Intellectual property in Dominican Republic

Angeles Pons

The highly regarded Angeles Pons provides full-service IP advice. The broad service offering spans from trade marks and copyright, in which the team particularly excels, to data protection and regulation in connection to labelling and advertising. In recent highlights, the firm particularly stood out its role in the significant trade mark and copyright Marca País case, and for its presence in two high-profile copyright and anti-counterfeiting disputes in the pharmaceuticals sector. The cases were led by practice heads Wallis Pons and Jaime Ángeles, respectively. Pons is described as 'consistent, experienced and creative' and has vast knowledge of trade marks, patents and unfair competition litigation. Ángeles's practice focuses on copyright and trade mark litigation, advertising, IT and copyright consultancy. He is highlighted for providing 'pragmatic, strategic advice in a cost-effective manner'.

Practice head(s):

Wallis Pons; Jaime Angeles

Testimonials

‘Provides good and very valuable advice.’

‘They take the time to understand what the client wants and then tailor their advice accordingly.’

‘Jaime Angeles provides pragmatic, strategic advice in a cost-effective manner.’

‘Wallis Pons is a true business partner. She is always looking for a cost-effective and efficient way to provide services to her clients. She really engages and commits with clients, seeking always to succeed in all that she does, from a regular filing to big litigation. She is consistent, experienced and creative.’

‘Wallis Pons is always there to assist, help and to provide the best service possible, with experience, expertise, knowledge, creativity and commitment.’

Key clients

Société des Produits Nestlé

PepsiCo

Diageo

Claro

Grupo Ramos

InsudPharma

Galderma

American Airlines

Wal-mart Stores

Ikea

HP

Adidas

WeWork

CEI-RD

Work highlights

  • Advised Centro De Exportación E Inversión De La República Dominicana on a plagiarism matter related to Marca País.
  • Advised Stokely-Van Camp on a declaration of notoriousness issued by the Dominican Republic Patent and Trademark Office as a result of an administrative dispute in connection to a 3D bottle.
  • Handling all the regulatory issues for the Dominican subsidiary of PepsiCo, Frito Lay Dominicana.

Headrick Rizik Alvarez & Fernández

Headrick Rizik Alvarez & Fernández is praised for its 'unique ability to anticipate potential challenges and anticipate solutions before those scenarios become reality'. Its key IP partners Mary Fernández and Lilly Acevedo lead the sizeable, full-service practice, which handles high-profile matters in connection to trade mark prosecution, patents, copyright and disputes. Trade marks are an area of particular strength; here, the firm acts for a number of clients in the pharmaceuticals and healthcare sectors. Acevedo acts as director of the intellectual property and regulatory affairs department of the firm and focuses on advising companies in the cosmetics and food and beverages sectors, including providing advice on trading, distribution and advertising. Founding partner Fernández is also a highly regarded corporate lawyer.

Practice head(s):

Mary Fernández; Lilly Acevedo

Testimonials

‘The whole IP team at Headrick is remarkable, but their leaders deserve a great deal of credit, to keep the gear rolling in synchronicity.’

The lawyers regularly provide their responses in the appropriate time for what has been required. Provided that they’re so knowledgeable on the field and involved with the work that is done by the relevant Government agencies, their advice is always accurate, and is always able to combine the best analysis on the legislation with the practical point of view and current practices.’

‘Mary Fernández is a key player in the Dominican Republic for IP services. She is highly respected and known for her expertise and dynamism. Mary is a Senior and Founding Partner of the Firm and throughout the years she has contributed in the enactment of different pieces of law. She is well regarded by her clients for her dedication and the attention that she grants to all of her cases.’

‘Lilly Acevedo is very thorough in her opinions, and pragmatic at the same time. She always focuses on the solution, and not the problem itself, trying to harmonise the law, the practices in the market and the levels of compliance that the pharmaceutical companies have to meet. Thanks to her expertise, she is able to come up with new and creative approaches to the issues presented.’

‘Exceptional technical knowledge. A unique ability to anticipate potential challenges and anticipate solutions before those scenarios become reality. Multidisciplinary nature of the practice of attorneys and an exceptional database infrastructure and access to information.’

‘Marisol Vicens is an exceptional professional talent that can be defined by her integrity, technical capacity and work ethic. In addition to those pillar qualities for a lawyer, Marisol has an unusual sagacity that allows her to anticipate challenges and prepare in advance for their solution.’

Key clients

Johnson & Johnson

Grupo Sid

Mujeres Por La Igualdad De Derechos

Gunk

Mejía Arcalá

Transparency International

Merck

Bigwise

Caesars entertainment

Grupo Puntacana

Work highlights

  • Represented CAE and Grupo Puntacana before the Court of Appeal, which rendered a favourable decision in a case concerning retransmission of audio-visual work.
  • Served as main counsel to Grupo Bolim in the recent purchase of all the assets of Pan Pepin, an iconic bread manufacturer in the country, including providing advice on IP aspects.
  • Assisted Induveca to obtain prima facie protection for the elements integrating a trade dress.

Miniño Abogados

Major international companies turn to Miniño Abogados for its 'very deep knowledge of the laws and practices of all Caribbean nations'. The team stands out for being able to advise clients on local as well as international IP matters, with a particular emphasis on the Caribbean region, and in connection to multiple types of matters, including both multi-jurisdictional management of regional portfolios and cross-border transactions and litigations. The practice is particularly well regarded for its activity in advertising law and labelling, as well as in satellite privacy, where it is engaged in intergovernmental projects to enhance IP protection. Urko Ochoa heads the IP practice and assists clients with trade mark and patent protection, enforcement and commercialisation, transaction agreements and litigation. Pamela Hernández heads the trade mark prosecution and litigation department and specialises in anti-counterfeiting, customs actions and copyright infringement. Orietta Blanco is an expert in copyright, entertainment, marketing and advertising matters with links to data protection and competition law.

Practice head(s):

Urko Ochoa

Testimonials

‘It is one of the only law firms that serves the entire Caribbean region and at the same time has a very deep knowledge of the laws and practices of all Caribbean nations.’

‘They are very active in their contacts with clients and always ask what can be done better. Also the access to partners and associates is very good.’

Key clients

Netflix

Amazon

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

Work highlights

  • Assinsting Moroccanoil in trade mark infringement cases.
  • Assisting Starbucks with strategic advice for the entire trade mark portfolio in Caribbean jurisdictions, which include new filing projects, maintenance and trade mark protection and enforcement.
  • Acted for Sky International in a successful opposition action against trade mark Skyworth in class 09 in which the Trade mark Office recognised protection for the family of marks around the term Sky in favour of Sky International.

Troncoso Leroux

Troncoso Leroux has a well-known and reputed IP department, which handles the full spectrum of IP matters. Additionally, the team covers criminal litigation in connection to IP, including cases involving infringement of IP rights, and border measures procedures with customs and seizures of counterfeit merchandise in the local market. The group comprises highly recognised lawyers; founding partner Maria del Pilar Troncoso heads up the department and often works with managing partner and corporate and commercial team head Pedro TroncosoVanessa Cabrera has extensive experience in trade mark enforcement and IP infringement, and associate Daniel Riley is an up-and-coming litigator and expert in administrative conflicts and trade mark enforcement.

Practice head(s):

Maria del Pilar Troncoso

Key clients

Eli Lilly and Company

Mayor League Baseball

Lacoste Alligator

Starbucks Corporation

Crocs

Novartis

Televisa

Puma

Alticor

Futbol Club Barcelona

Bulgari

Central Romana Corporation

SAS Jean Cassegran

Ron Barcelo

Pernod Ricard

Work highlights

  • Represented Puma in the seize of products due to trade mark infringement.
  • Represented a commerce institution in the defense and protection of its commercial name.
  • Represented Crocs in the protection of its trade mark from unauthorised use.

Bufete Lugo Lovatón

Bufete Lugo Lovatón is recognised for providing a full IP service to clients in numerous industries, including pharmaceuticals, advertising, retail, food and drink, and textiles, among others. The team is able to assist clients with their IP matters on an international basis, with particular emphasis on the Caribbean region. Trade marks are at the core of the group's expertise, alongside IP prosecution and advertising law. Zaida Lugo is a key figure in the team and has longstanding experience in IP, consumer protection and unfair competition. José Santana is the director of the IP prosecution department and specialises in trade marks, patents and copyright, and associate Héctor Collado is responsible for contentious cases.

Practice head(s):

Zaida Lugo; Jose Santana; Hector Collado

Key clients

NBA

MARS Incorporated

Conair Corporation

Genomma Lab Internacional

Chanel

Vinicola del Norte

Keurig Dr. Pepper

Mccann Erickson

Payless Shoesource Worldwide

Chobani

Iberian IP

Fieldfisher (March & Asociados)

Chiever

Spirit Imports

Baylos

Hovey Williams

Estudio Gold

NaexasCompass Group

Jeunesse Global Holdings

Greenberg Traurig (Miami)

Konzett Kohlhaupt Folie

Cervieri Monsuarez & Asoc.

Dennemeyer Group

Brandstock Legal

Work highlights

  • Successfully represented Mexican multinational building materials company Cemex challenging a local real estate company that registered and used the same two inclined red and blue side bars of their famous logo.
  • Successfully represented Dominican dairy company Pasteurizadora Rica cancelling the Masa Rika Ma trade mark registration for flour products.
  • Acted for Vinicola del Norte, owner of whisky DUGGANS, regarding a trade mark claim filed by Diageo Brands, based on the trade mark BUCHANAN’S, and the design of the bottles of each of the products.

JJ Roca & Asociados

JJ Roca & Asociados' IP department has 'a lot of professional standing' and is particularly appreciated in the market for its ability to assist clients throughout the Caribbean region. The main focus of the team is the management of large IP portfolios for companies in the life sciences and technology sectors. Regulation is a particularly strong area, which has been very active for the firm, especially in relation to health permits in the food and beverage industry. Sharin Pablo de Roca and Ana Paula Campusano are the key names to note.

Practice head(s):

Sharin Pablo de Roca; Ana Paula Campusano

Testimonials

‘Very personalised and timely service. Very friendly but at the same time with a lot of professional standing.’

Key clients

The Coca Cola Company

Costa Limited

Laboratorios Pisa

Cryolife

Innovak Global

Western Digital Technologies

Colombina

Egis Pharmaceuticals

Les Laboratoires Servier

Biofarma

Kerry Group

Medtronic

Verifone

DLA Piper

Aerovias del Continente Americano

Work highlights

  • Advises The Coca Cola Company in the management of its IP portfolio throughout the Caribbean region.
  • Advised Laboratorios Pisa in the filing of various legal actions that would allow the proper protection of its IP rights in the Dominican Republic and Costa Rica.
  • Assisted Cryolife in the prosecution and enforcement of its principal brands in the Dominican Republic.

Russin, Vecchi & Heredia Bonetti

A 'professional and ethical team with great knowledge in IP matters', Russin, Vecchi & Heredia Bonetti has a well-established IP department, which covers trade mark protection, regulatory matters, privacy and publicity rights, as well as patents and copyright, both in a non-contentious context and during administrative and judicial procedures. Not only does the team assist companies with their IP rights in the Dominican Republic, but also advises on international matters and in a variety of sectors, especially pharmaceuticals, medical devices, nutrition, cosmetics, consumer goods and technology. Rosa Campillo Celado leads the experienced team, which also includes Mónika Fiallo Paradas.

Practice head(s):

Rosa Campillo Celado

Testimonials

‘Professional and ethical team with great knowledge in IP matters.’

‘Monika Fiallo and Rosa Campillo are lawyers who show great leadership in their teams, being ethical and professionals with a great response capacity in critical moments.’

Key clients

Choice Hotels

Goya Foods

Photoshop del Caribe

Mr. Bodeguitas

Pedidosya.com

Gutis

Cortés Hermanos & Co.

CompraDirecta.do

NovoNordisk

Eli Lilly

Grupo Carval

Work highlights

  • Assisting Photoshop del Caribe in dealing with complaints filed by Adobe as worldwide owner of the trade mark Photoshop.
  • Assisting PedidosYa with its establishment in the country, protection of IP rights, compliance, distribution of regulated goods, data protection matters and adapting its business to the Covid-19 pandemic.
  • Representing Mead Johnson Nutrition and its parent company in relation to a claim brought by the parents of a child whose image has been used on the packaging of a milk formula product.

Castillo y Castillo

Tania Castillo is managing partner at Castillo y Castillo and heads up the firm's IP department. Her focus is on advising multinational organisations on patents, trade marks, copyright, brand and IP portfolio management and exploitation, as well as franchise and licensing agreements. The group is particularly active in the consumer goods sector. Carimer Guzmán concentrates on trade mark prosecution and copyright matters.

Practice head(s):

Tania Castillo; Carimer Guzmán

Testimonials

‘Quick responses and through any communication channel.’

Lucia Castillo and Carimer Guzmán adapt to the internal processes and technology tools that the client uses.’

‘Carimer Guzmán has deep knowledge of the IP field. She is involved in everything in connection with the matters and she is always available and kind to provide the necessary information.’

Key clients

F. Hoffmann-La Roche

Belcorp

Industrias Banilejas

Ruttensperger Lachnit Trossin Gomoll

Citibank

Grupo Bimbo

Clarket Modet Mexico

Danone Company

Banco Popular Dominicano, Banco Multiple

Regimbeua

Work highlights

  • Representing Danone Company for the sanitary registrations of its products, as well as with trade mark prosecution.
  • Representing Belcorp in the prosecution and maintenance of its large trade mark portfolio.
  • Representing the Walt Disney Company in trade mark prosecution and maintenance, as well as infringement matters.

Guzmán Ariza

Holders of well-known trade marks, patents, industrial designs and copyrights are among Guzmán Ariza's main clients in the IP space. The team is particularly noted for its expertise in connection to the registration of IP rights in the Dominican Republic – a service which it usually provides after having assisted with the opening of subsidiaries or joint venture operations in the country. Infringement, unauthorised use, registration disputes, opposition to patent modifications and anti-counterfeiting matters are also among the group's areas of experience. Practice head Fabio Guzmán Saladín is a member of the Dominican Intellectual Property Association and International Association for the Protection of Intellectual Property, among others.

Practice head(s):

Fabio Guzmán Saladín

Key clients

Kikkoman Corporation

Gold Star Tobacco

Sunwing Travel Group

Agrovet

Senninger Irrigation

Rud Starcke

Industria Farmo Química

Moeller Gomez Lince & Cia

Xponentiall Fitness

Inversiones Austral

Masonite Corporation

Productora de Capsulas de Gelatina

Indufar C.I.S.A

DLA Piper

Celltrion

Vision Mundial Internacional (World Vision International)

Sapporo Holdings

Coffee Marks Limited – Jamaica Agricultural Commodities Regulatory Authority

Industrias Laford

GuanZhouXibinTrading

HairTalk

Sensor Development Corporation

TLC Products

Creative Recreation

Jardinova

Work highlights

  • Registered copyrights belonging to World Vision International regarding its strategies and system for child care programme called Criando con Ternura.
  • Assisted Kikkoman to modify the information pertaining to its trade mark registration, presenting the documents and registration of the trade mark worldwide to argue that the trade mark must be protected.
  • Registered seven of Gold Star Tobacco’s trade marks.

Pellerano & Messina

Boutique firm Pellerano & Messina is particularly recognised for its 'good quality of service' in the IP space. The team, which includes highly regarded practice head Ana Messina, Adelin Villalobos and key associate Hemil Rodriguez, is known for registration of trade marks, and also covers compliance, IP due diligence, non-compete and confidentiality agreements and copyright, where it acts for clients in a variety of sectors.

Practice head(s):

Ana Messina

Testimonials

‘Good quality of service, personalised attention, committed professionals.’

‘Standout partners and associates include Ana Messina and Hemil Rodriguez, they are excellent.’

‘An excellent team for the registration and custody of trade marks. Adelin Villalobos is an excellent professional.’

Key clients

Wow Unlimited Media

Deutsche Transnational Trustee Corporation

American & Efird

Calox International

Markatrade

Kenneth Cole Productions

WD-40 Company

Insecticidas Internacionales Dominicana

Herrero & Asociados

Industrias San Miguel

Perfetti Van Melle

Work highlights

  • Assisting Wow Unlimited Media in the defense of a cancellation action brought against its brand Reboot, and advised in relation to the use and commercial exploitation of trade marks within digital platforms.
  • Assisted Deutsche Transnational Trustee Corporation with trade mark prosecution, litigation, protection and maintenance, among other matters.
  • Providing legal advice to American & Efird regarding trade mark infringement, reservation of IP rights, management of IP portfolio and compliance with mandatory provisions in jurisdictions in the Caribbean region.

Pereyra & Asociados

At Pereyra & Asociados, intellectual property is part of the full-service offering that the firm provides to clients. The team's main activity is in assisting corporate clients with the registration of their IP rights in the country, including copyrights, trade marks, logos and symbols, patents and industrial designs. IP due diligence, drafting of documentation and agreements and transfers are also key parts of the team's expertise. Lorena Pereyra heads the practice.

Practice head(s):

Lorena Pereyra

Testimonials

‘The ability of the team is exceptional, as is the quality of the work and the delivery times. Capability for technical and global analysis of the topics covered.’

Key clients

Patrix IP Services

Behrens Laboratories

B. Braun Medical

Winkler Partners

McDonald’s Corporation

Yellow Pages – Caribe Servicios de Información

Mondelēz International

Hanesbrands

Esso República Dominicana

CF Hotels

Centromoda

Hospira – Pfizer

Microtek

Xolver

Work highlights

  • Assisted Patrix IP Services  with the registration and renewal of trade mark Libresse Device before the National Office of Industrial Property in the Dominican Republic.
  • Assisted Behrens Laboratories with a trade mark application for its Gliceramin pharmaceutical product.
  • Acted for Winkler Partners in the registration and renewal of trade mark Giant before the National Office of Industrial Property in the Dominican Republic.

Ulises Cabrera

At Ulises Cabrera Abogados, the IP department recently expanded its offering, which now also includes new technologies, publicity and data protection capabilities. In traditional IP, the team has recently been especially busy advising on matters for healthcare sector clients, representing them before the authorities and organising their product portfolios, allowing importation proceedings and advising on marketing issues. The 'talented, intelligent, dedicated and organised' Magdalena Almonte heads the department, which includes standout associate Aidaluz Pimentel, whose practice concentrates on enforcement and prosecution matters regarding IP portfolios, consumer law, health regulation, competition law, advertising, data protection and new technologies.

Practice head(s):

Magdalena Almonte

Testimonials

‘Agile in their responses, proactive, efficient, professional.’

‘The main elements that differentiates this team are its youth, speed of response, and practicality in solving problems.’

‘Magdalena Almonte is talented, intelligent, dedicated and organised. A leader of a team that has a great future, in an already competitive market.’

‘Quick response times, and excellent quality of service. Magdalena Almonte provides efficient and easy solutions to our clients. Aidaluz Pimentel provides fast and quality answers.’

Key clients

King & Wood Mallesons

Grupo Familia

North Life Pharma

Novo Nordisk

Fresenius Medical Care

Químicos y Lubricantes

Masterwines

Meditron

Premier Electric Japan Corporation

Kellogg Sales Company

Haemonetics

Fundación Juan Bosch

General Mills

Campbells Soup Company

Aditya & Associates

Quirch Foods

Trividia Health

Sunstein Kann Murphy & Timbers

Otis McAllister

Kao Kabushiki Kaisha

Altian Pharma Gruppe

DIDI Chuxing Technology

Bacardi

Shenzhen Woody Vapes Technology

Work highlights

  • Defending Productos Familia regarding the Familia trade mark, in the face of an anti-competitive practice by a relevant competitor.
  • Registering Meditron’s portfolio of distinctive signs, finding interferences against its main trade mark Meditron, for which the team defended it in administrative actions.
  • Engaging in the defense for Premier Electric Corp in an action for annulment initiated against it in bad faith by a Dominican merchant.