Intellectual property in Costa Rica

BLP

Intellectual property is a focal point of BLP's operations in Costa Rica. The department covers a diverse array of matters, including trade marks, patents, copyright, geographical indications and regulatory issues. Furthermore, the group is well equipped to handle areas such as advertising, data protection and unfair competition. Department head Giselle Reuben's practice focuses on sanitary and phytosanitary registrations of products, as well as trade mark and copyright litigation. In addition to IP registration and protection, associate León Weinstok is experienced in data protection, smuggling and anti-counterfeiting cases. Senior associate Anel Aguilar is noted for her patent and trade mark expertise on a regional level and Uri Weinstok handles litigation as well as anti-piracy advice.

Practice head(s):

Giselle Reuben

Key clients

Pandora Jewellery

British American Tobacco Central America (Batca)

Lindahl (H & M)

HBO

Fross Zelnick Lehrman & Zissu

Baker McKenzie

Conair

Repretel

Mercedes Benz

Rise Kombucha

Florida Bebidas

Edwards Lifesciences

Apple

Grupo Boticário

Scotiabank

Unilever

Amazon

Colgate-Palmolive Company

Banco Centroamericano de Integración Económica (BCIE)

Uber Technologies

Microsoft

Volcom

WeWork

BAC

Work highlights

  • Conducted a raid on one of the major distributors of counterfeit products of Pandora Jewellery
  • Obtained a written authorisation for the import of CBD products from the Ministry of Health and the sanitary registration of the products for Rise Kombucha
  • Acted for Edwards Lifesciences in relation to the registration and renewal of sanitary permits of chemical products in Costa Rica

Zürcher IP

Zürcher Lawyers, the dedicated intellectual property branch of Zürcher, Odio & Raven, focuses on all matters related to trade marks, patents, designs and copyrights. Other key areas of expertise include data privacy, life sciences and technology. Practice head María del Pilar López is recommended.

Arias

Trade mark and patent filing and registration, as well as IP litigation and enforcement, are the core areas of Arias' intellectual property practice. Furthermore, the department offers adjacent services in areas such as data privacy, IT and biotechnology law. Noted for their 'deep technical knowledge of intellectual property matters', Luis Diego Castro and Simón Valverde, who merged their firm Castro & Pal Abogados into the practice in 2019, have taken over the leadership of the team. Both add a wealth of IP experience to the practice, for instance in the fields of biotech patents, inventions and technology. Developing coherent intellectual property strategies for innovators and their enterprises is one of associate Mariana Vargas' strong suits.

Testimonials

‘What makes this practice unique is that Arias, particularly Simón Valverde, has knowledge and experience of the public and academic institutions in Costa Rica, which makes our work with them much easier and guarantees that we receive the results we expect.’

‘In the case of Simón, what makes him stand out is his vast experience and ability to handle specific and complex client matters. I would like to highlight his enormous capacity to explain the context and overview of a matter in a way that each individual client will understand, and to assist us throughout the process and guide us to the right decisions. One of his best qualities is definitely his ability to always respond immediately to our queries and requirements, and his ability to suitably adapt to the needs of different clients.’

‘Luis Diego Castro is an excellent professional and we trust him to handle our patent matters in Costa Rica.’

‘Arias’ team in Costa Rica has shown without a doubt that it has established itself as a leader in the Central American market in patent matters. The merger with Castro & Pal has combined technical knowledge with the administrative and logistical support that a strong intellectual property practice needs.’

‘Arias benefits from the portfolio management skills that the partners of Castro & Pal have brought to the firm.’

‘Simón Valverde is a market leader for any intellectual property matter that requires an in-depth and strategic analysis to decide the actions to take (especially patent and trade mark matters).’

‘Simón Valverde and Luis Diego Castro are characterised by their high degree of availability and deep technical knowledge of intellectual property matters in Costa Rica.’

Key clients

UNED

Productos de Concreto

Abbott

BioTD

Digevo

Eating Well

Philips Morris

Chemplast

Goodrich, Riquelme y Asociados

Work highlights

  • Assisted Productos de Concreto with the registration of a technical manual
  • Filed a nullity action for Abbott against a registered trade mark
  • Handling ongoing trade mark work for Philip Morris

Eproint

IP boutique E-Proint collaborates with the firm's offices in Belize, Honduras, Guatemala, the Dominican Republic and the Cayman Islands to provide large and small companies with intellectual property services, covering trade marks and patents, health registrations and customs issues. The team led by Gabriela Bodden and Aaron Montero is particularly active in the consumer goods, pharmaceuticals and luxury goods industries. Bodden has a particularly strong track record in clearance searches and trade mark prosecution, as well as advising on IP matters related to medical cannabis. The preparation and filing of patent applications makes up the majority of Montero's work in this field of law.

Practice head(s):

Gabriela Bodden; Aaron Montero

Facio & Cañas

Faycamark is the dedicated intellectual property department of Lex Mundi member Facio & Cañas. The team led by Milagro Chaves specialises in patents, trade marks, copyright, trade secrets and regulatory law, specifically with regard to packaging. Focused on non-contentious matters, Chaves handles the drafting of cease and desist letters and negotiations with infringing parties. However, the practice also has experience in representing franchisers, distributors and other clients in IP litigation. 'Superb' associate Laura Valverde oversees the group's new IP offerings, such as border measures and infringement monitoring. The firm's client roster includes companies from a diverse range of industries, such as food and beverages, consumer goods and technology.

Practice head(s):

Milagro Chaves

Testimonials

‘Laura Valverde is a superb lawyer.’

‘Facio & Cañas provide exceptional service and prompt responses, but what stands out the most is their ability to work as a team so that the client is kept informed at all times and can make good decisions.’

‘Laura Valverde is exceptionally committed to resolving complex matters for clients, and ensures that our intellectual property rights are well protected, whether in a simple trade mark application or in a more complex case, such as litigation.’

Key clients

Lamb Weston

Ilva Saronno

New Era Cap Company

Juul Labs

Jaguar Land Rover

Work highlights

  • Advised Lamb Weston on a trade mark rejection from the Costa Rican Trademark Office
  • Advised New Era Cap Company on customs enforcement of its trade mark hats
  • Assisted Juul Labs with its strategic entrance to the local market, including trade mark portfolio management and sanitary registrations

MMonivation

Boutique firm MMonivation handles intellectual property matters across Central America, the Caribbean and beyond. The team spearheaded by Ana Catalina Monge advises on trade marks, patents, copyright and sanitary registrations, and has a particular skill set in the innovative area of non-traditional marks such as scents, sounds and flavours. Together with Andrés Hernandez and the 'diligent and organised' Carlos Monge Rodriguez, Monge acts for clients from the cosmetics, food and pharmaceutical industries, in particular pharmaceutical laboratories. Hernandez takes the lead on the management of domestic trade mark portfolios and Monge Rodriguez focuses on health registrations.

Practice head(s):

Ana Catalina Monge

Testimonials

‘Without doubt one of their strong points is the absolute control they have over clients’ cases.’

‘Ana Catalina Monge has a great deal of IP knowledge.’

‘The team matches up to other leading firms thanks to its understanding of the subject and years of experience in IP matters.’

‘Ana Catalina has more than 15 years’ experience in IP matters and so she has the necessary knowledge, but the quality that sets her apart from other lawyers is her complete commitment to clients and to following up on their cases. She has great empathy with the client.’

‘Carlos Monge takes care of health registrations and administrative issues, and is diligent and organised.’

Key clients

Flowil International Lighting Holding

Kao USA

Arabela

Industrias Sintéticas de Centroamérica

Enersol de Costa Rica

Consuhotel

Caribbean Trademarks Services (George CJ Moore)

Work highlights

  • Managing trade mark portfolios for Caribbean Trademark Services
  • Advising Enersol de Costa Rica on the protection of its trade mark portfolio in Costa Rica
  • Managing the sanitary registration portfolio of Arabela, which has operations throughout Central America

Colbs Estudio Legal

Trade mark registrations and renewals, as well as patent matters, especially novel PCT patent applications, make up the majority of Colbs Estudio Legal's work in intellectual property. Javier Escalante and Sebastián Jiménez head the team with intellectual property coordinator Jessica Ward, who is familiar with trade mark portfolio management in the Central American region as well as in the Caribbean, and is also knowledgeable about data privacy compliance.

Key clients

Swisscore Group Latam

Liga Agrícola de la Caña de Azúcar

Guanacaste Bottling Company

Training Center Surí

Work highlights

  • Drafted and filed the first Costa Rican PCT patent, filed under the ePCT system in Costa Rica, for inventor Rafael Azofeifa
  • Handling the trade mark portfolio of Liga Agrícola Industrial de la Caña de Azúcar in Central America and the Caribbean

Consortium Legal

As a major regional law firm, Consortium Legal offers the full range of traditional IP services. Areas of expertise include copyright matters and trade mark portfolios, especially in the cosmetics industry, as well as providing intellectual property advice to the banking sector. Fabiola Sáenz is the director of the firm's IP department, further providing assistance to entrepreneurs on novel IP matters relating to technology and making use of legal tech to facilitate intellectual property protection.

Practice head(s):

Fabiola Sáenz

Key clients

Cemex de Costa Rica

Cemex Research Group

Hardell Investments (Telecable)

Republic Technologies

Productos Alimenticios Centroamericanos

Rappi

Hello Administradora de Inmuebles

Servicios Inmobiliarios Vermell

Orange Gestion del Desarrollo

World BASC Organization

Work highlights

  • Assisted Productos Alimenticios Centroamericanos with initiating its operations in Costa Rica and registering its trade mark portfolio
  • Represented Republic Technologies in infringement actions against counterfeit products in Costa Rica

Dentons Muñoz

Advising on the protection and enforcement of trade marks, patents, designs, copyright and trade secrets, Dentons Muñoz covers a wide range of intellectual property services. Senior associate Monserrat Guitart heads the firm's regional IP department as well as the team in Costa Rica, with a core focus on trade marks in the food, beverage and retail industries. She brings additional expertise in related technology and data privacy matters.

Practice head(s):

Monserrat Guitart

EY Law Central America

Trade mark portfolio management, sanitary registrations and advising new entrants to the Costa Rican market on intellectual property strategies are the pillars of EY Law Central America's intellectual property department. Hernán Pacheco O and Roxana Cordero Pereira act as joint department heads and have recently expanded the service offering to cater to innovators and start-up entrepreneurs. Cordero also handles regulatory issues and related matters such as competition law and market practices.

Key clients

Grupo Bimbo

Avon Products

Omnilife

4 Dementes Lab

Jorge Castro Ruiz

Sperantum CR

Alimentos Bermudez

Work highlights

  • Managing Grupo Bimbo’s entire IP portfolio, ranging from trade mark and patent registrations and renewals to infringement procedures and unfair competition matters.
  • Managing the sanitary registrations for all Alimentos Bermúdez products, as well as advising the client on consumer protection regulations and trade mark matters such as protection strategies and maintenance

Lexincorp

As part of its full-service offering, Lexincorp fields an intellectual property team spearheaded by Arnoldo André and Gabriela Miranda, which is noted for 'providing good client care'. Thanks to its membership of the Multilaw network, the firm is regularly retained by law firms abroad to assist their clients with IP registrations and oppositions in Costa Rica. Miranda has expertise in trade mark protection, patents and related administrative processes, as well as trade names and slogans.

Practice head(s):

Arnoldo André; Gabriela Miranda

Testimonials

‘I think their teamwork is their strong point. They always share their experience, which is the most important thing, and they know how to listen to their colleagues. The team is very good.’

‘They provide good client care, constantly follow up on matters, and their best qualities are their communication skills and friendliness.’

‘Gabriela Miranda understands my business.’

Key clients

Tilleke & Gibbins

Brandstock Services

Fairbain Catley Low & Kong

Stobbs IP

Wenger Plattner

Insecticidas Internacionales de Costa Rica (Inica)

Arosemena & Burbano

The Webb Law Firm

Capella Veloso

Kimberly-Clark

Work highlights

  • Assisted Tilleke & Gibbins with cancellation and nullity actions for similarity of trade marks
  • Handled all trade mark registrations and renewals for Insecticidas Internacionales de Costa Rica (Inica)

Oller Abogados

As part of the firm's comprehensive corporate services, the intellectual property practice at Oller Abogados focuses on advising companies on trade mark registrations and renewals, particularly technology and automotive industry clients. Ricardo Vargas and associate Yaliam Jaime jointly lead the team, with additional capabilities in patents and copyright advice.

Practice head(s):

Ricardo Vargas; Yaliam Jaime

Key clients

Promed

Sylvania

Changan Automobile

Copa Airlines

BYD Company Limited

LG Electronics

International Stores Cap (Attenza Duty Free)

Work highlights

  • Conducted a trade mark registration for LG Electronics
  • Completed trade mark renewals for International Stores Cap (Attenza Duty Free)