Intellectual property in Colombia

Brigard Castro

Much lauded, Brigard Castro stands at the forefornt of the market with a comprehensive IP offering under the leadership of managing partner Juan Pablo Cadena. Along with co-heads Martín Torres leading the trade marks area, and María Fernanda Castellanos, head of patents and the life sciences department, Cadena leads a nine-strong lawyer group, which is supported with four in-house technical advisors. The practice is held up for its immediate response, proximity and bringing additional bench-depth to client's needs through the boutique's full-service sister firm Brigard Urrutia. The practice fields a second line of experienced associates with Catalina Gómez, who specialises in industrial property and copyright; and Carlos Carvajal, a member of the litigation team who advises clients in connection with enforcement matters, both noted.

Testimonials

They are incredible! Excellent professionals, excellent response time and attention to our affairs in Colombia! Simply exceptional!’.

The attorneys at this firm are incredibly attentive, helpful, and expert in their areas. They are our allies in Colombia. They stand out from the competition due to the quality of their people. We loved working with Martín Torres, María Fernanda Castellanos, Juan Pablo Cadena and Carlos Carvajal; they make great team’.

Immediate reaction, no matter the customer’s size. Always with a very good attitude to help, and quick and correct answers. In the face of competitors, it differs in having a whole portfolio of lawyers to help with different issues‘.

We specifically work with Brigard Castro for our trade mark and associated litigation registration processes. They provide us with excellent assistance’.

I would highlight Juan Pablo Cadena, María Fernanda Castellanos and Carlos Carvajal’.

Key clients

Colgate-Palmolive

Philip Morris

Inditex

Polo Ralph Lauren

Amazon Technologies

Ferrero Rocher

Nike

Forever 21

Google

Coca-Cola

Visa

FIFA

American Eagle

Work highlights

  • Advised Inditex on the opposition filed against trademark ZZ JOHANNA ZARAZA (& design) in the name of JOHANNA GIRALDO ZARAZA, due to the reproduction of the word element and famous mark ZARA.
  • Successfully represented Amazon on its application for trademark FIREFLY (word) in Class 41; a complex matter since the trademark was denied in the first instance due to the existence of trademark FIREFLY (logo) almost identical in Class 9.
  • Successfully represented Signal Pharmaceuticals on obtaining the patent for a  pharmaceutical composition that overcome the drawbacks of prior formulations.
  • Adivsed Dolby International on obtaining a patent for a software invention for layered audio coding.  
  • Provided legal assistance and judicial representation to an important European company on the negotiations to prevent litigation commenced by a local distributor.

Cavelier

Top-notch specialist firm Cavelier stands out as 'unique for its professional excellence and impeccable customer service'. The long-established mid-sized firm offers 'great knowledge of IP law', while also being 'very skilled in legal proceedings'. The firm prides itself on the comprehensive coverage of its impressively wide-ranging practice, which spans trade marks, copyright, patents, international enforcement and litigation, consisting of a four-partner group leading a 46-strong lawyer team. The firm also houses an experienced, in-house patent and regulatory affairs team of 24 experts in various life-science disciplines, as well as in electronics, software and mechanical engineering. Co-heads Eduardo Varela, who leads the trade marks and copyright team; and Andrés Rincón, who heads up the patents and life sciences practices, are both strongly recommended. Jorge Chávarro, head of international affairs; and Edna Sarmiento, who leads the litigation team, are additional names to note at partner level. Frontline associate support comes from Julian Ruiz (trademarks and copyright), and Lina Perez (commercial law and IP - particularly portfolio management, enforcement and IP transactions).

Testimonials

The practice is unique for its professional excellence and impeccable customer service. With other offices we have not been as close nor not felt such constant support’.

The team is serious, efficient and reactive’.

Eduardo Varela is an excellent professional’.

Each one of the members of team make you feel confident. They have great knowledge of the IP law, and they are also very skilled in legal proceedings’.

We highlight Andrés Rincón, the leader in our defense in a patent infringement lawsuit against us that we won, and [technical leader of the patent department] Carolina Vargas, a good advisor on patent applications‘.

Key clients

Boehringer Ingelheim Animal Health

Corteva

Adidas

Nintendo

Excelec International

National Coffee Federation

Reebok

Amazon Studios

Intercept Pharmaceuticals

Cisco

Manchester United Football Club

Claro

Work highlights

  • Structured Banco Davivienda’s innovation and IP policies.
  • Successfully filed a trade mark infringement suit on behalf DD IP Holder (aka: Dunkin’ Donuts) requesting a preliminary injunction against a Colombian doughnut company in what was one of the few trade dress cases to date.
  • Advised Hermès International on the seizure of more than 300 counterfeit wallets found in Quetzal Port in Guatemala.
  • Advised the Colombian Association of Flower Exporters on a strategy for the administration, maintenance and exploitation of its three appellations of origin, contributing to enhance their recognition as intangible assets.
  • Advised Billboard in a successful prosecution process to obtain the famous trade mark “Billboard”.

Lloreda Camacho & Co.

Lloreda Camacho & Co. distinguisehes itself with its specialist knowledge, rendering full-service IP-capability to an impressive client list, composed of major pharmaceutical and food and beverages multinationals, as well as significant global firms in the e-commerce, entertainment and social media sectors. The department acts regionally protecting and enforcing client's portfolios, and has a growing array of work related to Asia and Europe. The firm fields three amply recognised and expert partners who direct a 13 lawyer-strong group, and can also count on a nine-strong technical advisory team. Alicia Lloreda leads the IP practice with co-heads Tatiana Carrillo (head of trade mark and copyrights), and Ana María Castro (head of patents and life sciences - segments in which she is a prominent player). Trade mark senior associate Natalia Franco, is also a key name.

Key clients

Federacion Nacional De Cafeteros  De Colombia – Juan Valdez

Gilead Sciences

Incyte Corp

Hoffman-La Roche

Cortexyme

The Goodyear Tire & Rubber Company

Societe Des Produits Nestle

I-Mab

Team Foods

Detnet Southafrica

Work highlights

  • Acted on behalf of various clients on more than 100 successful oppositions and cancellation actions matters, including Apple Logo, Banana Boat, La Casa De Las Flores, 21st Century Fox (Mixta), and Captain America.
  • Represented Gilead Sciences–Gilead Pharmasset in over a 900 patent applications in Central America, the Caribbean and Latin America, managing its patent portfolio related to HIV, HCV, oncological  gastrointestinal and cardiovascular pharmacological products.
  • Acts for GoodYear regarding the company’s patent and industrial design portfolio in Colombia.
  • Assisted an entertainment venue company on the negotiation of tariffs for public performance rights.
  • Successfully acted on behalf of a global social media company in a trade mark infringement case.

Baker McKenzie S.A.S.

Baker McKenzie S.A.S. houses a full-suite practice, which demonstrates weight across an array of IP prosecution, management, enforcement and litigation matters, and advises an impressively diverse client list composed of some of the world’s leading multinational corporations. The 'extraordinary' Juan Pablo Concha, heads a 13-strong practice group that shines in trade mark portfolio-management, prosecution and unfair competition litigation. Of counsel Ricardo Metke and noted senior associate Yuliana Salamanca are also key members of the practice, which has developed particular niche expertise in falsification matters with senior associate Bibiana Cala, a criminal litigator specialised in IP and competition. The firm's healthcare industry group -also led by Concha- is additionally supported by three technical associates and provides regulatory advice and patent advisory and prosecution.

Practice head(s):

Juan Pablo Concha

Testimonials

Baker McKenzies’s intellectual property practice is impeccable, especially in regard to brand knowledge. The team’s knowledge on IP issues is unique, but also the strategies employed in the defence and protection of trademarks and distinctive signs. We have been working with them for over 20 years – before it was even Bakers’.

Their knowledge, management and availability. The way they handle topics, from the most difficult to the easiest. I worked with Juan Pablo Concha and Yuliana Salamanca, both of them are extraordinary. Every time we had a very difficult subject they took it forward’.

As qualities to highlight, the firm’s lawyers stand out for their friendliness, excellent customer service and professionalism in the way they handle their cases. In our company, we have been pleasantly surprised by the communication skills of the Baker McKenzie’s lawyers, especially those of senior associate Yuliana Salamanca’.

Juan Pablo Concha is an excellent lawyer, he is always ready to attend to any request promptly’.

Key clients

Apple

Unilever

Chanel

Hugo Boss Trademark Management

Starbucks

Vive Café

Auteco Mobility

Maple Bear Canada

Universidad Javeriana

Ecopetrol

Cosmoagro

Primax Colombia

Bureau Veritas

Work highlights

  • Represented Unilever in successfully opposing the registration of the LURYX mark in class 3, on the grounds of the company’s rights over the mark LUX; additionally obtained the extension of the notorious character of the mark.
  • Advised a global hardware and software company on an array of IP related-services on an ongoing basis; undertaking, among other matters, the enforcement of its registered industrial designs.
  • Obtained a patent for an invention relating to beverage containers that had been previously rejected.
  • Represented a world-wide multinational manufacturer and marketer of home appliances on generating a strategy to find unauthorised distributors and sellers

Castellanos & Co

Castellanos & Co impresses for being 'knowledgeable of the area, very attentive and agile', working 'efficiently' and 'delivering quick responses'. The long-established boutique enjoys a strong profile locally due to its deep roots in the Colombian market, while internationally it has strong links with regional law firms and multinational clients such as Sanofi and Merck. The four-strong lawyer practice is led by Ximena Castellanos, who leads the trade mark department, and Margarita Castellanos. Covering the full range of IP work including prosecution, enforcement and litigation, and transactional and advisory work, the firm has a specialty in life sciences matters that has strengthened over the last few years with the development of its patent area -currently counting of four patent engineers, under the direction of Margarita Castellanos.

Testimonials

Not a large team, however, they works very efficiently delivering quick responses’.

Both Ximena Castellanos and Margarita Castellanos are recommended; each in her own area, they are solvent in their opinions. Perhaps because it is not a large office, their attention is more, personalised’.

A team knowledgeable of the area, very attentive and agile’.

Both Margarita Castellanos and Ximena Castellanos are very accessible and attuned to the demands of our clients in a quick response manner. We appreciate their guidance and advice’.

Key clients

Sanofi

Mary Kay

Merck

Puma

Volkswagen

Swatch

Work highlights

  • Acted for Sanofi regarding  the patent for Insulin Glargine / Lixisenatide Fixed Ratio Formulation before the National PTO, which granted the patent after performing three substantive examinations.
  • Successfully acted for Puma on a nullity action against the registration of the trade mark  in the name of JOHN JAIRO VANEGAS in class 35, with a basis on PUMA’s registration of its shoe stripe design.
  • Successfuly advised Genzyme Corporation on obtaining the patent for a biological product before the national PTO.
  • Successfully advised Carolina Herrera on obtaining a favourable decision in opposition to trade mark CATALINA HERRERA, with a basis on the CAROLINA HERRERA trade mark .

Gómez-Pinzón Abogados (GPA)

Gómez-Pinzón Abogados (GPA) covers the waterfront on IP matters with a 17-strong practice commanded by noted practitioner Mauricio Jaramillo. Best known for its robust trade mark practice, which secures a steady stream of prosecution and enforcement work, the team is also active on patent applications, and is also increasingly known for it role on the design and structuring of IP development and protection strategies at a worldwide level, as well as in the development of franchise systems, and matters relating to anti-counterfeiting and copyright law. Growing in both strength and depth, the team saw practice co-head Juanita Pérez promoted to the partnership in January 2020; as well as welcoming back senior associate Germán Cortés, a patent prosecutor lawyer, after a spell at the Council of State. Fellow senior associate Catalina Arango (IP prosecution, litigation and portfolio management), is also noted.

Testimonials

They bring personalised attention, making you feel like another member of the work team. They show availability and willingness to work. More than a firm that only cares about billing, they advise and accompany the business’ growth’.

Gómez-Pinzón team is strong and very involved with its client’s affairs. The decisions taken are backed by a great professional team, with an excellent reputation and high efficiency and great experience’.

Knowledge, team strength, speed. We mainly recognise Mauricio Jaramillo and Juanita Pérez’.

Conocimiento, fortaleza de equipo, rapidez.  Principalmente reconocemos a Mauricio Jaramillo y Juanita Perez.

Mauricio Jaramillo is an excellent leader who keeps up to date, while respecting the individuality of each of his partners and only intervening if necessary. His great career and experience brings us a high level of confidence. Santiago Cancino always has an answer and a solution to our questions, and his proposals are assertive and reliable.  Andrea Suárez is always available and attentive to the client’s needs. Alexandra Rojas is an excellent mediator, very assertive in her responses and in the directing o  complicated situations, offering solutions and listening to and accepting the client’s ideas‘.

Catalina Arango stands out especially for her intellectual capacity, availability and quick access, finding pertinent solutions to the problems addressed’.

Key clients

Grupo Exito

Grupo Argos

Prosalon Distribuciones

Grupo Aval

Embajada del Perú – República del Perú

ISA

Tetrapak

Fox Telecolombia

Decathlon

Jafer Enterpises R&D / Yanbal de Colombia

Bancolombia

Procafecol dba Juan Valdez

Alicorp

Work highlights

  • Advised Prosalon Distribuciones on the definition and implementation of trade mark strategy across 13 countries across the region.
  • Acted on behalf of the Inter-American Investment Corporation on successfully obtaining the registration of the trademark BID INVEST, which had initially been rejected.
  • Successfully advised Cementos Argos on the drafting and prosecution of a Colombian patent application related to a concrete formulating method which had been initially denied.
  • Successfully represented Jafer Enterprises R&D on an arbitration before the WIPO Arbitration and Mediation Center for the unauthorized registration of the yanbal.online domain name.

OlarteMoure

A leading name in the patent field across Latin America, OlarteMoure's recommended practice is recognised as one of the best in the pharmaceuticals sector, and also advises major companies in the food and beverages sector, along with a number of R&D institutions. Founding partners Carlos Olarte and Juan Guillermo Moure -heading the patent, and trade mark and competition practices, respectively, co-lead the sizeable 36-strong team. Olarte, in particular, has a high-profile reputation, and the firm's specialised patents drafting team -many of whom have dual professional backgrounds (legal and scientific)- covers over 20 technology sectors. Through the firm's regional programme, it also and handles the management of patents families, centralising strategy and harmonising prosecution for the whole region. Director of litigation Juan Felipe Acosta, named partner as of June 2020; Carlos Parra, who heads the firm's Asia desk from Tokyo; Alexander Agudelo, who directs the patent department; and associate María Alejandra Pava, currently acting as trade mark coordinator, are also all practice co-heads.

Testimonials

[We value] that they have knowledge of intellectual property; the added value of protecting intangible assets in an adequate way; also, their business knowledge and a quick response capacity when required’.

Commitment and personal attention’.

Key clients

Novartis

Merck

Astellas

Panacea-Velvack

Pfizer

AGP

Grupo Nutresa

Bristol-Myers Squibb

Adidas

Productos Familia

Work highlights

  • Lead advice to Novartis on the regional prosecution -in 18 Latin American countries- of its patent portfolio.
  • Developed a worldwide patent and trade mark strategy for a multinational food and beverages company, maintaining and strengthening its IP portfolio, and providing IP counsel and litigation management in courts in the US, Panama, Europe and elsewhere.
  • Advising a Colombian food company on filing a claim for the recovery of various of the company’s trade marks in the US.
  • Represented Banco Caja Social, as plaintiff, in a trade mark dilution case against the largest beer producer in Colombia, Bavaria.

Dentons Cardenas & Cardenas

Able to 'face even the most difficult and complicated cases', Dentons Cardenas & Cardenas advises multinationals from an array of industries on portfolio and transactional strategies, as well as undertaking the range of trade mark matters, from one-off filings and prosecution, to licensing and litigation, as well as seizures and counterfeiting matters. 'Great professional', Luz Helena Adarve -who also co-heads the life sciences department- and Juanita Acosta, who is well-versed in privacy, consumer protection, and information technology, co-head an 11-strong team. The pair receive strong support from an associate group that includes very experienced senior associate Ana María Ruiz, who undertakes IP-policy design and enforcement, among other matters; and associate Mario Andrés Carvajalino, who handles both the prosecution and litigation of patents and trade marks.

Testimonials

There is always a partner directly responding to requests’.

‘Luz Helena Adarve is a great professional in the IP field, who has extensive experience. She always provides her services in an impeccable, individual and personalised way, which allows us to offer our clients special attention and quality of services in the management of their affairs. Likewise, Juanita Acosta also demonstrates great professional capacity and total efficiency. Her dedication and the attention paid to each matter are full, and she always maintains a cordial working relationship. Ana María Ruiz is a serious professional who has significant experience in controlling the affairs of each client, which she manages with the utmost rigor, seriousness and efficiency’.

The firm’s lawyers graduated from the best universities of he country and abroad and bring versatile, professional experience. That enables them to face even the most difficult and complicated cases’.

Key clients

Colombina

Avianca

Volvo

Facebook

Instagram

Credit Agricole

Zume

Supreme

Microsoft Corporation

Mattel

Berkshire Hathaway

Work highlights

  • Legal advice to Xiaomi on the preparation and filing of the response to an opposition filed by a third party.
  • Assisted Microsoft Corporation with 62 ongoing patent applications, including 32 new applications, all related to software; given that regulations limit software patents in Colombia, these ar currently registered as ‘inventions implemented by computer.’
  • Initiated non-use cancellation actions on behalf of Fiat Group Marketing & Corporate Communication against registered trade marks, which obtained the granting of the client’s  trade mark.

Philippi Prietocarrizosa Ferrero DU & Uría

Philippi Prietocarrizosa Ferrero DU & Uría is sought after for its enviable track record in complex IP litigation in the administrative and judicial spheres, including criminal and international proceedings -recently obtaining a favourable ruling from the Andean Court of Justice. It also handles piracy and anti-counterfeiting. On the non-contentious side, the firm has a comprehensive practice acting across the full suite of trade marks, patents, copyright and industrial property. Serving national and international companies in an array of industries, it is particularly suited to those seeking or having a regional presence through the firm's office network in Perú and Chile. Co-headed by trade mark and patent litigator Mauricio Patiño, the seven-strong team has also developed a life sciences practice. Principal associates and fellow practice co-heads Gerardo Flórez and Camilo Suárez, focus on copyright and data protection, and IP enforcement, respectively.

Key clients

Juul Labs

Daimler

Societé Des Prodits Nestlé

Fila

Robert Bosch

Latin America Sports

RCN Television

Comercializadora Arturo Calle

Arent Fox

Wilson Sonsini Goodirch And Rosati

Work highlights

  • Offered legal counsel to Postobón in the whole international judicial procedure thar ended up before the Andean Court of Justice, which confirmed the validity and enforceability of non-traditional trade marks and granted the Color Trademark registrations (Pantone 183C) associated with Manzana Postobón.
  • Represented Latin America Sports in the negotiation  and drafting of the agreements for the licensing of the international rights of the Colombian professional football league with The Colombian Football Division (DIMAYOR).
  • Represented Windstarke in obtaining two patents for inventions relating to construction; the patents were granted in Colombia and PCT national phase applications were filed in 12 countries.

Posse Herrera Ruiz

Posse Herrera Ruiz's practice group handles the full spectrum of intellectual property matters and has considerable experience in patent and trade mark prosecutions and related litigation. Led by Helena Camargo, the seven-lawyer group, supported by a patent agent, advises international business on strategic portfolio management in a range of sectors, offering a one-stop service that centralises IP filings in 23 Latin American countries. Senior associate Mónica Bonnett, experienced in patent and industrial design prosecution, co-heads the firm's life sciences department alongside Camargo. Senior associate Annabelle Angarita acts in all trade mark related issues. The firm's TMT department also deals with IP matters including data and consumer protection, and internet law.

Practice head(s):

Helena Camargo

Key clients

Oatey (through Ferrer IP Services)

Taghleef Industries (through Caesar Rivise Intellectual Property Law)

CSP Technologies through (Eckert Seamans Cherin & Mellott)

Zogenix International (through Bozicevic, Field & Francis)

Bajaj Auto

Universidad de la Costa (through Colciencias)

Aphria

Team Foods Colombia

Industrias Gondwana

Speed Solutions

Work highlights

  • Provided legal and technical assistance to Oatey in relation to a cement formulation invention.
  • Successfully obtained the granting of a motorcycle industrial design for Bajaj Auto by means of a judgement the Council of State; the process had been ongoing before said court since November 2013.
  • Mangement of Team Foods’ trade mark portfolio in Colombia; The service involves filing applications and renewals, replying to oppositions, filing oppositions, preparing appeals and nullity actions related to ungrounded oppositions and trade mark registration denials.

Triana, Uribe & Michelsen

Boutique Triana, Uribe & Michelsen's exclusive focus on IP law translates into coverage of the full array of contentious matters, and the team is perhaps best known for its firepower in trade mark, patent and copyright litigation. Market sources value the complexity of the work in which the firm is often involved, representing clients before the Council of State in nullity actions, for example. Juan Carlos Uribe and seasoned litigator Fernando Triana co-head the 13-strong practice, which fields five expert partners; among which young partner Andrés Medina is also noted. The team has extensive knowledge of domain names, entertainment law, consumer protection, advertisement law and data protection, and advises clients from an array of industries, including pharma and biopharma.

Testimonials

Triana Uribe & Michelsen has been our IP advisor and ally for several years now. They have a sound knowledge of our business‘.

We usually work with Fernando Triana and Andrés Medina. Mr. Triana is outstanding in the handling of our most important IP litigation and his input in several of our IP projects has been key. Mr. Medina handles our trademark portfolio and has a very important insight of it, allowing him to give us correct advice when deciding on signs to be registered or oppositions to be filed, amongst other matters‘.

Key clients

Caracol Televisión

Casa Editorial el Tiempo

Biotoscana Farma

Detergentes

Alcon Laboratories

Sporloisirs

Dell

Alcantara Asociados

Camacol – Cámara regional de la Construcción

Corporación Primax

Work highlights

  • Successfully  represented Corporación Primax in an opposition to a trademark registration.
  • Assisted Dell Incorporated obtain the transfer of the domain name DELLSUPPORT.CO by means of a Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceeding.
  • Represented a multinational computer technology company in patent litigation for infringement of industrial property rights.  

BBGS ABOGADOS

BBGS ABOGADOS is distinguished by its focus on representing significant clients from all media industries on a wide range of IP matters, including related litigation in higher instance court. The six-strong team was strengthened with the June-2019 hire of Felipe Rubio and his industrial property practice - previously at Rubio Oramas Asociados. The area focuses on the prosecution, enforcement and litigation of trade marks in Colombia and abroad. Myriam Montenegro leads the advertising, entertainment and audio-visual production practice and has additional expertise in the digital media and new technology areas. Additional key practice figures include Luis Felipe Barrios, who co-heads the boutique's TMT department; director of litigation Lorenzo Pizarro, and associate Diana Vigoya.

Practice head(s):

Felipe Rubio; Myriam Montenegro

Testimonials

The team assigned for this matter is very competent. It surpasses by far other lawyers from different firms’.

They excel for their experience and knowledge in the area. Felipe Rubio Torres is highlighted’.

Excellent attention. Partners and associates always respond. Total satisfaction with the work. They began advising us on entertainment law and today they already provide services in labour, tax, intellectual property and collections‘.

Excellent work and customer service. Myriam Montenegro, Felipe Rubio, Luís Felipe Barrios, Laura Arboleda, Diana Vigoya and Lorenzo Pizarro are highlighted’.

Key clients

Mullenlowe

Fundacion Sanar Niños Con Cancer

Paños Atlas

Sony Pictures Television

Calvin Klein Trademark Trust

Dago Garcia Producciones

Plural Comunicaciones

Orange Brands Services

Olam International

Centro de Abastos Agropecuarios (Ceba)

Yelmo Films (Cinepolis)

Work highlights

  • Advised Editorial El Manual Moderno on copyrights matters, neighbouring rights and trade mark matters, including its new trade mark portfolio in Colombia.
  • Advised Plural Comunicaciones (Canal 1) on the filing of an Andean opposition based on Bolivian and Colombian trade marks; including the entire legal strategy for the process.

CMS Rodríguez-Azuero

CMS Rodríguez-Azuero's increasingly prominent IP practice is distinguished by its focus on advising companies in life sciences related industries. Drawing strength from the 2018-incorporation of practice head Karl Mutter, a life sciences regulation specialist who formerly ran his own firm, the team also works across other sectors. Indeed, it handles the spectrum of IP matters, its prosecution-related services covering 13 countries in the region and the team demonstrates particular expertise in European IP law. Associate director, France-qualified Lola Kandelaft, 'a future star', handles the IP and competition areas, while TMT-specialist Lorenzo Villegas Carrasquilla is also active in the sector.

Practice head(s):

Karl Mutter

Testimonials

CMS Rodriguez Azuero has a responsive and energetic IP team. Karl Mutter and Lola Kandelaft have a deep knowledge of clients’ businesses and address complicated issues with mastery’.

Lola Kandelaft is a future star. Her international experience makes the difference when addressing legal issues in Colombia. Lola is a key weapon for french-speaking companies with business interests in Colombia. Karl Mutter is an outstanding lawyer with a deep knowledge in life sciences’.

They are very clear in their responses, the service is fast and very good’.

Quality, clarity and short response times’.

Key clients

Inversiones en Recreación Deporte y Salud – Bodytech

CRC Salud Viva

Khiron Colombia

Óptica Alemana E y H Schmidt

Vesalius Pharma

Laboratorios Osa

Licks Attorneys

CMS Cameron Mckenna Nabarro Olswang Konker

Promotora A C R

Cabinet Guiu Jurispatent

Work highlights

  • Managed the international trade mark portfolio of Inversiones en Recreación Deporte y Salud (Bodytech), as well as acting in the defence campaign against non-authorized used of the trademark ATHLETIC.
  • Advised Khiron Life Science on the registration of the company’s trade mark portfolio in several Latin American countries, after participating in the acquisition of the local company Jermarz.

Contexto Legal S.A.

Prominent Medellin firm Contexto Legal S.A. houses a practice that demonstrates weight across an array of trade mark and patent prosecution, IP-related litigation, and portfolio management. It provides advice across an array of different industries, the firm representing a significant number of local companies, universities and research institutions. Head of practice Andrés Marquez is experienced in intellectual asset transactions and in valuation of trade marks and patents portfolios; he leads a seven-strong team, supported by two patent engineers. Associate Laura Moreno is a key member of the practice, which also handles copyright, data protection and consumer law.

Practice head(s):

Andrés Marquez

Key clients

Siscoax

Cientech

Haceb

Grupo Bios

Vehiculos del camino

Marketing Personal

Muma

Agua Bendita

Sampedro

Fenalco

Ecoflora

Gonvarri

Telemetrik

Work highlights

  • Advised Industrias Médicas Sampedro on several matters including, patent applications and the registration of the comany’s brand portfolio.
  • Advised Grupo Bios on the implementation of its mass advertising strategy, as well as undertaking the registration and administration of the group’s brand portfolio.

Guerrero & Asociados Propiedad Intelectual

The office of recommended technology-transfer expert Manuel A. Guerrero, Guerrero & Asociados Propiedad Intelectual is dedicated exclusively to IP, handling all aspects of the patent registration process and related litigation. With offices both in Bogotá and Medellín, the practice has niche expertise in technology for the defence sector, recently undertaking the structuring of technology transfer and the protection of intangible assets on behalf of the Colombian armed forces. Universities, pharmaceutical and life sciences companies are among the boutique's client base. Associates Natalia Pérez and María Camila Correa (in Medellín), complete the practice which is supported by a three-member technical group.

Testimonials

A strong understanding of intellectual property matters, including trade mark strategy, procurement and enforcement in Colombia’.

The Guerrero team has exceptional lawyers, with expertise in brand strategy, management and enforcement of large portfolios, who work diligently and are able to provide unique solutions tailored to client’s individual needs’.

In-depth analysis of the cases, there is a high level of knowledge in intellectual property, and they provide innovative solutions applying Andean and Colombian regulations‘.

Manuel Guerrero is a lawyer who excels in his practice and has a deep knowledge of intellectual and industrial property matters. Likewise, Natalia Pérez provides us with optimal and effective solutions to our requirements’.

Key clients

Army of Colombia

Colombian Air Force

Ministry of Defence of Colombia

Industrias Wilches

Universidad de la Salle

National University (Medellin)

Boston Medical Group

Laboratorios Ecar

Core Biomedical

Tivenos

Diseños y Sistemas

Colciencias

Work highlights

  • Succesfully represented Universidad Mariana in a software copyright infringement process.
  • Accompanied the Air Force of Colombia in the process of negotiating a technology license agreement with a relevant company in Colombia’s private sector.

Herrero & Asociados

Spanish IP firm Herrero & Asociados joined the Colombian market with the opening of offices in Bogotá in 2019. Office director Adriana Peñaranda, handles innovation and technology transfer, among other matters; while coordinator Carolina Calderón focuses on trade mark prosecution and litigation; the pair co-lead the practice with Madrid-based Abraham Carpintero and Borja Barrutieta, who provide additional support to the office. The firm seeks to offer clients a 'one-stop-shop' for intellectual and industrial property matters, advising on trade marks, patents, utility models, industrial designs, domain names, anti-piracy, data protection and copyright.

Work highlights

  • Represented a foreign company  in a Colombian patent prosecution procedure.
  • Represented an international pharmaceutical in the management of the trade mark portfolio in Colombia.

Holland & Knight

Holland & Knight's five-strong practice is under the leadership of litigator Danilo Romero and has a sweet spot in trade mark prosecution and IP litigation - although it also shines in trade mark portfolio management. Serving local and international companies in various sectors, the group renders specialised advice to the publishing, music, software and audio-visual industries on the negotiation and drafting of contracts relating to copyright. Also heading the office's competition area, Romero focuses on antitrust litigation, consumer protection law, copyright and data protection, and is also versed in media and entertainment law. Associate Bettina Sojo, who handles IP litigation proceedings, is also noted.

Testimonials

They are very professional in what they do and their knowledge on the issues shows’.

They are very friendly, always ready to find a solution for any problem that may arise with very short response times. We always work with Danilo Romero and last year Bettina Sojo accompanied us.

Key clients

Kentucky Fried Chicken

Restaurante MUY

Acerías de Colombia

Otestra

Major League Baseball Properties

Bridgewood Capital

Kilpatrick Townsend & Stockton

Pegatex Artecola

Anciano & Ayala Abogados – Linio Colombia

Organización Terpel

Work highlights

  • Succesfully acted for Kentucky Fried Chicken on filing a precautionary measures request before the Superintendence of Industry and Commerce, as well as filing a trade mark infringement action against a franchisee.
  • Assisted Restaurante MUY on trade mark prosecution in Colombia, Brazil, Mexico, Chile and Peru, where the client will open new restaurants.
  • Assisted Otestra on the filing of a request for precautionary measures and a lawsuit for trade mark infringement against a competitor.

Márquez-Robledo

Intellectual property and entertainment boutique Márquez-Robledo is primarily dedicated to providing services to relevant players in the media, entertainment and advertisement industries on all trade mark and copyright matters, as well as having a strong record in litigation. Established by Santiago Márquez Robledo, who prior to opening the firm in 2009 was a senior associate at then Prieto & Carrizosa (now Philippi Prietocarrizosa Ferrero DU & Uría); the firm's practice pivots between the firm's Bogotá and Miami hubs and it is experienced advising in relation to other regional jurisdictions.  Associate María Alejandra Ahumada is also a key member of the six-strong team.

Key clients

DirecTV

Sancho BBDO

Mccann Erickson Corporation

Spirit Music Group

Sebastián Yatra

Ogilvy

Ddb Worldwide Colombia

Young & Rubicam

Work highlights

  • Advised Spirit Music on the acquisition of the complete catalogue of Prodemus Colombia.
  • Successfully led the defence of Grupo Éxito in several cases relating to the company’s IP assets, including breach and violation of copyright and trade marks on the grounds of unfair competition.