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The IP team led by the ‘knowledgeable’ and ‘very good’ Luis Ruiz formerly at Arenales & Skinner-Klée – LatamLex, now operates under BLP, which opened its doors in Guatemala in October 2016. The broad practice spans local and regional trade mark clearance and prosecution, administrative and judicial IP litigation, patents, anti-counterfeiting and copyright matters, and IP due diligence –primarily for a diverse international client portfolio reaching from South Korea, India and China to the Netherlands, France and the US. A key client regarding trade mark issues is GlaxoSmithKline, most recently regarding the reactivation of a suspended trade mark application for the drug Paxil, and an opposition against the trade mark Taxil. The firm also gained Sanofi, Uber and EOS Products as new clients, the latter regarding trade mark, anti-counterfeiting and health regulatory matters. Another practice-strength lies in strategic IP advice, including in connection with transactions, such as assisting Promerica Financial with its transfer of IP assets from Citibank affiliates in Guatemala. Associate Pamela López is the other key figure.

Consortium Legal’s ‘top tier’ practice continues to advise on trade mark prosecution, infringement cases, portfolio management, and patents, industrial designs and copyright. The firm also has expertise in appellations of origin. A current highlight is the analysis and registration of more than 500 trademarks in Guatemala for new client, retail chain Coppel. The practice is led by ‘terrific lawyerNinoshka Urrutia, who has almost 20 years’ experience and particular expertise in geographical indications; she is also the Guatemalan representative for ASIPI. Other prominent clients include Telefonica, Mars, Cemex Research Group, Kaeser Kompressoren, Pepsico, Pollo Campero, Walmart and the European Union.

Lexincorp’s ‘excellent’ IP practice focuses mainly on trade mark prosecution, where it boasts high volumes of registrations and a long track record, but it also has a growing profile in patents work. Recent mandates include handling a trade mark opposition for new client Romanos Pizzeria; advising Jose Pablo Formal Rincon regarding the registration of the brand Oktoberfest Guatemala; and assisting Saver Glass concerning the design of a bottle. The team also acted for Laboratorios Pisa in connection with the cancellation of Pharmacorp’s trade mark Electrolit, successfully countering the owner’s appeal at the Supreme Court of Justice. Other matters include advising Laboratorio Productos Industriales (Laprin) and Turner (which manages brands such as CNN, HBO and Cartoon Network) on various trade mark matters including registration and protection. The practice is led by Gonzalo Menéndez González, with key support from Ovidio Parra who has some 35 years’ experience. The team can also draw on senior partner Gonzalo Menéndez Park’s considerable knowledge.

Involved in the sector for more than half a century, the IP practice at Mayora & Mayora, S.C. is one of the oldest in the country. Branded Mayora IP, it advises on trademarks, patents, copyrights, anti-counterfeiting and privacy, and data protection rights for clients such as Coca-Cola, Starbucks, Nike, Beiersdorf, Honda, Lenovo and Amazon. It also regularly works with well-known foreign law firms including Noerr, Morrison & Foerster LLP and Cavelier Abogados. In a recent highlight, the team handled the filing of the first PCT patent application (in 44 jurisdictions) by a local entrepreneur regarding an invention in the document validation industry. The team was also appointed by DLA Piper in a matter surrounding cross-border personal data transfers, metadata and privacy issues. The department endured the departure of longstanding practice head, senior associate Vanessa Castro to IP LAW GT at the beginning of 2017, but in April, hired Andrés Wyld as a partner; he arrives after a decade as in-house counsel specialising in IP and international franchises at a Central American multinational.

Excellent’ family firm Viteri & Viteri has been advising on IP matters for over 90 years. It mainly handles trade mark and patent prosecution for prominent clients across various industries, including retail, personal care, cosmetics, clothing, pharmaceuticals and technology. Ernesto José Viteri Arriola is the main contact. Renowned 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.

The IP team at Arias (formerly Arias & Muñoz before the spin-off of Muñoz Global in Costa Rica), ‘responds swiftly to clients’ demands and has good knowledge of clients’ needs’; moreover, it ‘knows exactly how to proceed even before requested to do something’. Besides its growing trade mark prosecution practice, the team also saw increased work in IP litigation, antipiracy and anti-counterfeiting, IP contracts and patents. Copyright, domain name protection and software licensing are also areas of expertise. The team recently defended SABMiller against an opposition filed by local brewery Cerveceria Centroamerica against the trademark application for Pilsner Urquell. In other notable matters, it also represented the US Dairy Export Council in the defence of a judicial administrative claim filed by the EU against a Ministry of Economy resolution granting protection to the appellation of origin Parmigiano Reggiano. ‘Totally committed’ practice head Ivon Hernández has 13 years’ experience, is ‘full of knowledge’ and ‘satisfies expectations’. Well known litigator Mario René Archila supports the practice in contentious IP matters. Key clients include Google, Procter & Gamble and Fox International Channels Latin America; Bayer and Crocs are prominent new clients.

Carrillo y Asociados mainly advises on trade mark prosecution and clearance, trade mark infringement, and opposition and cancellation proceedings; it also has experience regarding patents, copyright, data protection and unfair trade. In conjunction with its strong dispute resolution practice, the team has particular strength in IP litigation, including multi-jurisdictional disputes. Its client portfolio ranges across various industries with particular emphasis on the consumer-products sector. Analucía Carrillo heads the practice. Criminal contraband and counterfeiting expert Joaquín Alvarado left the firm at the end of 2016 to work as independent counsel for the Superintendence of Banks.

Comte & Font – Legalsa provides an ‘excellent service’ including advice on comprehensive IP strategies, portfolio management, enforcement, transactional IP matters, and administrative and judicial, civil and criminal, IP litigation. Anti-piracy and copyright matters also constitute an important part of the practice, which acts for corporations but also high-profile individuals. The team has been busy assisting the estate of the painter and sculptor Efraín Recinos in efforts to recover a sculpture as part of Guatemalan cultural heritage and other actions in preservation of his work; represented new client China Bird Centroamérica in a mediation concerning smartphone-related IP rights; and advised Chiquita Brands in a trade mark matter concerning the coexistence of the Chiquita Brand and Productos Lácteos de Centro América’s “Chita” trade mark. Another new client is Colombina. The team is ‘highly qualified’, ‘committed’ and ‘unbeatable’: renowned practice head Karina Calderón has 20 years’ experience and ‘a deep understanding of IP law and trademark registration strategies’, while senior associate María Isabel Saravia is ‘also highly experienced’; both are ‘very agile in handling IP matters’. Newly promoted partner Alejandro Penados handles IP litigation.

For over two decades, Palacios & Asociados/Sercomi has been providing local, regional and multinational companies with IP advice backed by additional expertise in corporate and trade issues, competition law, consumer protection, regulatory matters and contentious work. The firm handles trade mark prosecution, portfolio management and contentious IP cases, including civil, criminal and administrative litigation. Peers highlight the lawyers ‘great experience’ noting it is a ‘pleasure to work with the firm’. Practice head and firm founder Marco Antonio Palacios is considered a ‘great lawyer’; he is currently the vice president for Guatemala in the Inter-American Copyright Institute (ICI) and a member of the executive board of the Inter-American Intellectual Property Association (ASIPI).

Palomo & Porras Abogados has been developing its IP practice strategically for over a decade and covers trade mark prosecution, IP litigation and strategic IP advice to local, regional and international clients. In the past, the firm has been instructed by Mexican IP firm Arochi & Lindner, SC regarding IP advice to Apple, including disputes concerning its Apple Watch product. It also handles anti-piracy and anti-counterfeit matters and other past clients include Nutresa, Central American consumer-products manufacturer Dinant, a Honduran bank and a large Central American dairy company. Practice head and associate Sandra Iriarte is the vice president of the Intellectual Property Committee of the American-Guatemalan Chamber of Commerce (AmCham); well regarded by peers, she has particular expertise in origin denominations.

Particularly known for its labour practice, boutique firm Bufelco Bufete López Cordero is also increasingly recognised for its advice on IP matters where it has a trajectory that stretches back to the early seventies. The team focuses on trade marks, including the handling of complex disputes and transaction-related IP matters. Recent matters saw the group successfully represent Unilever in litigation against Reckitt & Benckiser (and its local distributor) concerning unfair competition acts committed against Unilever’s detergents business; and Formula One Licensing in opposition proceedings against an application by a local merchant which took advantage of the trade mark FORMULA 1. Guillermo López Davis heads the practice. Clients include Google, Abbott Laboratories, NFL Properties, GlaxoSmithKline and Walmart.

The IP team at Castillo Love Abogados provides services ranging from prosecution and strategic advice to contentious matters, and has expertise in trade marks, patents, copyright and trade names. The firm advises clients, which have included multinational companies such as Visa, GlaxoSmithKline, Cargill and The Wine Group, both locally in Guatemala and across the Central American region. Francisco José Castillo-Chacón is the key contact.

QIL+4 Abogados, S.A.’s comparatively young IP practice handles a range of matters, including prosecution, but seeks to focus on high-end IP matters, particularly litigation where it works in conjunction with the firm’s strong litigation practice. It also handles IP-related regulatory matters and not only covers trade marks but also copyright. Current mandates include an authorship rights infringement case, a domain name recovery matter and conducting an IP portfolio due diligence for a pharmaceutical company. The firm also advises Kellogg’s, Campbell’s and other worldwide brands on IP prosecution matters. Associate Alejandro del Valle heads the practice.

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