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BLP’s broad IP practice covers both prosecution and litigation and provides advice on a highly diverse range of matters, not only handling trade marks (including local and regional trade mark clearance and prosecution as well as administrative and judicial litigation), but also patent applications, anti-counterfeiting advice, copyright matters and IP due diligence in connection with transactions. Concha y Toro and Philips Electronics are clients as regards trade mark portfolio protection and the team acts for Sanofi in connection with its patent portfolio. Under the instruction of Baker McKenzie’s London office, the team advises Google on complex copyright matters in Guatemala, and it also represented Abbott Laboratories in a case against Guatemalan pharmaceutical laboratory Provimed in relation to the counterfeiting of drugs from several foreign pharmaceutical houses. Luis Ruiz heads the practice and is assisted by associate Pamela López, who has ten years’ experience specialising in IP matters. Other prominent clients include Facebook, Apple, Abbvie, GlaxoSmithKline, Samsung Electronics and Quala.

Consortium Legal advises on trade mark prosecution, trade mark infringement and portfolio management, while also handling patent applications, industrial designs and copyright matters. ‘Very good attorneyNinoshka Urrutia has fifteen years’ experience and is particularly recommended for her ‘specialised practice around geographical indications and origin denominations’. She continues to represent Conzorcio Parmigiano Reggiano regarding the protection of its geographical indication. In the patents area, a recent client is Titon, which the team is advising as regards the protection of an invention by Guatemalan engineers via an international phase application according to the Patent Cooperation Treaty (PCT). The team also advises the Secretaría de Integración Económica Centroamericana (SIECA) on guidelines for border measures in Central America.

With a long track record in IP matters, Lexincorp continues to handle a considerable number of trade mark applications and also handles patent matters and industrial designs. Among other work, the team manages the IP portfolio of Laprin (one of the biggest laboratories in the region); oversees Turner Broadcasting System’s entire regional brand portfolio; and recently requested the cancellation of the trade mark Electrolit (due to lack of usage), on behalf of Laboratorios Pisa. The team is also advising new client and family company Dawn Foods in opposition proceedings against the registration of the brand "Rich Crème" by Mexican company Harinera La Espiga; and Lee Jeong Gab Auction System and Method regarding the registration of a patent (the company is currently in litigation concerning the patentability of the technology and processes). Head of IP litigation, Ovidio Parra, is also litigating to overturn the rejection of a patent filing by Les Laboratoires Servier regarding an Agomelatine anxiety medication. The practice is led by the well regarded Gonzalo Menendez Gonzalez; and Gonzalo Menendez Park, who has particular expertise advising regional companies – particularly those in the pharmaceutical and financial fields, is also highlighted. Other clients include Televisa and Thomson Reuters; due to strong ties with Asian firms, the practice also receives referrals from firm such as Chinese IP boutique CCPIT Patent & Trademark Law Office.

Regarded as ‘first choice’ by many and demonstrating ‘a high level of specialism in IP matters’, Mayora & Mayora, S.C.has delivered good work for years and across generations, during which time they have created a culture of good practices in order to provide a good service’. Characterised by ‘managerial finesse and relevant advice’, the practice group’s ‘serious and professional service’ includes trade marks, patents and copyright, as well as data protection, privacy, cybersecurity and international trade-related IP matters. Recent matters include developing a privacy and data protection policy for Amcham Guatemala and advising arms importer El Bisonte on the authorisation of the use of its image for the purpose of promoting the trade mark. Another client is Diageo, which the team is assisting in opposition proceedings brought by Cervecería Centro Americana regarding the registration of a well-known trade mark originating from France; the case is being decided in the Supreme Court. Noted for its ‘rapid response times’, the team has an ‘open attitude towards resolving clients’ problems while maintaining competitive prices’; it is co-led by managing partner Eduardo A Mayora (who is noted for his ‘professional astuteness’ and ‘great enthusiasm’), and Santiago Mayora. Hugo Rivas leads the patent department and Andrés Wyld is also ‘highly recommended’ for his ‘vast experience and knowledge and proactive seeking of solutions’.

With a track record spanning over 90 years, ‘well known and traditional boutiqueViteri & Vitericontinues to be a leader’ in the IP area. The firm is known for its longstanding experience in handling trade mark and patent prosecution, among other IP matters, and its client portfolio ranges from the retail, personal care, cosmetics and clothing industries to the pharmaceutical and technology sectors. Senior partner Ernesto Ricardo Viteri Echeverria co-drafted the Guatemalan Code of Commerce, the Guatemalan Industrial Property Law and the Central American Agreement for the Protection of Industrial Property. Main contact Ernesto José Viteri Arriola is ‘highly recommended’.

Noted for its ‘prompt responses and very good quality of work’, and considered by some as ‘better than other firms in Guatemala and other Central American countries’, Arias provides IP advice that stretches across the pharmaceuticals, automotive, cosmetics, media, consumer products and manufacturing sectors, and which includes the registration of trade marks, geographical indications, patents and domain names, copyright protection, IP due diligence and IP litigation. The practice group recently successfully defended Burberry in opposition proceedings against a third-party that was trying to register a trade mark that included Burberry’s famous check design; as well as representing Sanofi-Aventis in opposition proceedings against a third-party trying to register a trade mark named "Alegria" which reproduced the client’s trade mark Allegra. The team also assesses marketing campaigns for Visa Guatemala, including the review of consumer protection and unfair competition matters, and acts in criminal IP matters – such as advising Crocs on several counterfeiting cases. An ‘excellent lawyer with a passion for IP’, senior associate and practice head Ivón Hernández is considered ‘very capable’ and ‘very active, talented and academic’. Mario René Archila assists with IP litigation. A new client is motorcycle manufacturer Kawasaki.

Carrillo & Asociados’ focus lies on IP prosecution, mainly the registration of trade marks but also trade mark infringement, opposition and cancellation proceedings. The firm also has a substantial patent practice and additionally covers utility models and industrial designs as well as occasionally handles anti-counterfeiting matters. With a client roster drawn from a wide range of industries – including the cosmetics, pharmaceutical, clothing, food-and-beverage and communication services sectors – the team advises on the management, maintenance and protection of patents, trade marks and gives general IP advice to prominent companies, such as Novartis, Abercrombie & Fitch, Wal-Mart de México and AT&T Services. It also recently acted for Distribuidora Marte in connection with the illegal and unauthorized distribution of Johnnie Walker products in Guatemala. Analucía Carrillo heads the practice.

Besides handling IP prosecution, Comte & Font – Legalsa also assists technology companies, especially in the financial area, with the implementation of IP strategies and is active providing advice – particularly to start-ups – regarding the protection of their technology and on its exportation to other markets. Working in conjunction with the Universidad del Valle de Guatemala the team also advises local inventors on international patents for inventions resulting from research-and-development activities. Another aspect of the practice is copyright, particularly in relation to works of art, a sub-sector where the team works with the estate of Efraín Recinos, as well as with Guatemalan museums and the Ministry of Culture & Sports. With over two decades’ experience Karina Calderón has ‘an amazing way of working’; peers ‘want to follow her example’. Associate María Isabel Saravia has more than 12 years’ experience and focuses on IP trade mark and patent portfolio management. Other prominent clients include Avianca, Colombina, Chiquita, Sears and Diageo.

Palacios & Asociados/Sercomi has been advising on IP matters for over two decades and handles IP litigation (including civil, criminal and administrative cases), patents, and trade mark prosecution and portfolio management, as well as anti-counterfeiting advice. The firm also houses noteworthy additional expertise in associated corporate and trade issues, competition law, consumer protection and regulatory matters. Vice president for Guatemala of the Inter-American Copyright Institute (ICI) and a member of the executive board of the Inter-American Intellectual Property Association (ASIPI), the ‘very well recognised’ Marco Antonio Palacios ‘knows IP law inside out’. The firm’s client portfolio includes local, regional and multinational companies.

Palomo Abogados has been advising on IP matters – including IP prosecution and civil and criminal IP litigation – for almost two decades; the firm’s lawyers reportedly ‘love what they do’. The practice, which covers not only trade marks but also patents, copyright and anti-piracy, anti-counterfeiting and customs matters, is led by the ‘passionate’ Sandra Iriarte; ‘very active’ in the field, she is currently serving as president on the Intellectual Property Committee of the American Guatemalan Chamber of Commerce (AmCham). The team also has expertise in technology transfer and licensing matters and handles referral work, managing Apple’s IP matters in Guatemala under the instruction of Mexico’s Arochi & Lindner, SC and managing several patent applications for Gilead Sciences on behalf of Colombia’s Lloreda Camacho & Co.. It furthermore represents global NGO, React (which fights against piracy and counterfeiting) in Guatemala; and manages the trade mark portfolio of Revlon. Firm founding partner Héctor Palomo is also a key contact. Other clients include Starbucks, Luxottica, The Body Shop and Heineken Mexico.

The growing IP practice at Central Law Guatemala, led by Gustavo Noyola, handles trade marks, patents, copyright and software matters for a predominantly foreign client base. Recent work saw the team successfully recover the trade mark Tesla, which had been registered by a local person in Guatemala, on behalf of Cooley LLP; and the practice handled the filing of over 160 trade marks in Guatemala, El Salvador, Honduras and Nicaragua for Mexican department store Distribuidora Liverpool. It also manages the trade mark portfolios of food products company Grupo Michel, publishing group Editorial Santillana; and pharmaceutical products marketing company Profármaco which operates in Central America and the Caribbean. Other work includes assisting Sherington Management with the development of a brand to commercialise a series of books and films named Secret Jesus; advising on IP strategy for Guatemalan real estate company Citymax Internacional; and defending the trade marks Dalux and Zuum for the Mexican arm of US Cotton. The team also includes a pharmacist.

For over two decades, Bufelco Bufete López Cordero has provided ‘very good’ advice on IP matters – primarily trade mark prosecution, litigation and portfolio management – to a roster consisting largely of US and European clients such as Google and Unilever. The team recently undertook due diligence of the trade mark portfolio of Colombian company Quala on behalf of the latter. The firm also handled the acquisition of the trade mark portfolio from South American pharmaceutical company CFR Pharmaceuticals for Abbott Laboratories. Other recent work includes successful litigation on behalf of South Korean conglomerate Lotte Corporation in a cancellation action (on grounds of non-use) for the LOTTE trade mark, which had been registered in bad faith in Guatemala; and the successful representation of Buffalo Wings in cancellation actions and the annulment of two trade marks blocking its applications. Guillermo Lopez-Davis leads the practice and associate Iris Garcia-King is in charge of IP prosecution. The client portfolio also includes GlaxoSmithKine, AbbVie, NFL Properties and Walmart.

With the absorption of Pacheco Coto by EY Law Central America in January 2018, the IP practices led, respectively, by Ruby Asturias and Enrique Möller were merged and now provide services that include not only the management of IP portfolios, trade marks and patent filings, prosecution and oppositions, and administrative and judicial defence of IP rights, but also demonstrates strength across IP-related transactional matters, including the valuation and treatment of IP assets and associated due diligence. A broad client roster ranges from start-ups to multinational corporations in sectors including consumer products and retail, food and beverages, pharmaceuticals, banking, real estate, hospitality and technology.

QIL+4 Abogados, S.A.’s growing IP practice works closely with the firm’s strong litigation department and handles matters that range from copyright and trade mark infringements and trade mark annulments, to unfair competition matters, trade mark prosecution and general IP strategy. The team also has expertise in trade secrets and data privacy, has handled copyright cases for well-known artists, and receives a healthy flow of instructions from firms such as Ladas & Parry regarding trade mark matters. Recent matters include advising new client Laboratorio Saval on trade mark annulment proceedings (due to lack of use), and the negotiation of two trade mark coexistence agreements. ‘Very good young lawyer’ Alejandro del Valle is frequently recommended and has more than ten years’ experience in IP matters. Other clients include Campbell’s and Asko Appliances.

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