Intellectual property in Dominican Republic

Angeles Pons

The full-service group at Angeles Pons is ‘trusted in the Dominican Republic for intellectual property and illicit trade issues’, and is also well regarded for its advice on the IP aspects of corporate and regulatory matters. Leading the team are experienced IP lawyer Wallis Pons, who ‘is always looking for innovative and efficient ways to move matters forward’, and Jaime Angeles, who regularly represents clients in trade mark, patent and unfair competition litigation. The group’s broad skill set is reflected in its recent workload, which covers contentious and non-contentious patent, trade mark, copyright and anti-counterfeiting matters, utilising its ‘high degree of IP expertise and experience‘.

Practice head(s):

Wallis Pons; Jaime Angeles


Testimonials

The firm is trusted in the Dominican Republic for intellectual property and illicit trade issues.

They have extensive knowledge of intellectual property, which allows them to provide effective strategies.

The group has a high degree of IP expertise and experience.

Key clients

PepsiCo


Diageo


Claro


Grupo Ramos


InsudPharma


Galderma


American Airlines


Walmart Stores


Ikea


Adidas


WeWork


CEI-RD


Work highlights


  • Represented Minerva del Risco, one of the heirs of Dominican poet René del Risco, in a high-profile case before the Supreme Court relating to the copyright over the song “Una Primavera Para El Mundo”.
  • Successfully represented Adobe in a dispute before the National Intellectual Property Office (ONAPI) over the cancellation of the commercial name “Photoshop del Caribe”.
  • Acted for Stokely-Van Camp (a subsidiary of PepsiCo) in an administrative dispute over the filing by Hack of a 3D trade mark for a bottle similar to the one used by the client for its Gatorade product.

Headrick Rizik Alvarez & Fernández

The sizeable IP team at Headrick Rizik Alvarez & Fernández advises leading clients across the main economic sectors in the Dominican Republic, namely pharmaceuticals, chemicals, automobiles, electronics, cosmetics, textiles and services. Mary Fernández and senior associates Miguelina Figueroa and Gabriella Villanueva are the trio leading the team, and are particularly adept at handling IP litigation; this is emblematic of the recent work of the wider group, which has been significantly active in complex administrative disputes. Other key matters undertaken by the team include the negotiation and drafting of contracts to transfer or licence intellectual property rights, as well as data protection and privacy issues.

Practice head(s):

Mary Fernández; Miguelina Figueroa; Gabriella Villanueva


Testimonials

Mary Fernández, Miguelina Figueroa and Gabriella Villanueva support us by responding in a precise, professional manner and have a good understanding of our business as well as everything related to intellectual property.

The depth of their investigations, support for claims beyond what was requested, and their innovative strategies have been excellent.

Highly personalised assistance and management of cases with depth and efficiency. Mary Fernández stands out in the team, as does the leadership displayed by Gabriela Villanueva.

Key clients

Johnson & Johnson


Grupo SID (Mercasid, Induveca and other affiliates)


Merk Sharp & Dohme


Mejía Arcalá


Productos Farmacéuticos (CHINOIN)


Pfizer


Caesars Entertainment


Grupo Puntacana


Productos Farmacéuticos Dr. Gray/Anest


Hilton Worlwide


Hershey’s


Del Monte Foods


Novartis Caribe


Vice Presidency of The Dominican Republic and Health Cabinet for Covid-19


Cooperativa de Productores de Leche Dos Pinos


Sheehan Genetics


Alianza de Pacientes con Enfermedades Raras (ADAPA)


Libbey Glass


Tygrus


Chick-fil-A


Sichuan Kelun-Biotech Biopharmaceutical


Work highlights


  • Representing Del Monte Foods in litigation opposing the registration of the trade mark “Piñas del Monte” by Carlos Manuel Constanza Madea.
  • Advising Didi Mobility on the legal implications for the use of the image rights of artists for the advertising of contests to be carried out through its digital platforms at the national level.
  • Successfully defended Mapfre Salud ARS against the opposition to its application to register the trade mark “¡Siempre Contigo! Mapre Salud ARS” brought by Banesco Seguros.

Miniño Abogados

Miniño Abogados is described as ‘exceptionally responsive and skilled in the area of IP’. Urko Ochoa, noted as ‘the partner you need for IP matters in Dominican Republic‘, leads a team whose recent workload includes significant trade mark litigation and enforcement actions relating to copyright, with strong suits in the pharmaceuticals and technology (including fintech) sectors. ‘Strategic‘ managing partner Orietta Blanco is well versed in a wide range of IP issues but has a particular focus on the multi-jurisdictional management of trade mark and domain name portfolios in the Caribbean. The team also has growing six-person patent division, of which associate Eugenio Escolástico is a key part. Pamela Hernández, who was promoted to partner in March 2023, is another standout practitioner IP matters in the Dominican Republic and other countries in the region.

Practice head(s):

Urko Ochoa


Testimonials

Miniño is our go-to firm in Dominican Republic. They always get the job done and are easy to work with. It provides comfort that Miniño understands what US clients require.

Orietta Blanco is very strategic and consistently produces great outcomes for all of our clients. The team is extremely efficient and responsive.

The team releases very good legal updates regarding the practice. In the same way, the communication of the entire team, on both trade marks and patents, is very thorough and clear in terms of requirements and updates on procedures.

Key clients

Netflix


Amazon


Meta Platforms (formerly Facebook)


Philip Morris


Sanofi


E. & J. Gallo Winery


The DIRECTV Group


Mondelez International


Starbucks Corporation


Edwards Lifesciences


Western Digital Technologies


Syngenta


Medtronic Logistics


Boehringer Ingelheim


Energizer


Red Bull


Fresenius


Moroccanoil


BioMerieux


Staedtler


Work highlights


  • Acting for D.B.C. Corporation in one of most important trade mark cases to be heard in the Dominican Republic, relating to a copycat brand that became famous in its own right.
  • Acted for Colombina in enforcement proceedings against the infringement of trade dress, including negotiations.
  • Assisted well-known local jewellery designer Laura Tosato/EFECTOS with comprehensive IP and commercial support, including significant copyright and contractual elements.

Troncoso Leroux

A standout recent mandate for the team at Troncoso Leroux was appearing in the Supreme Court of Justice to represent a pharmaceutical company in a trade mark opposition action. Founding partner Maria del Pilar Troncoso heads up the team and is skilled in litigation in the IP space, while managing partner Pedro Troncoso is a key name to note when it comes to the IP aspects of corporate transactions. Domestically, the group has a strong client base and reputation, but it also acts for an impressive roster of international clients and is instructed by large multinational companies and organisations such as Major League Baseball. Senior associate Maxiell Herrera and associate Daniel Riley are go-to practitioners for trade mark enforcement and litigation.

Practice head(s):

Maria del Pilar Troncoso


Testimonials

Accurate, precise, fast, and reliable.

Reliable and high-quality service.

Key clients

Novartis


Ron Barcelo


Lacoste Alligator


Crocs


Major League Baseball (MLB)


Pfizer


Eli Lilly and Company


Bristol-Myers Squibb


Puma


Alticor


YUM! Brands


Futbol Club Barcelona


Bulgari


Central Romana Corporation


SAS Jean Cassegran (LongChamp)


Televisa


Pernord Ricart


Salvatore Ferragamo


Guccio Gucci


Viacom International


Schaeffler


Work highlights


  • Assisted Zorro Productions with a trade mark application for “El Zorro”.
  • Assisted Cognac with trade mark applications.
  • Represented Salvatore Ferragamo in proceedings relating to counterfeit goods.

Bufete Lugo Lovatón

Bufete Lugo Lovatón's IP practice is particularly active in the food and beverages sector and in matters including copyright and trade mark infringement and unfair competition. On the regulatory side, the group often deals with issues relating to advertising regulations. Zaida Lugo is a key name to note.

Messina International

Founded in 2019, Messina International's IP team has a fast-growing client base which operates in a range of sectors, such as pharmaceuticals, technology and life sciences, and its diverse workload includes advising clients on government regulation, the IP aspects of licensing, distribution and supply agreements, and trade mark and copyright registration and protection. Managing partner Ana Messina, who has a wealth of expertise in the full spectrum of contentious and non-contentious IP matters, heads up the group alongside senior associate Adelin Villalobos, who has over 15 years' experience in IP and regulatory affairs.

Practice head(s):

Ana Messina; Adelin Villalobos


Key clients

Viafirma (Avansi)


JJ Martin Group (Salutti USA/John Ra)


Brandstock Services


Alfaro, Ferrer & Ramirez


Deutsche Transnational Trustee Corporation/Empresas Polar


Calox International/Markatrade


Insecticidas Internacionales Dominicana/Agroser


Herrero & Asociados


Industrias San Miguel


Perfetti Van Melle


Integra Metas Estratégicas


Work highlights


  • Assisted Equifax with due diligence in IP matters related to a corporate transaction.
  • Assisted Metas Estratégicas with compliance issues to enable the client to work together with state authorities on the development of an original country brand.
  • Represented Calox International/Markatrade before the Supreme Court of the Dominican Republic in relation to a cancellation action.

Castillo y Castillo

Associate Carimer Guzmán and managing partner Luis Pimentel lead the IP team at Castillo y Castillo, which has a particular strength in the consumer goods sector, leveraging its knowledge of this industry to work with well-known clients such as Danone. Pimentel concentrates his practice on copyright and e-commerce matters, and also utilises his financial expertise to assist clients in the banking sector, regularly overseeing work for key client Banco Popular Dominicano. Guzmán is the go-to name for administrative and contentious trade mark procedures.

Practice head(s):

Carimer Guzmán; Luis Pimentel


Testimonials

The experience of the team means their service goes beyond IP. The service received has always been of excellent quality.

Carimer Guzmán has a wealth of experience and knowledge of the area.

The firm is an expert in intellectual property issues. They work with great excellence, professionalism and pay attention to details, which is very important.

Key clients

Industrias Banilejas (Induban)


Belcorp


Danone North America


Banco Popular Dominicano (BPD)


UPL


Grupo Bimbo


Aguirre Noboa


Ecolab


Brooks Kushman


Work highlights


  • Advising Induban on the defence of one of its key trade marks against a local infringer.
  • Advising Danone North America on the sanitary registrations of its products and trade mark prosecutions.
  • Advising major Mexican retailer Grupo Bimbo on the prosecution and maintenance of its large trade mark portfolio.

Guzmán Ariza

Senior counsel Leandro Corral and Fabio Guzmán Saladín, both of whom are highly active in advising on trade mark registrations, lead Guzmán Ariza‘s intellectual property team, which counts trade marks, patents, industrial designs and copyrights among its key areas of strength. Cross-border matters are a significant feature of the group’s work, thanks to its wide-ranging international client base, which spans the car manufacturing, pharmaceuticals, oil and gas sectors, among others.

Practice head(s):

Leandro Corral; Fabio Guzmán Saladín


Key clients

Rocky Brands/Creative Recreation


Gazprom Neft


Kikkoman


Gold Star Tobacco


Sunwing Travel Group


Agrovet Market Animal Health


T&Beer


Senninger Irrigation


Work highlights


  • Assisted Gazprom Neft with amending old registrations and registering 3D marks.
  • Assisted Kikkoman with modifying information pertaining to a trade mark registration.
  • Assisted Gold Star Tobacco with the registration of seven of its trade marks.

JJ Roca & Asociados

JJ Roca & Asociados‘ versatile IP practitioners handle matters in a variety of sectors, such as chemicals, entertainment, technology and education. Among the group’s major international clients is Coca-Cola. Sharin Pablo de Roca and Ana Paula Campusano are the key names to note.

OMG

OMG‘s multidisciplinary team wins praise from clients as its ‘work is very easy to follow‘ and its lawyers ‘don’t resort to complex formulas‘. Luis Eduardo Aquino heads up the team, and his international trade and corporate knowhow is an asset in the team when advising on the IP aspects of corporate mandates. Associate and IP specialist Angeannette Tejeda is another key name to note in the team, regularly assisting clients with the administration of their intellectual property assets.

Practice head(s):

Luis Eduardo Aquino


Testimonials

OMG has proven, over the years, to be an excellent ally to the legal field in the country. It is extremely clear, and the work is very easy to follow.

The lawyers who assist us adapt, maintain a legal tone, and don’t resort to complex formulas that “non-lawyers” are left with doubts about. This has given them a competitive advantage compared to other law firms.

Key clients

Ourofino Sáude Animal


Inter IKEA Systems


CISA Dominicana


SICPA


Universidad Iberoamericana (UNIBE)


Work highlights


  • Assisted Alimentos Heinz Costa Rica (Kraft Heinz) with IP issues related to its relationship with a local distributor for the commercialisation of Heinz products in the Dominican Republic.
  • Assisting SICPA with IP issues related to a services contract (and its amendments) executed with the Tax Administration of the Dominican Republic (DGII) for the control, traceability and security system for alcoholic beverages and cigarettes in the Dominican market.
  • Assisted Inter IKEA Systems with IP issues relating to the review of a draft franchise agreement with a Dominican franchisor, as well as the completion of a legal and regulatory risk analysis from the Dominican Republic perspective.

Pereyra & Asociados

Noted as an ‘outstanding firm to work with‘, Pereyra & Asociados is well known for its trade mark application and registration work, but also deals with cases relating to patents, trade secrets, industrial designs, and copyrights. Practice group head Lorena Pereyra is ‘an expert in her field‘, with a client roster that ranges from start-up companies to multinationals, which is also demonstrative of the group’s overall ability to assist a broad client base which covers the pharmaceuticals, healthcare and technology sectors, among others.

Practice head(s):

Lorena Pereyra


Testimonials

Pereyra & Asociados is an outstanding firm to work with. They provided us with a perfect trade mark strategy that was tailored to our case. They knew exactly what we needed in order to succeed. We were able to register our trade mark in the Dominican Republic very quickly and felt always very well taken care of. The communication with the entire team was always swift and very friendly.

Lorena Pereyra was an absolute pleasure to work with. She is an expert in her field and always had great solutions for every problem that arose. She found a way to make our trade mark application happen which was almost impossible to achieve. She helped us navigate the legal landscape in the Dominican Republic with ease and we did not feel like we operated in a different jurisdiction.

Key clients

Patrix IP Services


Behrens Laboratories


Bbraun Medical


Winkler Partners (Giant Manufacturing)


McDonald’s


Yellow Pages – Caribe Servicios de Información


Mondelez International (Cadbury-Kraft)


Hanesbrands


Esso República Dominicana


CF Hotels (Marriott)


Centromoda


Hospira – Pfizer


Microtek (Ecolab)


Essity Hygiene and Health


Mary Kay


Fiduciaria Duit Capital


XOLVER


Avaya


Work highlights


  • Assisted Behrens Laboratories with a trade mark application for a Gliceramin pharmaceutical product.
  • Assisted Avaya with the renewal of ten company trade marks before the local institutions.
  • Assisted Essity Hygiene and Health with multiple trade mark registrations and renewals before the local institutions.

Russin, Vecchi & Heredia Bonetti

Russin, Vecchi & Heredia Bonetti has a strong track record in trade mark protection, regulatory issues, and privacy/publicity rights matters, as well as patents and copyright. Experienced IP practitioner Rosa Campillo Celado, whose international law expertise allows her to assist local and foreign clients doing business in the Dominican Republic, leads the team. On the litigation side, managing partner Georges Santoni Recio is a key name to note. Mónika Fiallo Paradas is also a prominent team member with over 20 years of experience in IP matters in a range of sectors.

Practice head(s):

Rosa Campillo Celado


Key clients

BMJ Industries Tobacco


Mead Johnson Nutrition Dominicana and Mead Johnson


Photoshop Caribe


Work highlights


  • Assisted BMJ Industries Tobacco with filing several oppositions against a third-party trade mark applications in the Dominican Republic.
  • Represented Mead Johnson Nutrition Dominicana and Mead Johnson in a right to publicity case stemming from the commercial use of the counterparty’s image for the advertising of the Alacta Plus brand.
  • Acting for Photoshop Caribe in the administrative stage of proceedings before the ONAPI, relating to an annulment action filed against Adobe’s “Photoshop” trade mark, registered locally in 2015.

Troncoso y Cáceres

A longstanding presence in the Dominican market, Troncoso y Cáceres is particularly focused on the registration of trade marks, although it is also experienced in patent and industrial design matters. Anti-counterfeiting cases are another core area of expertise. Senior partner Ana Isabel Cáceres Matos and Jesús Troncoso oversee the practice, supported by senior associate Claudia Vargas Matos, a key name for IP litigation and regulatory matters.

Practice head(s):

Ana Isabel Cáceres; Jesús Troncoso


Key clients

Apple


Societe Louis Vuitton Services


Revlon Consumer Products


Hero Motocorp


NBA Properties


Grupo Massimo Dutti


Kraft Foods Group Brands


Victoria’s Secret & Co.


Zacco Denmark


Inditex


Exxon Mobil


Pfizer


Henkel


Novartis


Becton, Dickinson and Company


SFFC


The Goodyear Tire & Rubber Company


Womble Bond Dickinson (US)


Fruit Of The Loom


Mitsubishi


LVMH Perfumes & Cosmetics


Vans


Amcor Rigid Packaging USA


Eaton Intelligent Power


Work highlights


  • Advised Indiana University Research and Technology Corporation and Assembly Biosciences on registering their patent for “Allosteric Modulators of Hepatitis B Core Protein”.
  • Advised CR Bard on the registration of its “BD Atlas” trade mark in the Dominican Republic.
  • Acted for Hyatt, the owner of the “Hyatt Ziva” trade mark, in filing an opposition against an application for a trade mark for “Ziba Suites & Golf Residences”.

Ulises Cabrera

The team at Ulises Cabrera, whose ‘willingness to collaborate always stands out‘, leverages close connections with law firms throughout the Caribbean region to work on cross-border IP matters. Practice head Magdalena Almonte, who has specialisms in the consumer goods, food and beverages, life sciences and technology sectors, oversees the team, supported by associate Aidaluz Pimentel. The pair are highly active in trade mark registration matters, which form a large part of the group’s IP work.

Practice head(s):

Magdalena Almonte


Testimonials

The team is efficient and effective. The response times are fast, and we get favourable results. Their willingness to collaborate always stands out, as well as their ability to fully comply with what is entrusted to them and go that extra mile to achieve the results expected.

Quick and efficient responses, organised, responsible, and committed to customers. Magdalena Almonte and Aidaluz Pimentel are names to note.

An organised team that can work fluidly and efficiently.

The lawyers are attentive and committed to their work.

The team’s knowledge is great, and they are always there when the client needs them!

We always feel lucky to have been working with Magdalena Almonte. She is business-oriented and gives good legal advice.

Key clients

Grupo Familia


Novo Nordisk


Químicos y Lubricantes


Delivery Hero


Xiaomi


Quirch Foods


Otis McAllister


Zhongce Rubber Group Company


Kao Corporation


Altian Pharma


Emcure Pharmaceuticals


Font Gamundi


Brand Leaders


Super de Alimentos


Shenzhen Woody Vapes Technology


Rolex


Roma Prince


Industrias Nigua


Terpel


Premier Electric Japan


Fundación Juan Bosch


General Mills


Campbells Soup Company


DIDI Chuxing Technology


Bacardi


Vreugdenhil


S.D. Sight Diagnostics


Productos Alimenticios Bocadeli


Spectrum Brands


Work highlights


  • Assisted Delivery Hero with IP due diligence related to the acquisition of Hugo Technologies.
  • Represented Grupo Disagro in an opposition to the application for the trade mark “Armada”, due to its similarity to the client’s “Armero” trade mark.
  • Defending Pancommercial Holdings in a cancellation action for non-use brought against its trade mark “Jack’s”.