Intellectual property in Argentina
According to many, Marval O’Farrell Mairal stands out as ‘the leading IP firm in the market’, due to its ‘peerless strength and depth’ and ability to provide ‘clear advice, which is to the point and very concise’. The sizeable nine-partner department excels in all key areas of practice, fielding premier teams in trade marks, patents, copyright and IP litigation. The firm also covers the full spectrum of matters, from registration and protection strategies, through to litigation, with complementary skill sets in data protection, unfair competition, and advertising and entertainment. Among its sweet spots, its patents offering is particularly impressive and the group handles approximately 60% of the country’s patent litigation cases and 25% of patent applications. Among the names to note on the trade mark front, Iris Quadrio provides clients with a ‘true collaborative partnership’, Gustavo Giay is highly regarded for trade mark litigation, while Sergio Ellmann is one of Argentina’s most prolific trade mark filers. On the patent side, Martín Bensadon is a leading figure for complex litigation, while Ignacio Sánchez Echagüe and Martín Chajchir are up-and-coming patent litigation specialists.
‘The team’s main quality is to provide advice with high technical knowledge and, at the same time, with a wide availability to answer queries in the short term.’
‘The leading IP firm in the market; it has peerless strength and depth.’
‘Marval provides clear advice, which is to the point and very concise. As a non-Spanish speaker, I appreciate their excellent language skills.’
‘A very efficient and friendly team, whose speed of working stands out.’
‘We work mainly with Iris Quadrio. She is friendly and good fun to work with. She has no ego and is happy to accept suggestions from us on how we run our cases, leading to a true collaborative partnership.’
‘Ignacio Sánchez Echagüe stands out for his great knowledge in IP matters, his excellent predisposition and his availability to offer quick advice.’
Ford Motor Company
The Procter & Gamble Company
F. Hoffmann-La Roche
The Coca-Cola Company (in Argentina and the Caribbean)
Virgin Enterprises (in Argentina and Latin America)
Johnson & Johnson
Merck, Sharp & Dohme
- Represented Gilead in a patent infringement case against local generic companies related to the enforcement of a patent covering a product for the treatment of Hepatitis C.
- Advised Bayer on a precautionary measure brought against Tuteur, after it launched an infringing product one year before the expiration of the patent.
- Represented Novartis in several patent infringement actions.
- Acted for Alpargatas on its trade mark case against IBA seeking the discontinuance of use of the ‘rice design’ and ‘Greek design’ used on soles and strings of Havaianas flip flops.
- Represented Fresenius Medical Care Deutschland in a conflict involving their trademark application for ‘6008 CARESET’ and ‘CATERSET’.
Berton Moreno + Ojam
Specialist IP firm Berton Moreno + Ojam has gone from strength-to-strength following its establishment in 2017. In an impressive demonstration of its growing profile, over the past year it added Apple Video, Spotify, Kellogg’s and Mercado Libre — among others — to its solid client portfolio. The group’s comprehensive experience spans the full spectrum of IP work and it routinely advises on the registration and protection of trade marks, patents, copyrights and domain names. Managing partner Juan Carlos Ojam is a high-profile figure in the market and is recognised for his expertise in IP prosecution and litigation matters. Alberto Berton Moreno is recommended for his focus on non-contentious matters, including portfolio management. Other recommended names are Juan Berton Moreno, who specialises in IP protection and management, and Mercedes Bullrich, who is noted for her emphasis on brand management and technology. However, in mid-October 2020, the firm (originally formed by merger in 2017) announced an amicable parting of the ways -in part due to current circumstances in the jurisdiction. Berton Moreno reverts to its pre-merger identity as Berton Moreno IP Law, whereas the Ojam-led team, originally derived from the Mitrani firm, has reincorporated as Ojam Bullrich Flanzbaum, since when it has further strengthened its offering with the Februrary 2021 hire of IP, IT and privacy specialist Mariano Peruzzotti, as a partner, from Marval O’Farrell Mairal.
Anheuser-Busch InBev / Cervecería y Maltería Quilmes
Johnson & Son
Sony Play Station
River Light (Tory Burch)
- Advised Vodafone Group on successfully overturning a block to its efforts to register the ‘VODAFONE’ trade mark in Argentina.
- Represented Netflix Studios in a trade mark opposition case concerning the ‘EDHA’ mark.
- Acted for Nike Innovate on overcoming opposition to its ‘JOYRIDE’ trade mark in Argentina.
- Advised Corteva Agriscience, the agriculture division of DowDuPont, on coordinating patent filings in Argentina and Latin America for the protection of seed and plant- related technology.
Long-established boutique G. Breuer focuses exclusively on the registration, enforcement and protection of IP, with extensive expertise in patents, trade marks, copyright and software. The group advises a raft of local and multinational clients on prosecution, portfolio management and litigation, with strong activity in the technology, life sciences and energy spheres. Additionally, its compact size marks it as a popular choice for international law firm referrals. Jorge Otamendi is a seasoned IP specialist, with a focus on both IP and competition matters. The group also includes experienced IP expert Alejandro Breuer Moreno and up-and-coming partner Agustina Martínez Estrada, who is particularly well versed in trade mark matters. Talented associate Alfonso Campos Carles maintains a broad practice, which spans IP, unfair competition and privacy law.
Noetinger & Armando
Noetinger & Armando houses a full-service IP practice, which is complemented by its ability to lean on the boutique firm’s standalone offerings in consumer law, new technologies and entertainment, media and sports law. On the non-contentious side, the team has strong cross-border expertise in portfolio management and is a popular choice to handle regional management of trade mark, patent and copyright portfolios. On the contentious side, the firm handles the full spread of IP litigation, including judicial claims, administrative law cases and consumer class actions. Fernando Noetinger heads the IP litigation team and focuses on disputes involving rejected patent applications, unfair competition and personality rights. Other key contacts include trade marks and copyright head Matías Noetinger, and Miguel Armando, who spearheads the complex litigation and class actions group.
E.I Dupont de Nemours
IOV Lab – Koibanx
Fish & Richardson
Ladas & Parry
- Represented Société Conseils de Recherches et d’applications Scientifiques (SCRAS) in filing the first appeal against a decision from the Argentine Patent Office that rejected an application where the grace period was based on Patent Cooperation Treaty (PCT) publication.
- Advised Tarjeta Naranja on trade mark matters, including rebranding and filing trademark applications in 15 countries.
- Advised travel agency, Travel Reservations, on rebranding and trade mark matters.
- Represented Datakit in a compliance claim against an infringer (Prodismo), which resulted in Prodismo purchasing a license from Datakit to use the software.
Richelet & Richelet
Richelet & Richelet, which stands among the market’s leading band of IP boutiques, is best known for its formidable reputation in IP litigation. Among its contentious cases, the team kept busy advising on a mix of IP, data protection and privacy litigation — it also brings to bear complementary expertise in unfair competition and consumer law actions. On the non-contentious side, the firm is well-equipped to advise on prosecution and portfolio management across a wide range of patent, trade mark and copyright matters. Senior partner Ricardo Richelet oversees all departments and brings to bear deep experience in IP prosecution and litigation. Gastón Richelet heads the patent and design practice and is recommended for his representation of multinational corporations in local and regional filing and prosecution matters.
Compagnie Gervais Danone
Fraunhofer-gesellschaft zur förderung der angewandten forschung
Formula One Licensing
- Advised NUtec Digital Ink on a contentious trade mark matter.
Allende & Brea is widely recognised for its niche strength in technology and internet matters, where it counts Facebook, LinkedIn and Snapchat among its representative clients. The group covers all aspects of IP protection, management and litigation but it particularly excels in trade mark and domain name issues. Former computer programmer and trade mark specialist Pablo Palazzi ‘understands the technology behind the client’. Senior associate Marco Rizzo Jurado left to become associate general counsel at Facebook.
‘Pablo Palazzi is a trade mark lawyer and a very well-known expert in new technologies. He has not only knowledge of the law, but a good sense of strategy in legal terms. He is the only lawyer I know who understands the technology behind the client.’
The Pokémon Company International
John Bean Technologies
- Advised Facebook on trade mark registration and enforcement.
- Acted for LinkedIn on trade mark registration and enforcement matters.
- Advised Instagram on trade mark registration and enforcement.
Baker McKenzie’s IP group is distinguished by its ‘high-quality services’, ‘practical counsel’ and ‘strong track record in the local, regional and international markets’. The firm handles a comprehensive range of IP issues, with an emphasis on advising multinational companies on trade mark prosecution matters. It additionally advises on trademark enforcement work and IP litigation — it also houses a growing patent practice. Department head Bernard Malone is highlighted as a ‘go-to trade mark lawyer in Argentina’. Experienced associate Maria Bassi is also recommended.
‘They have a high level of experience in the management and administration of the brand portfolios of large corporations in various industries.’
‘They offer high-quality services, friendly client care, and expeditious and immediate responses. They also have a strong track record in the local, regional and international markets. They are very professional.’
‘Good substantive knowledge and practical counsel. Excellent firm with in-depth trade mark expertise.’
‘Provides consistently superior service at a fair price.’
‘Bernard Malone is a widely acknowledged trade mark expert. He is our firm’s go-to trade mark lawyer in Argentina.’
‘The lawyers we have had the pleasure to work with are supremely effective and efficient, as well as very friendly. The work of Bernard Malone, Maria Paula Palomar and Maria Bassi stands out.’
Yamaha Hatsudoki Kabushiki Kaisha
Victoria’s Secret Stores Brand Management
Nissan Jidosha Kabushiki Kaisha (Nissan Motors)
Bausch & Lomb
Bodega del Desierto
Caesars Interactive Entertainment
Church & Dwight
Forever Living Products
- Advised 3M on the coordination of various trade mark matters in Argentina and across Latin America, including prosecution, enforcement and litigation.
- Advised several multinational corporations (including Hyundai and HP) on customs interceptions.
- Represented Victoria’s Secret in filing eight civil and criminal actions against counterfeiters of various Victoria’s Secret-branded goods.
Beccar Varela’s practice advises on the full range of contentious and non-contentious IP law, with an emphasis on trade mark matters. Among its recent highlights, the firm advised a slew of multinational corporations on various trade mark prosecution and portfolio management issues, including American Airlines, Campari Argentina and J. Simplot. Other key areas of activity include patent, copyright and advertising-related work. The department is led jointly by Emilio Beccar Varela and Florencia Rosati — both of whom also spearhead the TMT practice.
Samsung Electronics Argentina /Samsung Electronics (Korea)
The JR Simplot Company
WestRock Packaging Systems
Campari / Campari Argentina
Prisma Medios de Pago (Visa, Banelco, LAPOS, Monedero, PagoMisCuentas, TodoPago)
Sergio “Kun” Agüero
Medios y Contenidos Producciones (RGB Entertainment)
- Advised Samsung Argentina on various IP matters, including advertising issues.
- Represented Grupo Enjoy in trade mark opposition proceedings related to the ‘ENJOY’ mark.
- Advised WestRock Packaging Systems on the prosecution of their patents in Argentina.
Ferrer Reyes, Tellechea & Bouche
Ferrer Reyes, Tellechea & Bouche’s diverse group is recognised for its strong skill sets in both patent and trade mark law — it also advises on copyright and models and designs. The five-partner team is well versed across the full spread of filing, defence, management and licensing issues, with a solid track record in contentious matters. Key contacts include patent specialist Santiago Ferrer Reyes as well as Julia Elena Tellechea, who focuses on trade mark prosecution and defence proceedings, and Diego Bouché Ocampo, who has an emphasis on trade mark portfolio management.
Hausheer Belgrano & Fernández
Hausheer Belgrano & Fernández’s exclusive focus on industrial and intellectual property translates into a varied client roster, which includes local and foreign entrepreneurs through to large multinational corporations. The group advises on an array of trade mark, patent, copyright and domain name matters, with robust experience in the life sciences, financial services and entertainment sectors. Graciela Pérez de Inzaurraga manages the foreign clients department and handles a range of trade mark, copyright and patent matters. Carolina Fernández is noted for her trade mark practice.
‘Professional’ and ‘attentive’, Mitrani Caballero & Ruiz Moreno Abogados scores highly for its ‘understanding of the client’s needs’. The practice covers the waterfront on IP law, with experience in patents, trade marks, trade secrets, copyright and technology, among other areas. It also stands out for its record in multi-jurisdictional work, including cross-border IP portfolio management, licensing matters and litigation cases. Department head Ignacio Bérèterbide advises on prosecution, litigation and transactional issues and is noted for his ‘broad vision of the business’.
‘The team compares favourably with those of other firms. They are very professional in their work and advice. They are attentive and their work is always impeccable.’
‘It is a very broad firm, with knowledge in all branches of law. Specifically in IP, they are highly recognised and have the requisite knowledge to outline the strategy in each specific case.‘
‘We value their understanding of the client’s needs, personalised attention and timely follow-up of issues.’
‘Ignacio Bérèterbide, and the team’s associates, have a broad vision of the business, which allows them to better serve clients.’
‘Rita Colombo and Ignacio Bérèterbide are distinguished by their professional and personal approach.’
Instituto Tecnológico de Buenos Aires (ITBA)
Universidad Torcuato Di Tella
Perla del Norte
- Advised Tenaris on its global IP portfolio, including on the management of 715 trade marks across 107 countries, as well as patent renewals and domain name administration.
- Represented Perla del Norte in defending a challenge to its ‘BENSIMON’ trade mark.
- Advised Dr Seuss Enterprises on its nullity action against Mr Marcelo Albici’s ‘GRINCH’ and ‘COMPLEJO GRINCH’ trade mark registrations.
Pérez Alati, Grondona, Benites & Arntsen’s growing IP practice recently secured Pan American Energy as a new client, after the private Argentine energy giant decided to transfer all of its trade mark work to the firm. The group also manages trade mark portfolios for local and global clients in the technology, retail and food and beverage sectors. Key contact Fernando Alonso advises on trade marks, patents, trade names, advertising and privacy matters. Julio Lago is recommended for IP litigation.
Red Bull / Red Bull North America
Molinos Rio de la Plata
Bodegas Esmeralda (Catena Zapata)
Pan American Energy
Massalin Particulares (local branch of Phillip Morris)
- Successfully represented Laboratorios Filaxis in a patent infringement case brought by Eli Lilly and Company.
- Advised Pan American Energy on trade mark portfolio management in Argentina and abroad.
- Represented Philip Morris (PM) in filing a complaint against British American Tobacco (BAT) seeking to remove an opposition filed by BAT against PM’s trade mark application for the ‘COOL MENTHOL STRIPES’ design.
Palacio & Asociados
Palacio & Asociados is best known for its record in trade mark and patent filings and it files a particularly high volume of applications on behalf of foreign clients. The firm also receives a steady stream of litigation, portfolio management and anti-counterfeiting matters from companies operating in the life sciences, technology, electronics, telecoms and retail industries, among others. Managing partner Héctor Palacio is recognised for his experience in patents and trade marks. Diego Palacio is a talented up-and-coming IP specialist.
Tetra Pak (Tetra Laval Holdings and Finance)
General Cable Technologies
Kenneth Cole Productions
Shenzhen Mindray Bio-Medical Electronics
Stiching Greenpeace Council
Indian Motorcycle International
Citizen Tokei Kabushiki Kaisha (also trading as Citizen Watch)
Lux Risland Branding
- Represented Samsung Electronics in trade mark opposition proceedings regarding the ‘SMARTHINGS’ mark.
- Advised Harley Davidson on trade mark enforcement matters.
- Assisted AccuWeather with a patent application filing.
Bomchil’s ‘diligent and reliable’ group is particularly active in trade mark matters, where it routinely advises on registration, protection and general portfolio management. Notably, it also had a strong recent run in copyright and licensing issues. Senior associate Patricio María Albornoz is ‘professional and responsive’ and co-heads the department alongside Adrián Furman, who also sits in the M&A and entertainment law groups.
‘We engage the firm for brand-related work and they have always been very diligent and reliable.’
‘Patricio Albornoz has been very helpful, professional and responsive to our needs.’
Entre Ríos Crushing
World Vision International
TVS Motor Company
PepsiCo de Argentina
Pernod Ricard Argentina
Banco de Servicios Financieros
Gobierno de la Ciudad de Buenos Aires
Jerónimo María Gallo
Manuel Godoy Luque
Marcos Torres Revol
Santiago Rodolfo Allen
WiseTech Global (Argentina)
Tomas Javier Figuerola
WILD FI Argentina
CNP Assurances Compañía de Seguros
- Advised Allergika Pharma on trade mark matters, including on the filing of applications.
- Assisted Bigbox with the management of its local and international trade mark portfolio.
Estudio Chaloupka stands out for its ‘reliable and excellent service’. The IP-focused firm advises on the full spread of matters, with considerable expertise in patent litigation. The team also handles a significant volume of patent and trade mark prosecution, registration and enforcement. Claudia Serritelli heads the legal and patent departments and ‘provides prompt and clear explanations'. Paula Galván and Olga Maidana lead the foreign trade mark and local trade mark groups, respectively.
‘The Estudio Chaloupka team is excellent. They always provide reliable and excellent service. I am always confident that my instructions will be followed promptly and accurately; if something in my instructions is unclear, they contact me with good clarifying questions.’
‘Claudia Serritelli always provides a clear and thorough analysis of office actions issued by the Argentine Patent Office. She is very helpful in answering my questions about Argentine patent practice, particularly how it differs from US patent practice, which is my area of expertise. If I send instructions that are contrary to Argentine patent law, or if I ask for her opinion on which of several options is the best way to proceed, she provides prompt and clear explanations of her recommendations and reasoning for these choices.’
The Dow Chemical Company
Corteva Agriscience (formerly Dow Agrosciences)
Santander Investment Bank
Banco de la Nación Argentina
Philip Morris Products
World Wrestling Entertainment
Bridgestone / Firestone North American Tire
The Ritz Hotel
- Represented Broomco, as plaintiff, in a court action against the Argentine Patent Office, concerning the interpretation of Article 5 of the patent law.
- Advised Allergan on many simultaneous infringements of its ‘BOTOX’ mark in Argentina.
The Buenos Aires’ arm of international IP specialist ClarkeModet receives its first ranking on the back of its robust record in trade mark and patent matters in Argentina. The firm advises on the full range of contentious and non-contentious issues, with particular experience in patent filings and patent portfolio management. Maria Najera heads a team that also includes Marcos Santiváñez Vieyra, who recently joined from Bruchou, Fernández Madero & Lombardi.
‘The team at ClarkeModet has a precise and detailed knowledge of the regulations relating to intellectual property, and their application in an administrative and court setting.’
‘The firm is thorough and practical.’
Herrero & Asociados
The Argentine outpost of Spain-based Herrero & Asociados serves as a key firm hub for regional IP portfolio management, with several multinational clients using the Buenos Aires team as a springboard into Latin America. The practice is well weighted between patent and trade mark work, and also benefits from significant litigation capability. Office head Ariel Juan Ibáñez is experienced in patents, trade marks, plant varieties, utility models and copyright issues.
Grupo Editorial Planeta
Litvin Marzorati Legales
‘Flexible and agile’, Litvin Marzorati Legales’ growing team attracts praise for its ‘disciplined and organised’ approach. The boutique firm advises a wide range of local and international clients on IP protection, unfair competition matters, franchising agreements and litigation. Firm founder Melisa Litvin is a ‘legal firebrand’ and her practice takes in the full spread of IP matters, with a focus on patents and trade marks. Osvaldo Marzorati focuses on arbitration and distribution law.
‘As a US attorney who deals with firms outside of the US on almost a daily basis to assist me in the representation of my clients’ intellectual property rights, I am confident in my opinion that Litvin Marzorati Legales is one of the best with which I deal.’
‘They are prompt in responding to all communications, knowledgeable in the law and competitive in their pricing.’
‘They stand out for their efficiency, as well as their reliable service that is adapted to the client. Their qualities are that they are responsible, disciplined and organised, and always prepared.’
‘The quality of the team’s work is excellent, and they have a good reputation for their success rate and client care.’
‘It is a flexible and agile team, which is very proactive and provides timely responses. I have not always had this experience with firms I have worked with in the past. ’
‘It’s great to work with this law firm. The team is very responsive and I feel our clients are in good hands when it comes to dealing with trade marks.’
‘Melisa Litvin is simply terrific. Not only as a lawyer, but as a person. Anyone would be honoured to make her acquaintance and to work with her. Not only is she a legal firebrand, but she has a wonderful personality and is a pleasure to deal with.’
‘I usually deal with Melisa Litvin. I knew her even before she started her current firm. I like her hands-on approach and the quality of the work results.’
Buldey Company (Argentina)
Rita Lopez Forastier y Otros
Asociación De Fútbol Argentino (AFA)
Somos Next / SomosTV
Garlock Pipeline Technologies
Nubeliu- Rodrigo Benzaquen
Joyeria Jean Pierre
Air New Zealand
- Advised El Gaucho Real Estate, as franchisor, on the development of a licensing and franchising agreement for the trade mark ‘SIPAN’ in Paraguay with franchisee, Grupo Cruz.
- Represented a restaurant administration company in bringing trade mark opposition proceedings against a Peru-based entity.
Estudio Randle is recommended for its solid offerings in both IP and advertising law. The firm continues to expand its footprint in the market and among its new client wins, it now manages the trade mark portfolios of SURA Seguros and food company, Lagomarsino. Key contact Paula Fernandez Pfizenmaier is recommended for her broad practice, which spans IP, advertising law, unfair competition and media and entertainment.
Grow Solutions Tech
Daniella Ortiz Design
Masas Buenos Aires
Loeb & Loeb
Frankfurt Kurnit Klein & Selz
Sabrostar Fruit Company
Arzobispado de Salta
- Advised Ferrero Trading Lux on a media buying contract review.
- Assisted PrizeLogic with the review of sweepstakes rules for a programme it was conducting on behalf of its client, Amazon Web Services.