Intellectual property in Colombia
Widely recommended, Cavelier Abogados is a top firm in the sector where it fields the largest team (44-strong); it is characterised as ‘extremely rigorous and thorough and very approachable’. Key names among the six partners heading the team are Andrés Rincón (‘very knowledgeable and always available’), Edna Sarmiento and Eduardo Varela. Co-ordinator of trade marks and copyright Martha Vanin and head of international affairs Jorge Chávarro also receive praise. The practice is defending Excelec International in a patent infringement claim before the Patent Office whose outcome is likely to set a precedent; and also manages Intercept Pharmaceuticals’ patent portfolio in Latin America and the Caribbean by implementing the patent prosecution highways provided by the US Trade Mark Office and other Latin American patent offices - recent mandates saw the firm file over 20 patent applications under the PCT Treaty in multiple jurisdictions for complex biotechnology-related pharmaceutical inventions. Associate Carolina Vargas is also noted. Clients include Cisco Systems, Nintendo, Reebok and Adidas.
Specialised in IP, Lloreda Camacho & Co.’s 16-strong practice is highly recommended, with clients talking of an ‘outstanding team of both attorneys and patent experts’ that is ‘highly knowledgeable and experienced’. Heading the team are Tatiana Carrillo, Alicia Lloreda and Ana María Castro (‘a leading practitioner in patents and life sciences’); all are highly regarded. The practice continues to handle over 900 patent applications - related to HIV, HCV, oncological, gastrointestinal and cardiovascular pharmacological products - for Gilead across the entire Latin America region. The firm also obtained patent approval for a joint invention in the biotechnological field of Universidad De Los Andes and Corporación Corpogen; it is seeking similar approval in the US. Senior associates Natalia Franco and Lucía Tamayo are also noted. Other clients include Cortexyme, F. Hoffmann-La Roche, Cell Design Lab and Team Foods.
Baker McKenzie S.A.S.’s 15-strong practice group handles the full spectrum of intellectual property matters and has considerable experience managing large portfolios of IP rights nationally and internationally, particularly in the pharmaceutical sector; it also has niche expertise in falsification. The 15-strong team has ‘extensive experience’, is ‘proactive’ and ‘provides alternatives’. Juan Pablo Concha heads the team, with Ricardo Metke also a key member. However, the practice saw the retirement of Álvaro Correa and Cristina Matiz left for the country’s Council of State. Recent mandates saw the team act on behalf of Abbott, filing an opposition against Nestlé’s application for the mark HM-O; the trade mark office declared Abbott’s opposition well founded and denied registration for the mark HM-O in classes 5 and 29. The practice also filed an opposition against MEXAN on behalf of Bayer in class 5 seeking to obtain the notoriety of the mark MEXSANA in Colombia. The Trade Mark Office did not only deny the registration of MEXAN, but also recognised the notoriety of MEXSANA. Other active clients iclude PepsiCo, Caracol Radio, GlaxoSmithKline and Kock Industries.
Brigard & Castro
Brigard & Castro’s 11-strong team (plus four technical specialists) services the registration and protection of all IP rights and associated litigation. The intellectual property arm of full-service corporate firm Brigard Urrutia, the practice is co-led by Juan Pablo Cadena, María Fernanda Castellanos and Martín Torres; associates Carlos Alberto Carvajal and Catalina Gómez are also key team members. The group acted successfully for Inditex, filing an application against the trade mark ZZ JOHANNA ZARAZA based on its well-known ZARA registrations in multiple classes. Other matters included successfully representing an internationally recognised hotel brand in an unfair competition action against a competitor who registered a similar trade mark and used it in a way that could generate consumer confusion. Other 2018 highlights included assisting Gelgene Corporation after the patent office had rejected patent applications for cancer treatment; the firm prepared a series of filings that overcame the objections raised. Clients include Colgate Palmolive, Philip Morris, Amazon and Google.
Providing an ‘excellent overall service’, Gómez-Pinzón Abogados (GPA)’s department offers ‘quick and effective’ advice across the whole IP spectrum. The 16-strong practice is led by Mauricio Jaramillo, with senior associates Juanita Pérez and Catalina Arango also key members; all are recommended. The team acted for Mobility View, recently, successfully undertaking the prosecution of a PCT patent application (relating to methods for apportioning operations and associated costs of computing devices) that had previously been rejected. The practice also successfully represented Procafecol in an infringement and unfair competition action. Clients include The Clorox Company, Fox Telecolombia, Grupo Aval and Thomson Reuters.
Specialist boutique OlarteMoure is recognised as a leading name in the patent field across Latin America, particularly in the pharmaceuticals sector. The practice also handles trade mark, copyright, regulatory matters and litigation. The very highly regarded Carlos Olarte (‘one of the best patent attorneys in the region; proficient in IP matters and business oriented’) and Juan Guillermo Moure head the sizeable 35-strong team, many of whom have dual professional backgrounds (legal and scientific). Trade mark director Bibiana Agudelo is also noted. The practice is responsible for the maintenance of large patent portfolios across Latin America, including those of Novartis AG, Merck and Pfizer, among other major companies; by November 2018 the firm had filed over 360 regional cases and processed over 700 office actions. The firm continues to represent Industria de Alimentos Zenú (by instruction from Reed Smith LLP) in US litigation against LatinFood Corp, which registered and is selling products branded in the US with the clients’ well-known trade mark ZENÚ. Alexander Agudelo, Carlos Parra and María Clara Múnera were all promoted to partner in 2018. Other clients include AGP, Bristol-Myers Squibb, EAFIT, Productos Familia and Panacea-Velvack.
Castellanos & Co
‘A highly reliable firm’, Castellanos & Co provides ‘personalised IP services at an affordable price’ across the whole sector. Ximena Castellanos and Margarita Castellanos, who are both lauded for providing ‘in depth-analysis and sound advice on an expedited basis’, head the four-strong boutique, which successfully filed an opposition on behalf of Puma against an application for registration of the trade mark “Pumaron”. The team has also been acting for Swatch, Giorgio Armani, Genzyme Corporation and Laboratorios Farmacéuticos Rovi.
‘Vastly experienced’, Dentons Cardenas & Cardenas is particularly active in trade mark matters, particularly major portfolios, as well as consumer protection, privacy and patents. Luz Helena Adarve and Juanita Acosta (‘a top data protection attorney’), co-lead the 12-strong practice, which filed an opposition on behalf of Facebook against a third party’s trade mark application for Brainbook in international classes 9, 35, 38 and 41; the parties reached an agreement for the withdrawal of the application. The practice continues to act for Microsoft, processing 65 software-related patent registrations (including 17 new applications) during the course of 2018. Other clients include Ferrari, Avianca, Moet & Chandon, Exxon and Unilever.
Holland & Knight’s five-strong practice is recommended for its ‘high-quality work’ in prosecuting applications and maintaining and enforcing registrations. Danilo Romero, who ‘stands out due to his expertise and good relations with clients’, heads the team, which continues to advise Organización Terpel regarding its intellectual property matters, particularly the protection of trade dresses, trade marks, and patents; the team’s 2018 matters included assisting the company with establishing the notoriety of the trade mark “Terpel”. Other clients include Williams Sonoma, Major League Baseball Properties and Pegatex Artecola.
At Philippi Prietocarrizosa Ferrero DU & Uría, Mauricio Patiño co-leads a practice with genuine region-wide capability along with principal associates Camilo Suárez, head of IP and unfair competition; Gerardo Flórez, who leads the international trade mark prosecution, copyright and data protection team; and Zoraida Fonseca, who heads up the local trade marks and patents department. The nine-strong group is currently representing Postobón before the Andean Court of Justice in a first-of-its-kind case in the region, in which plaintiff Acava sued the Republic of Colombia for breaching IP laws by granting the registration of a particular pink-coloured trade mark to Postobón to identify apple-flavoured sodas. Other matters saw the team act for Robert Bosch in a seizure raid as part of the anticounterfeiting strategy jointly deployed by the firm in conjunction with the Local Specialized Prosecutor’s Office. Clients include Nestlé, Discovery Communications, Longchamp and Louis Vuitton Malletiere.
The highly regarded Posse Herrera Ruiz offers a one-stop service that centralises IP filings in 23 Latin American countries; it is also particularly experienced in trade mark litigation. Helena Camargo, whose ‘ability for solving problems’ is frequently highlighted, heads the team. The ‘well-known’ Ernesto Cavalier and noted associates Mónica Bonnett and Annabelle Angarita are also key members of the six-strong practice. Recent matters include representing Converse in a breach of trade mark claim against Traverse All Crazy; and advising Biozoo on a strategy to gain approval for the use of its trade marks after their cancellation following the granting of notoriety status to Laboratorios Zoo. Other clients include Karma Automotive, Aphria, Etex and Inversiones Gondwana.
Triana, Uribe & Michelsen
Market sources value Triana, Uribe & Michelsen’s in-depth knowledge concerning trade marks and advertising law, with the practice also active in commercial litigation, patent prosecution, domain names and unfair-competition litigation, among other IP-related matters. Fernando Triana and Juan Carlos Uribe head the seven-strong practice, which recently represented Pastelería Jassir before the Trade Mark Office in obtaining the registration of “Margarita Saieh De Jassir” and confirmation that the trade mark can co-exist with “Margarita”, owned by PepsiCo. Other highlights included the registration of the trade mark “Bio-Rad” in international class 5 on behalf of Bio-Rad Laboratories. Clients include Caracol Television, Casa Editorial el Tiempo and Biotoscana Farma.
The Colombian office of the multi-jurisdctional BBGS alliance, BBGS ABOGADOS handles a broad array of intellectual and industrial property, focusing on the prosecution, enforcement and litigation of trade marks, along with copyright and entertainment matters. The six-strong team, which provides ‘quick replies’, is led by Myriam Montenegro; recent matters include successfully filing an opposition on behalf of Iglesia El Lugar de Su Presencia against a trade mark application for “Pasion por su Presencia”. Well regarded IP-practice director Nidia Osorio is also a key name. Clients include Orange Brands, Calvin Klein, Sony Pictures and Plural Comunicaciones.
CMS Rodríguez-Azuero’s IP practice enters the rankings following the development of the practice that has occurred since the incorporation of Karl Mutter to head the area in April 2018. A specialist in life sciences regulation with over 18 years’ experience in the IP sector, he formerly ran his own firm Mutter Asociados. Associate director Lola Kandelaft handles the IP and competition areas, while TMT-specialist Lorenzo Villegas Carrasquilla is also active in the sector. The team assisted Óptica Alemana, established in 1914, with the implementation of a global defence strategy to prevent the risk of generification of the brand, a process involving cease-and-desist letters, alternative dispute resolution processes and eventually infringement lawsuits. Other clients include Bodytech, CRC Salud Viva and Vesalius Pharma.
Contexto Legal Abogados
Medellín-based Contexto Legal Abogados’ practice is reputed for its strength on the contentious aspects of the sector; noted practitioner Andrés Costa heads the seven-strong practice, which assisted Corporación Universidad De La Costa Cuc with filing numerous patents before the World Intellectual Property Organisation (WIPO). Other mandates saw the team advising Siscoax on reaching several agreements related to the infringement of the company’s intellectual property rights by third parties. Clients include Grupo Bios, Universidad del Atlántico and Ecoflora.