Intellectual property in Colombia

Brigard Castro

An expert firm, providing an excellent service’, Brigard Castro is widely revered as a market leader in intellectual property law, with more than 80 years of experience in the area. The boutique’s broad expertise, impressive track record and association with full-service firm Brigard Urrutia ensures that it is a first port of call for major global companies operating in Colombia, with Amazon Technologies, Philip Morris and Coca–Cola all standing as representative key clients. Among the names to note, department co-head Juan Pablo Cadena is recommended for his strong skill sets in copyright, IP litigation and trade names, while fellow co-head Martín Torres leads the trade mark practice. The team also draws on the experience of director Catalina Gómez, who spearheads the brands and oppositions team, and trade mark-focused associate María Juliana Pacheco. Partner María Fernanda Castellanos left the firm in October 2021.

Practice head(s):

Juan Pablo Cadena; Martín Torres

Testimonials

It is an expert firm, providing an excellent service.

We return to this firm due to the personalised attention we receive.’

Key clients

Amazon Technologies

Colgate-Palmolive

Philip Morris

The Coca-Cola Company

Carvajal

Thomas Greg

UNE EPM Telecomunicaciones

Millicom

Publicaciones Semana

Work highlights

  • Represented Grupo UMA in opposing 25 trade marks filed by Auteco which aimed to protect different locations of decals on motorcycles.
  • Assisted Philip Morris Brands in filing an opposition against a trade mark that partially reproduced the ‘rooftop design’ of its Marlboro trade mark.
  • Advised Colgate-Palmolive on filing oppositions against Bayer Intellectual Property’s applications for “INKPROTEX” and “COLORPROTEX”, in classes 3 and 5, based on Colgate-Palmolive’s trade mark rights over “PROTEX”, its family of trade marks, and the competitive relation between the products.

Cavelier

Intellectual property is a mainstay at Cavelier and satisfied clients assert that its practice is ‘one of most complete in LatAm'. Among its chief attributes, sources highlight its ‘technical and quick responses' and ‘total mastery of the topics', with strong partner involvement also a recurring theme. The firm handles the full scope of related work and routinely advises on prosecution and litigation in relation to trade marks, copyrights and patents across Colombia and the wider region. Key names include: trade mark and copyright head Eduardo Varela (‘an outstanding partner'); patent specialist Andrés Rincón (‘great knowledge of all patent-related matters’); Jorge Chávarro, whose broad practice spans geographical indications, trade marks, patents and regulatory affairs; Edna Sarmiento, who specialises in IP litigation, including unfair competition and false advertising cases; and health and regulatory affairs partner Adriana Durán. The group also leans on a deep and talented associate bench, including Melissa Soto (trade marks, copyright and entertainment). Associate Diana Vigoya joined from BBGS Abogados in March 2022.

Practice head(s):

Eduardo Varela; Andrés Rincón; Jorge Chávarro; Edna Sarmiento

Testimonials

‘Cavalier has an experienced IP team, its services are easy to access and there is direct communication with an IP partner. The firm knows the entertainment sector and I can classify its service as a quality service.’

‘Eduardo Varela is an outstanding partner. In addition to his knowledge of the issues on which he advises, I consider that he has great human quality, which makes it very pleasant to work with him.’

‘Cavelier’s team is one of the most complete in LatAm. Very technical and quick in responding — perhaps the two elements that one most demands in this area.’

‘The team’s knowledge is deep and the speed of response is outstanding. We highlight Adriana Durán, Jorge Chávarro, Eduardo Varela and Andrés Rincón.’

‘Cavelier lawyers are always committed to the customer’s interests. They have successfully handled some patent registration processes for us, as well as defending us in a patent infringement lawsuit, which we won.’

‘Andrés Rincón is a very skilled lawyer. He has great knowledge of all patent-related matters. He also maintains a friendly relationship with clients. We are very pleased with his performance in the processes he has handled for us.’

‘The treatment is always personalised; a partner is always aware of even the small details, which is outstanding. Lawyers are very innovative. In particular, Andrés Rincón is a born leader; he always responds exceptionally to complex situations, and is constantly aware of day-to-day situations.’

‘Cavelier has distinguished itself in the market for having highly qualified professionals, who show total mastery of the topics, which provides security.’

Key clients

Saint Gobain Group

Sanofi Aventis Group

Peking University

Takeda Vaccines

Glasst Innovation

Astellas Pharma

Massachusetts Institute of Technology

Amazon Studios

The H D Lee Company

Nintendo

Federación Nacional de Cafeteros de Colombia

Tower Records

Atlético Nacional

Adidas

The Scotch Whisky Association

Business Software Alliance

Johnson Controls

Work highlights

  • Advised Glasst Innovation Company on preparing its invention for patent protection, including contractual advice for NDAs with third parties, the search of prior art, and drafting of the application and its prosecution in Colombia, among other matters.
  • Assisted Excelec International with the drafting and prosecution of a utility model patent that was granted in less than six months.
  • Advised the National Federation of Colombian Coffee Growers on prosecution strategy worldwide.

Lloreda Camacho & Co.

A leading firm for IP and regulation in Colombia, Lloreda Camacho & Co.‘s deep and broad practice leverages its top-notch life sciences offering to excel in representing major global pharmaceutical clients. That being said, the firm handles the full suite of contentious and non-contentious matters for companies across all key industry segments, with food, financial services, technology, entertainment and consumer products also among its industry strong suits. Director of the IP department, Alicia Lloreda   maintains a broad focus, which spans trade marks, copyrights, patents, unfair competition and IP disputes, including unfair competition cases. Ana Maria Castro  , who directs the firm’s patents division and co-directs the life sciences practice, is also a key contact. Associate practice director Natalia Franco  is the key contact for trade marks, copyright and general intellectual property following the May 2022 departure of former trade marks and copyright head, Tatiana Carrillo, after over 20 years at the firm. Since research concluded, the firm has hired María José Lemus  (effective September 2022), formerly head of the Superintendency of Industry and Commerce, Colombia’s competition regulator and IP office.

Practice head(s):

Alicia Lloreda; Tatiana Carrillo; Ana María Castro

Key clients

PepsiCo

Gilead Sciences

NBCUniversal

F Hoffman-la Roche

Amazon

Kite Pharma

Edgewell

I-Mab

Team Foods

DetNet South Africa

Netflix Studios

Cortexyme

Incyte Corporation

Société des Produits Nestlé

Mastercard International

Work highlights

  • Obtained various decisions from the TMO in favour of clients, overcoming oppositions filed by third parties, and obtaining the declaration of notoriety of the client’s trade marks in the national market.
  • Handled more than 1,200 patent applications in Central America, Caribbean and the Latin America region for Gilead Sciences and its affiliates (managing its patent portfolio related with HIV, HBV, HCV, oncological, gastrointestinal and cardiovascular products).
  • Managed Incyte Corp’s complete patent portfolio in Colombia and Ecuador (more than 125 patent applications), additionally advised on patent prosecution for additional LatAm countries, including Costa Rica, Peru and Uruguay.

OlarteMoure

Impressive IP and competition boutique OlarteMoure houses a six-partner strong IP practice, which supports clients nationally from five offices across Colombia (Barranquilla, Bogota, Bucaramanga, Cali and Medellin), while internationally it maintains on an outpost in Tokyo, that serves to channel relevant Asian work to the firm. The sizeable – 64-lawyer strong – group covers the waterfront on IP matters, with robust offerings in patents, trade marks, copyrights, anti-counterfeiting, technology transfer and litigation. Names to note include renowned patents specialist Carlos Olarte, who heads-up the patents and life sciences team; Juan Moure, who leads the trade mark department (and is also active in competition matters); patent director Alexander Agudelo and dispute resolution specialist Juan Felipe Acosta. The group also benefits from a strong second line of associates, which includes trade mark director María Alejandra Pava.

Practice head(s):

Carlos Olarte; Juan Moure; Alexander Agudelo; Carlos Parra; Juan Felipe Acosta; María Alejandra Pava

Key clients

Novartis

Merck

Panacea Velvack

Pfizer Inc

AGP

Auteco

Grupo Nutresa

Bristol-Myers Squibb

Productos Familia

Dynamo

Frida Kahlo Corporation

Wom

Lexica

Factica

Agrosavia

Work highlights

  • Responsible for prosecuting portfolios of patent applications in Latin America for Novartis, Merck, Pfizer, GlaxoSmithKline, Bristol-Myers Squibb and Bayer Intellectual Property.
  • Managing Nutresa Group’s trade mark portfolio, including maintaining and strengthening the portfolio in over 105 jurisdictions, and providing counsel and litigation management in courts in the US, Panama, Europe and others.
  • Advising AGP America on its patent and trade mark strategy.

Baker McKenzie S.A.S.

Baker McKenzie S.A.S' group is ‘comprised of experts in IP', say sources, who value its ‘comprehensive support in trade mark matters'. The team is also equipped to advise on the full range of patent and copyright issues, including prosecution, enforcement, litigation and transactional support work, with the firm’s formidable global offering marking it as a popular choice to advise on the management of international portfolios. Department head Juan Pablo Concha Delgado has an emphasis on enforcement issues, including administrative, civil and criminal litigation. Additionally, seasoned of counsel Ricardo Metke is noted for IP disputes, senior associate Yuliana Salamanca handles trade mark and copyright prosecution and litigation, while associate Bibiana Cala is focused on criminal litigation.

Practice head(s):

Juan Pablo Concha

Testimonials

‘The team is comprised of experts in IP and in the handling of criminal cases related to trade mark abuse.’

‘We appreciate the firm’s relationships with stakeholders, the results it obtains and the clarity of its positions and concepts.’

‘Baker McKenzie’s IP team provides comprehensive support in trade mark matters. It periodically reviews the industrial property gazettes issued by the authority and sends us reports in this regard, so we can detect any risk in time. Lawyers also respond very quickly to all our requirements (proposals, advice, help on Internet domain issues, among others).’

‘We have direct contact with Juan Pablo Concha, who provides a very warm, friendly and personal service. He is also an expert in trade mark issues (he has many years of experience, so his guide is very useful). It is always a pleasure to talk with him about any questions we have.’

Key clients

3M

Panda Bear Restaurant Group

Diageo Mexico Comercializadora

PepsiCo

Chanel

JGB

Caracol Primera Cadena Radial

Ascot Racecourse

Diageo Colombia (criminal IP law)

Warner Bros Entertainment

DirecTV

Unilever Colombia

Pernod Ricard

Beyond Meat

Samasa

Treinta

Work highlights

  • Successfully represented Panda Express Group in cancelling the registration of the trade mark “PANDA EXPRESS” and associated design by a third party and obtained registration in the client’s name.
  • Acted for Chanel on a successful cancellation action against a trade mark registration that had been granted in Class 15, and that was virtually identical to Chanel’s CC monogram, but tilted sideways.
  • Successfully represented Conopco in opposing the registration of “FRUKER” and associated design in Class 30, due to similarities with well-known trademark “FRUCO”.

Castellanos & Co

IP boutique Castellanos & Co is noted for its ‘precise and fast' lawyers, who are ‘inventive and propose the best solutions'. The firm is primarily recognised for its focus on prosecution work —both in the patents and trade marks areas— as well as its strength in administrative litigation, particularly contentious work against the Patent and Trademark Office. Managing partner Ximena Castellanos spearheads the trade mark practice, with an emphasis on registrations and oppositions and other portfolio management issues. Margarita Castellanos leads the patent department but also maintains a robust trade mark practice, with experience in advising on administrative litigation involving trade marks and other distinctive signs.

Practice head(s):

Ximena Castellanos; Margarita Castellanos

Testimonials

An excellent IP practice. Lawyers know the subject, their answers are precise and fast, and their rates are reasonable.’

‘Lawyers are very dedicated and proactively take care of the different queries and procedures.’

Ximena Castellanos and Margarita Castellanos’ sector knowledge and relationships make their cases successful.’

The team is nice, competent and replies quickly to any communications. Lawyers are inventive and propose the best solutions.’

‘I like working with this team; everything is in order for me in comparison with other offices.’

‘Lawyers provide quick responses.’

‘It is a tremendously cohesive work team and very agile in carrying out all the matters we entrust to it.’

Work highlights

  • Obtained several patents for Saint-Gobain Glass France.
  • Represented Audi in extending the notoriety of its house mark.
  • Successfully represented Lunella Biotech in overturning an official objection to obtain a pharma patent.

Dentons Cardenas & Cardenas

Dentons Cardenas & Cardenas climbs a tier on the back of its increasingly high-profile client roster, which includes new wins Paramount and Tik Tok, alongside long-established clients such as Microsoft and Anheuser-Busch. The 12-lawyer-strong practice handles the full gamut of patent, trade mark and copyright matters, from prosecution through to litigation and transactional matters. It also draws on the wider firm’s full-service offering to provide support in complementary areas, including consumer protection, product liability and regulatory issues. Luz Helena Adarve leads the IP and technology, and privacy and cybersecurity practice groups, and is highly regarded for her expertise in the area. Juanita Acosta is also a key contact for IP and IT matters. Experienced associate Ana María Ruiz provides support.

Practice head(s):

Luz Helena Adarve; Juanita Acosta

Testimonials

The team is excellent.’

Lawyers provide strong responses and are fast and very practical in everything, particularly Juanita Acosta.’

Key clients

Colombina

Instagram

ByteDance / Tik Tok

Cine Colombia

Microsoft Colombia

Bavaria & Cia

Little Dutch Trading

Paramount

Avianca

Anheuser-Busch

Demetria Colombia

Reckitt Benckiser Colombia

Nextleaf Solutions

Laboratorios Baxter

Fast Colombia

Instituto Grifols

Zambon Colombia

Teleperformance

Rhino Entertainment Company

Takeda

Work highlights

  • Advised Colombina on its brand portfolio, including on the recovery of the trade mark “BON BON BUM” in Guinea, which was temporarily assigned to a third party who wanted to keep the trade mark.
  • Advised ByteDance and Tik Tok on the review and identification of red flags concerning potential gambling issues in relation to video games and content classification.
  • Prosecuted the patent applications of Microsoft Technology Licensing in Colombia.

Gómez-Pinzón Abogados (GPA)

A team of extremely proactive professionals', Gómez-Pinzón Abogados (GPA)'s practice ‘seeks to be at the forefront of IP issues', according to sources. Widely recognised as a prolific filer of trade mark and patent applications, the multidisciplinary group’s focus spans a broad range of contentious and non-contentious IP — with its ability to lean on the wider full-service firm standing as a key asset in complex or multi-layered matters. Department head Mauricio Jaramillo has over two decades of experience in advising on trade marks, patents, copyrights and franchises, including litigation. Juanita Pérez specialises in domestic and regional IP protection strategies and IP portfolio management. Senior associate Catalina Arango is also noted for her involvement in contentious and non-contentious matters.

Practice head(s):

Mauricio Jaramillo

Testimonials

‘The firm is noted for the quality of its professionals, both personally and professionally.

‘A team of extremely proactive professionals, available at all times and providing effective solutions. A firm that seeks to be at the forefront of IP issues.’

Key clients

Ecopetrol

Fundación Valle del Lili

Fox Telecolombia

The Walt Disney Company

Alicorp

AB InBev (Bavaria)

Grupo Aval

Scotiabank Colpatria

Grupo Exito

PriceSmart

Helm Banca de Inversión

Tequilas El Mexicano

Constructora Obreval

Valentus Inc (sucursal Colombia)

Mazda de Colombia

Gas Propano de Colombia Esp

Azembla

Wegrou

Sierracol Energy Condor

Savant Pharm

Sancho Bbdo Worldwide

Prosalon

Talma Servicios Aeroportuarios

Chairman Services

Valoreo Colombia

Leader Music

Norte Grafico

R360

Experian Colombia

Jafer Enterprises R&D

Banco de la Republica

Mayaguez

Valorem

Decathlon

Bayport Colombia

Work highlights

  • Advised Almacenes Éxito on securing the trade mark “PROMONLINE ÉXITO” (mixed), which was previously denied based on the already registered trademark “PROMOLINE”.
  • Designed the defence strategy for DiDi’s companies in Colombia and abroad, in relation to an unfair competition action with a request for precautionary measures, initiated by Comunicación Tech y Transporte on behalf of the taxi drivers’ union.
  • Advised Jho Intellectual Property Holdings on initiating trade mark infringement and unfair competition actions.

Philippi Prietocarrizosa Ferrero DU & Uría

Lawyers at Philippi Prietocarrizosa Ferrero DU & Uría are ‘always willing to help and accommodate the needs of clients'. The one-partner team takes in a wide scope of IP, e-commerce and unfair competition-related matters, routinely handling registration, regional portfolio management and contentious issues. Department head Mauricio Patiño advises on trade mark and patent prosecution, management and litigation and brings to bear significant cross-border experience. The team also includes principal associates Camilo Suárez (‘great knowledge of the market and the client’s vision') and Gerardo Flórez, who are noted for anti-counterfeiting and life sciences respectively.

Practice head(s):

Mauricio Patiño

Testimonials

‘PPU handles our intellectual property matters for us. Lawyers have extensive knowledge of the IP area and keep themselves up to date. Good at conflict resolution and preventive law.’

‘The team is comprised of good business associates, who help define the company’s strategy in matters of management.’

‘Lawyers are timely and accurate in their recommendations. Excellent flexibility in billing issues.’

‘Principal associate Camilo Suárez certainly stands out. He responds to multiple queries in a complete, efficient and timely manner. He understands the client’s needs very well.’

‘Invoicing is fast and proactive; it is a good way of invoicing since it allows you to keep track of processes and costs. The knowledge of lawyers in intellectual property matters is very good.’

‘The PPU team is exceptionally good. Lawyers are always willing to help and accommodate the needs of clients. As a novelty, in the event of any doubts regarding a client’s matter, the firm’s lawyers — particularly Camilo Suárez — take the time to meet not only with the client’s lawyer, but also with people from other areas of the company.’

‘We highlight the quality and dedication in the work offered. There is unconditional dedication and commitment from advisers, in order to provide favourable solutions to customers.’

‘Camilo Suarez is a successful lawyer in his concepts and comments; he acts quickly and with excellence. He is always available and his recommendations denote great knowledge of the market and the client’s vision.’

Key clients

Kirkland & Ellis / Delta Airlines

Societé Des Produits Nestlé

RCN Television

Cardenas Marketing Network

Wilson Sonsini Goodrich & Rosatti Professional Corp / Spotify

CPA Global Group Holdings

McDermott Will & Emery

The Sensory Lab – Radio Ambiente Musical

Command Alkon Incorporated

Drinker Biddle & Reath

Work highlights

  • Advising Delta Airlines on a trade mark conflict, involving trade marks registered or applied for by Marriott Worldwide in two jurisdictions (Colombia and Peru), in the context of a worldwide case.
  • Acting for Cardenas Marketing Network on all IP, real estate, advertising, consumer protection and corporate matters for the construction of “ARENA BOGOTA”, a ticketing service platform.
  • Advising Command Alkon on entering the Colombian market with master service level agreements and software licensing agreements.

Posse Herrera Ruiz

Posse Herrera Ruiz handles IP matters in ‘an agile and high-level manner, which gives security and confidence to the client', according to one satisfied source. The firm houses a full-service IP practice, which remains busy advising on the full life-cycle of related issues, from prosecution, through to portfolio management and contentious work. Department head Helena Camargo is a ‘top-notch attorney' and is well versed in all key pillars of IP law, with expertise in patents, trade marks and copyright matters. Experienced senior associate Mónica Bonnett is noted for her focus on patents and industrial design, while associate Annabelle Angarita is recommended for trade mark law.

Practice head(s):

Helena Camargo

Testimonials

‘PHR has top-quality professionals, who are always willing to actively resolve the legal challenges we have as clients. Intellectual property matters handled by PHR professionals are carried out in an agile and high-level manner, which gives security and confidence to the client.’

‘PHR is a highly recognised and experienced firm. Its lawyers have sophisticated academic studies and extensive experience.’

‘Helena Camargo is a top-notch attorney; everything she is involved with turns out well. Annabelle Angarita is a professional who, with her forcefulness and agility, represents all the support of the PHR firm. A great duo.’

Key clients

Arus

Everest Intelligence

Productos Naturales de la Sabana (Alqueria)

Keystone

Credibanco

All Star

Cencosud

Ladas & Parry

Diaz Wiechers

Solla

Protección

Mertz Perú

Knobbe Martens

Gruenbaum Possinhas & Teixeira

Work highlights

  • Advising Cencosud on the management of its portfolio of brands in Colombia and also on registering the brand “F&C FAMILYCARE” in class 16, despite the opposition filed by Productos Familia on the grounds of its well-known trade mark “FAMILIA” and its trade mark family comprised of the common element, “FAMILIA”.
  • Advising Hoteles Estelar, one of the largest hotel groups in the country, on its Colombian trade mark portfolio.
  • Representing Yayla Agro Gida Sanayi ve Nakliyat on overturning the provisional refusal of protection for trade mark “LEGURME” in classes 29 and 30 in Colombia, upon demonstrating that the objected goods in class 30 were Turkish pastries and desserts which were correctly included in class 30.

BBGS ABOGADOS

BBGS Abogados‘ IP practice ‘provides a completely personalised service to the needs of each client', say sources. The full-service department combines standalone offerings in industrial property as well as advertising, entertainment and audio-visual production, which ensures that it packs a punch in entertainment-related matters. Indeed, one client attests, ‘I don’t know of another law firm that is as informed about production and television’. Key names include Felipe Rubio, who specialises in copyright and trade mark rights; and Myriam Montenegro, who is highly regarded for her expertise in audio-visual production, cinematography, television and commercial law. The group also benefits from the experience of dispute resolution head Lorenzo Pizarro. Associate Diana Vigoya left the firm in March 2022.

Practice head(s):

Felipe Rubio; Myriam Montenegro

Testimonials

‘The BBGS team is phenomenal; lawyers put themselves in the client’s shoes and always help us to find the best solution to our concerns and processes. They have skills in all the branches of law in which we have consulted them and they always offer a concrete, timely and cost-effective advice.’

‘The people who make up the team are very capable. Felipe Rubio is the best in intellectual property; he is always attentive and up-to-date.’

‘The team provides a completely personalised service to the needs of each client. It is aware of the importance of providing a good service within the required times, and for this lawyers are willing to adjust their schedules. Additionally, the team has very good relationships with other firms in the sector, which allows it to streamline complex negotiations.’

‘The firm has real knowledge in the entertainment industry; I don’t know of another law firm that is as informed about production and television.’

‘The firm fields excellent lawyers for intellectual property issues, who are complemented by the firm’s litigation practice in an organic and simple way for the client.’

‘We value its deep experience of having successfully managed complex situations in the industry. Felipe Rubio and Lorenzo Pizarro are outstanding partners.’

‘We value the team’s knowledge and customer service; it has not been mistaken in opinions.’

‘Felipe Rubio is the top player in the sector. His recommendations are absolutely adjusted to the business of his clients and he is always available to attend to any emergency.’

Key clients

Amazon Studios

Asociación Colombiana de Medios de Información (AMI)

KTR (Cinepolis)

Sony Pictures Television

Dago Garcia Producciones

Orange Brands Services

Plural Comunicaciones

Mullenlowe

Fundacion Sanar Niños Con Cancer

Calvin Klein Trademark Trust

Fundación escuela nueva volvamos a la gente

Work highlights

  • Represented Ilyon Dynamics in filing two oppositions to trade marks applied for by Hangzhou Mengku Technology.
  • Represented Fundación Sanar in its opposition against the trade mark application for “TAPITAS CON AMOR PARA SOÑAR CÚCUTA”, in which it alleged that the trade mark was confusingly similar to the well-known trade mark, “TAPAS PARA SANAR”.
  • Successfully represented Dirtykitchen in its opposition against the international trade mark application for DK in class 41.

ClarkeModet Colombia

ClarkeModet Colombia‘s ability to plug into the wider ClarkeModet group’s ten-country strong IP network is a significant asset for domestic and foreign clients looking for multinational portfolio management. That being said, its standalone Colombian offering is very capable in all IP protection and strategy matters, with a focus on patent work — it also handles trade mark and copyright matters. New country manager Silvia Patiño joined in June 2021 from conglomerate, Organización Corona. Patiño oversees a team that includes director of the trade marks practice Miguel Rujana and senior consultant Carolina Daza. Regulatory specialist Alejandra Salazar left in December 2021.

Practice head(s):

Silvia Patiño; Jimena Ugarte; Miguel Rujana

Key clients

Zacco Denmark (as agents of Lego Juris)

Goodwin Procter (as agents of Aptinyx)

Weatherford Technology Holdings

De Clercq & Partners (as agents of Yara International)

Dechert (as agents of Staten Biotechnology)

Work highlights

  • Advised Staten Biotechnology, via Dechert, on obtaining patent rights over a biotechnological invention.
  • Acted for Aptinyx, through Goodwin Procter, on obtaining patent rights for a biotechnological invention.
  • Assisted Lego Juris, through its agent Zacco Denmark, with the filing of an opposition against a trade mark application.

CMS Rodríguez-Azuero

A team that takes ownership of cases', CMS Rodríguez-Azuero impresses sources with its responsiveness and extensive practice knowledge. The group handles a comprehensive range of IP matters, with notable niche strength in the plant breeder’s rights sphere. Karl Mutter co-heads the department and handles trade marks, patents, copyrights, industrial models and plant breeder’s rights. Dispute resolution specialist Felipe Andrade now co-leads the team following his July 2021 arrival from Sanabria & Andrade. The group also includes associate director Lola Kandelaft, who specialises in IP portfolio management, protection and defence.

Practice head(s):

Karl Mutter; Felipe Andrade

Testimonials

‘The team is very accessible and the response to queries is immediate, or very fast. In addition to these strong points, I would highlight the high level of knowledge on the subject, the informative and current bulletins that it sends out, and the team’s presence in so many jurisdictions.’

‘The team is always willing to listen. Its response times are quick and lawyers respond thoroughly to the concerns presented.’

‘This is a team that takes ownership of cases, that invests the appropriate time with the client and which demonstrates deep knowledge of the subject.’

‘Excellent customer service, availability and attention to detail.’

‘The team’s review of our company’s applications in a multidisciplinary manner has allowed us to receive guidance and legal concepts from various perspectives.’

‘The firm takes the initiative to involve different areas (practices) according to the requirements, which in the end translates into a more complete service. Additionally, teams keep very up-to-date on regulatory changes.’

‘Great professionals who not only know the legal aspects, but also the practical aspects. Karl is a practical person who understands the system and proposes solutions’

‘My contact has been with Karl and Lola and their work is impeccable. What I would highlight most, is their honesty when speaking with the client: transparency prevails over profit, which speaks highly of them.’

Key clients

Khiron Lifesciences

Bodytech

Óptica Alemana

Vesalius Pharma

Canels

Argelia Internacional

Deutsche Gesellschaft für Internationale Zusammenarbeit (GIZ)

Gliskko

Miguel Angel Matamoros

Alianza Team

Caracolitos

Cámara Colombiana De Comercio Electrónico

Dr Reddy’s

VedderPrice

Licks Advogados

Pharmalabs

Bold.co

Rosen Tantau

Interplant

Plantador Colombia

Deliflor

David Austin Roses

Elite Flower

Work highlights

  • Advised Bodytech on trade mark matters connected to its efforts to protect its new ‘Athletic Gyms’ brand.
  • Advised Khiron Life Sciences on worldwide trade mark portfolio management.
  • Advised Argelia Internacional on the protection of its trade mark portfolio in Colombia.

Contexto Legal S.A.

From Medellín, Contexto Legal S.A. handles a steady stream of trade mark and patent prosecution, IP litigation and portfolio management. The group counts companies from all of Colombia’s key industry sectors as clients, with notable expertise in representing universities and research institutions. Andrés Marquez steers the department and advises on an array of contentious and non-contentious matters, particularly in the trade mark, patent, image and copyright spheres. Associate director Maria Carolina Vieira provides support in IP litigation. In January 2022, senior associate Laura Moreno left to go freelance.

Practice head(s):

Andrés Márquez

Testimonials

Contexto Legal can be compared favourably with other high-quality firms. It has several areas of focus, which makes it a firm that can cover all the areas that are needed.’

The firm fields a highly trained team to face the challenges that the client presents. Its lawyers are calm and personable.’

Provides excellent support in the technical aspects, as well as in the commercial elements and those related to the client’s business.’

Key clients

Industrias Médicas Sampedro

Universidad de la Costa CUC

Sumiprint Química y Color

Cuatro Jotas Ingeniería

Forjas Bolívar

Prodia

Agaval

Scribe

Grupo Bios

Avon Colombia

Natura Cosmeticos

Pasteleria Santa Elena

Servicios Grupo Bios

Agua Bendita

Socoda

Prebel

Indural

Industrias Haceb

Institución Universitaria Salazar y Herrera

Espumas Plásticas

Mattelsa

Glopack

Siscoax

Cientech

Marketing Personal

Muma

Fenalco

Ecoflora Agro

Gonvarri

Work highlights

  • Advised Grupo Bios on the implementation of its mass advertising strategy, and also on trade mark portfolio management.
  • Advised Industrias Médicas Sampedro on patent-related matters.
  • Advised Natura Cosmeticos on personal data and consumer law claims.

EGR & Abogados Asociados

IP-focused boutique EGR & Abogados Asociados strikes a balance between advisory work and litigation. On the non-contentious side, the firm consistently advises on the commercialisation, acquisition and licensing of IP assets. The team is also well versed in representing clients in defending their IP rights, both in judicial and arbitral proceedings. Director general of the firm Emilio García Rodríguez is a litigator, with an emphasis on IP and competition disputes.

Practice head(s):

Emilio García Rodríguez

Key clients

Federación Nacional de Comerciantes (FENALCO)

Fundación Suiza de Cooperación Internacional para el Desarrollo.

Maple Oils Tools

Smart Mobility and Security

Grand Hyatt Bogotá

Universidad Sergio Arboleda

Innpulsa Colombia

Inversiones Inmobiliarias Santa Cruz

STL Colombia

Subastar

Murray Sales

Work highlights

  • Represented the National Federation of Merchants (FENALCO) on its application for registration of the “FENALCONECTA” brand, and also advised on its response to oppositions.
  • Advised the Swiss Foundation for International Development Cooperation on the development of official national public policy (CONPES) on intellectual property for the period 2020-30.
  • Advised STL Colombia on the national and international registration of a portfolio of various trade marks and slogans, including the “WONKA” mark, which was opposed by Warner Bros Entertainment — the firm successfully overcame the opposition and subsequent appeal.

Espinosa Olarte y Asociados Abogados

Espinosa Olarte y Asociados Abogados's practice has a focus on copyright and trade mark law, particularly in the entertainment, food, life sciences and technology spheres. Equally adept at portfolio management and contentious work, the group is arguably best known for its activity in anti-piracy issues. Prior to entering private practice, department head Jorge Olarte Collazos served as Deputy Superintendent for Jurisdictional Affairs at the SIC and also served as Head of the Legal Office for the National Directorate of Copyright. Andrés Espinosa is also experienced in IP and anti-piracy matters.

Practice head(s):

Jorge Olarte Collazos

Key clients

Actores Sociedad Colombiana de Gestión

Epson

Super de Alimentos

Medivaric Products

Proksol

Suipharma

Vision Lab

Alfredo Muñoz

TCL Colombia

Render Medios Audiovisuales

Yuppie

Elogim

Uberflug

Realfluencers

Proxol

Purabox

Óptica Colombiana

Alimentos Tostao

Work highlights

  • Advised Actores Sociedad Colombiana de Gestión on the management of litigation related to public communication and other rights.
  • Advised Super de Alimentos on trade mark registration, protection and management as well as copyright protection and litigation.
  • Advised Render Medios Audiovisuales on trade mark registration, protection and management.

Guerrero & Asociados Propiedad Intelectual

Guerrero & Asociados Propiedad Intelectual's focus on IP law translates into a broad practice that advises clients on a range of strategic counselling and business development matters, through to tax-related issues and dispute resolution. Managing partner Manuel Guerrero is noted for his strong background in technology-related IP and is a former adviser to the Technological Support Command of the Colombian National Army. Other recommended names include Natalia Pérez, whose practice has an emphasis on trade marks, copyrights and new technology; and María Camila Correa, who is noted for her record in IP portfolio management.

Practice head(s):

Manuel Guerrero; Natalia Pérez; María Camila Correa

Key clients

Army of Colombia

Colombian Air Force

Ministry of Defence of Colombia

Industrias Wilches

University – Uniquindio

University – Unisangil

University – Universidad Mariana

University – Universidad de la Salle

Boston Medical Group

Core Biomedical

Tivenos

Acies

Diseños y Sistemas

Minciencias

Algae Biosolutions

Moduldecks

Work highlights

  • Assisted ACIES to transfer to the US and create technology transfer agreements with Colombian, Peruvian and Chilean companies.
  • Advised Algae Biosolutions on a technology transfer agreement based on the licence of a water-recovery technology.
  • Advised India-based Asmoh Laboratories on filing trade marks in Colombia and Peru.

H&A

Madrid-headquartered H&A specialises exclusively in IP matters from its extensive network of offices across Spain and Latin America. The firm aims to be a one-stop-shop for the management and protection of IP assets, with strong offerings in patents, trade marks, designs, data protection and cybersecurity. Bogotá office director Adriana Peñaranda maintains a broad practice, with notable skill sets in trade marks, patents and franchise agreements. Carolina Calderón splits her time between Colombia and Spain and specialises in contentious IP, with a focus on ADR.

Practice head(s):

Adriana Peñaranda; Carolina Calderón

Work highlights

  • Successfully advised BHW Plain Bearings on preparing and filing an appeal against a denial decision issued by the Colombian Trademark Office.
  • Successfully represented FA TA Ricambi in challenging a cancellation action against the client’s trade mark “AM” and device in class 12.

Holland & Knight

Holland & Knight finds favour with sources for its ‘personalised, prompt and useful advice‘. The group is distinguished by its multidisciplinary approach to the area, which sees it provide integrated support on IP together with competition, consumer protection and data protection law. Department head Danilo Romero Raad is a regulatory specialist, whose practice spans IP, competition, consumer protection and TMT-related matters. Recommended names at associate level include Camila López, who has a broad regulatory focus; and Maria José Pardo, who joined in August 2021 from Brigard Castro. Associate Bettina Sojo, currently on study leave in New York, is also noted. Since publication, the team has been notably strengthened with the October-2022 hire of former director of the National Directorate of Copyright in Colombia, Camila Santamaría, as senior counse; with approaching 20 years’ experience, she has held leadership roles at both ASIPI and INTA – in the latter case serving on the organisation’s Latin America Global Advisory Council.

Practice head(s):

Danilo Romero Raad

Testimonials

‘It is an excellent office, which provides personalised, prompt and useful advice. We appreciate its quick attention to matters.

‘The team’s provision of prompt and adequate services distinguishes it in the market. Associate Camila López particularly stands out in our opinion.

Key clients

Issabela Vasquez

Illinois Tool Works

Kemtek

Pandapan Distribuciones

QBCo

Restaurante MUY

Major League Baseball Properties

Kilpatrick Townsend & Stockton / Williams Sonoma

Disagro de Guatemala

Cala Colombia

Work highlights

  • Successfully represented Colombian Influencer @IssaVasquez in trade mark litigation brought by a restaurant.
  • Represented Cyrgo on the preparation and filing of a domain name complaint before the World Intellectual Property Organisation.
  • Advised Major League Baseball Properties on protecting its intellectual property portfolio in Colombia.

Márquez-Robledo

Commended by sources for providing a ‘5-star service',  Márquez-Robledo's integrated IP and entertainment department stands as the firm’s signature offering. In addition to its expertise in the traditional trade mark and copyright spheres, the team also handles literary and audio-visual rights, publishing deals and movie contracts, among other matters. Firm founder Santiago Márquez Robledo is recommended for his expertise in sophisticated copyright, advertisement and entertainment issues — both advisory and contentious. Associate María Alejandra Ahumada provides support and is noted for her focus on music, marketing and advertisement law.

Practice head(s):

Santiago Márquez Robledo

Testimonials

‘What makes this firm unique is the 5-star service they provide to clients. Emails and messages are answered within minutes and, as a client from the entertainment industry, this is key to closing deals.’

‘The individuals at this firm treat all people very politely; the lawyers I have met are very respectful and have always demonstrated great ethics and character.’

Key clients

Bauer

54D

Ariadna

Givepower

Nativo Glamping

Sempertex

Yoyoso

Musicar

Sancho BBDO

Work highlights

  • Advised Bauer on trade mark protection matters, including opposition proceedings.
  • Successfully advised Sempertex on obtaining a notoriety declaration for the “SEMPERTEX” mark.
  • Advised Ariadna, an international communications agency, on trade mark filings in Chile, Paraguay, Mexico, Peru, Bolivia, Argentina, Honduras, El Salvador, the United States, Brazil, Ecuador and Colombia.

Triana, Uribe & Michelsen

Triana, Uribe & Michelsen's IP strategy and protection group supports domestic and multinational clients with their trade mark, copyright, patent and industry design-related needs. It also fields a strong niche offering in entertainment and sports law. Co-founding partner Juan Carlos Uribe spearheads the wider IP department, with support from up-and-coming specialist Andrés Medina. Co-founding partner —and dispute resolution head— Fernando Triana is the key contact for contentious work.

Practice head(s):

Juan Carlos Uribe

Velasco Ordóñez

A new entrant to the ranking for 2023, regulatory boutique Velasco Ordóñez is held up by sources for its ‘effectiveness, personalised attention and close monitoring of processes‘. The firm handles an array of IP matters, with particularly strong activity in trade mark portfolio management, patent applications, IP litigation and competition-related matters. Clients include domestic and multinational corporations, as well as high-profile individuals, with Microsoft and Grupo Nutresa standing as representative names. Firm founder Pablo Velasco Ordóñez is the key contact for IP, data privacy and regulatory affairs. Key support is provided by IP-focused senior associate, Santiago Andrés Ramírez Bonilla.

Practice head(s):

Pablo Velasco Ordóñez

Testimonials

It compares favourably with other firms, due to its quick response times, effectiveness, personalised attention and close monitoring of processes — the team constantly reports its progress.’

Velasco Ordóñez is a law firm that provides a close and very diligent service. Additionally, lawyers are very responsive and available, so they have a high service capacity.’

We appreciate the firm for its collaboration and support, especially Pablo Velasco.’

Velasco Ordóñez’s key differentiator is that its managing partner attends to our company directly, which shows us that we are a highly valued client and that information will be properly channelled through the firm. Additionally, it maintains strong service standards and provides good ideas to protect our brand.

Key clients

Tecnologías de Conducción y Control

Quimtia

Quimpac De Colombia

Fonandes

Branch Of Microsoft Colombia

Servicios Nutresa

Bodegas Yzaguirre

Siete Entertainment

Pollo Olímpico

Pollo Andino

Tucash

Tpaga

Proppi

Farmex

Victus

Robalino Law

BRDA Abogados

Morgan & Morgan

Godoy Hoyos Abogados

Amazing Business

Work highlights

  • Advised Roxana Cobo Sefair on the registration of the trade mark “ROXANA COBO”, following its successful defence against an opposition filed by Unilever based on its trade mark, “REXONA”.
  • Successfully represented Grupo Nutresa in trade mark opposition and cancellation proceedings against Jairo López Sánchez in relation to the “PULGARCITO” mark.
  • Acted for TuCash on the negotiation of contractual instruments for the development of AI algorithms for the capture and analysis of data from thousands of customer invoices.