Productores Fonográficos (SodinPro) regarding cable companies paying performance rights to the recording industry and its artists. Other matters saw Pons represent Nestlé in an industrial design infringement case. Distribution agreements and regulatory work are also strengths of the practice.

As well as handling a high volume of trade mark filings and prosecution, Headrick Rizik Alvarez & Fernández’s team handles copyright prosecution, transactional IP, regulatory IP and – particularly in the pharmaceuticals sector, but also in industrial technology and mechanics – patents work. It has also been increasingly busy advising clients on complying with Ministry of Health and Ministry of Agriculture regulations. The practice is well known for its strength in depth: Mary Fernández has deep expertise in trade mark litigation and copyright prosecution, senior associate Lilly Acevedo is very strong in regulatory IP and trade mark litigation, and a further eight IP associates round out the department. Merck Sharp & Dohme and HS Lundbeck instructed the team on patent prosecution appeal cases; The Hershey Company and Barra Júnior Payán are clients on the trade mark side. The practice also assists Grupo SID with all its contentious and non-contentious IP issues, including regulatory work.

Miniño Abogados is noted for its strong regional practice: as well as handling a range of IP matters in the Dominican Republic, the firm coordinates work throughout the Caribbean, where most of its cases involve prosecutions and regulatory work. Patents have been an increasingly busy area for the firm, recently, with the ‘strategic’, internationally-focused Urko Ochoa acting for Bayer Pharma and AstraZeneca in patent litigation and prosecution, respectively; Gilead Sciences and MacroGenics also instructed him on patent prosecution. Outside of pharmaceuticals, Ochoa and managing partner Orietta Blanco represented Sky International and Bluetooth in separate trade mark litigation cases. The team also distinguishes itself through its knowledge of telecoms signal piracy; Discovery is a client in this specialist market segment. Pamela Hernandez frequently acts on a wide range of IP work.

Troncoso Leroux is best known for its superb IP work, which is largely handled by founding partners Maria del Pilar Troncoso and Pedro Troncoso – the current president of ASIPI and the firm’s managing partner, respectively. The practice covers the full range of contentious and non-contentious IP matters, including patents, copyright, regulatory and transactional work, as well as trade mark filing and litigation. Recent matters saw Coca-Cola instruct the team on a nullity action filed against the industrial design registration of a bottle-shaped bottle opener. The department has also recently acted for clients such as Puma, FC Barcelona, Starfish Resorts, Crocs and Havana Club Holding on trade mark infringement matters. Vanessa Cabrera and Alexander Ríos are noted associates.

JJ Roca & Asociados’ department provides ‘very good service’ and ‘timely responses’. ‘Smart, clear and professional’, practice head Sharin Pablo acted for Medtronic and Kittery Properties on trade mark opposition actions and advised Grupo Impresiones on a merchandising licence agreement with a large national beer company. She has also been handling the trade mark portfolios of Bravo, Western Digital Technologies and AC Brand Development. Senior associate and IP practice coordinator Ana Paula Campusano ‘manages matters effectively’; her recent matters include acting for a watch and jewellery manufacturer and a large food production company in (unrelated) trade mark cases. The department’s capabilities also extend to other Latin American and Caribbean countries, and cover patents – especially in the mechanics and industrial technology segment – as well as copyright and regulatory work.

Senior partners Zaida Lugo and Ana Messina are the key contacts at Bufete Messina-Lugo IP; between them they have almost six decades of legal experience, and act for a diverse portfolio of clients in trade mark, copyright, advertising and franchising cases. The team assisted Bayer Intellectual Property with protecting and enforcing several trade marks, and advised Hugo Boss Trade Mark Management on bringing criminal proceedings against counterfeit importers. L’Oréal, Hack, Colgate-Palmolive and Pasteurizadora Rica are additional clients on the trade mark side. José Santana is recommended for patent prosecution and associate Héctor Collado is an experienced IP litigator.

In addition to trade mark prosecution and infringement work, which occupies around half its caseload, Castillo y Castillo’s practice has excellent patent capabilities; it also frequently assists international companies with sanitary registrations in compliance with Ministry of Health regulations. Carimer Guzmán, who was promoted to senior associate in December 2017, heads the practice with support from partner Tania Castillo; the pair have represented companies including Mattel, LG, Walt Disney Company and ExxonMobil in trade mark infringement actions recently. Associate Farah Vasquez’s departure was offset by the arrival of associate Lucía Castillo, who is strong in patents work, from Angeles Pons.

Russin, Vecchi & Heredia Bonetti’s practice is praised for its ‘very good response times, knowledge and value for money’. Group head Rosa Campillo and senior associate Mónika Fiallo have ‘deep knowledge of local law and a good understanding of client needs, notably in the pharmaceuticals industry’; they defended Mead Johnson Nutrition in a case involving unauthorised image use, as well as advising GSK on an administrative appeal to the Ministry of Health regarding data protection and pharmaceutical-product commercialisation permits. Cortés Hermanos is a client on the copyright side; and Comercial N&J, Casa Paco and Apple recently instructed the team on trade mark matters. Other work saw Campillo and Fiallo advise Boehringer Ingelheim Animal Health and Tetra Pak on IP regulatory matters.

With one of the country’s oldest IP practices, Troncoso y Cáceres handles both the contentious and non-contentious aspects of trade marks, copyrights, patents and industrial designs; and also assists clients with renewing, amending and transferring their IP rights. Smuggling, counterfeiting and parallel imports are additional areas of expertise. Trade mark enforcement and protection expert María Félix Troncoso heads the practice and is supported by senior associates Geridania Sepulveda, Joely García and litigator Jaime Rafael Lambertus. The Dominican member of the TerraLex legal alliance, the firm fields partners who are members of IP associations such as ADOPI, ASIPI, INTA and FICPI.

As well as handling trade mark portfolios, Guzmán Ariza’s Santo Domingo-based practice has experience in copyright and industrial rights and is active across a wide range of sectors. Group head Fabio Guzmán Saladín and key senior associate Leandro Corral advised a major travel company on registering several industrial designs for boats, as well as on filing associated marine copyrights. Other matters saw Industria Farmo Química instruct Guzm¬án Saladín and associate Pamela Benzán on obtaining sanitary registration for its medicines. Europamundo Vacaciones, Goldstar Tobacco and bio-science group Chr. Hansen are clients on the trade mark side.

Commended for its ‘solid portfolio’, which includes acting for clients such as Procter & Gamble, Jorge Mera & Villegas Abogados is affiliated to various IP associations, including ADOPI, AIPPI, AIPLA, ASIPI, INTA and PTMG. Although the firm is now full-service firm, it began as an IP boutique; key team members include Patricia Villegas, Carmen Prieto Villegas and Orlando Jorge Mera.

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