Angeles Pons specialises in IP, with some work in the corporate and regulatory fields. The firm handles international trademark portfolios for clients from a range of sectors, particularly large corporations based in Cuba, which the firm represents in trademark prosecution and litigation.
Intellectual property in Dominican Republic
Headrick Rizik Alvarez & Fernández
Mary Fernández leads and associate and deputy director Gabriella Villanueva assists with the majority of Headrick Rizik Alvarez & Fernández‘s IP work, collaborating to advise on trademark applications and portfolios for consumer goods clients, with the firm overseeing Grupo SID’s 1,900 trademarks. The pharmaceuticals sector is another key area, with the team advising Johnson & Johnson on its IP portfolio, handling 2,100 trademarks, and representing ORGANON in a patent protection case before the Supreme Court, aided by associate Luciano Jiménez. The firm both prosecutes and defends in trademark litigation, working on a dispute to pursue the annulment of a registration for a tourism client as well as defending technology and insurance clients against oppositions to their applications. Copyright matters are also covered, with the firm bringing lawsuits against illegal copyright collection agencies. Associate Melissa Marrero worked on the IP aspects of an acquisition and on trademark applications for a children’s entertainment client. Senior associate Miguelina Figueroa rejoined the firm after ten years as legal adviser to the government, becoming Headrick’s director of IP, life sciences and healthcare, while former practice co-head Lilly Acevedo joined the District Attorney Office.
Mary Fernández-Rodríguez; Miguelina Figueroa; Gabriella Villanueva Paulino
‘Headrick Rizik Alvarez & Fernández Law Firm does a fantastic job adapting to the client’s needs and particular situation. They are attentive to our specific questions, responsive, and extremely knowledgeable. They are also well connected to the greater Dominican community and able to seek out resources as needed.’
‘Everyone we have worked with at the firm has been extremely kind and service oriented. They always work to understand our needs and situation so they can respond accordingly. I have been treated with respect by all associates at the firm and am grateful for their attention to detail. Specifically in reference to intellectual property and life sciences, I have had the pleasure of working with Miguelina Figueroa, Gabriela Villanueva, Melissa Marrero, Kyra Duquela and Mary Hernandez. All the mentioned associates have provided excellent service.’
DR Government [Vice President of The Dominican Republic and Health Cabinet for Covid-19]
Johnson & Johnson and Affiliates
Grupo Sid (Mercasid, Induveca, Agua Crystal, among others)
Mujeres Por La Igualdad De Derechos
Merck & Co
Miniño Abogados oversees the trademark portfolios for a variety of multinationals, including Starbucks, Netflix, Mondelez and Philip Morris, and on the patents side it advises high-profile pharmaceutical clients such as Bayer, Gilead, AstraZeneca and Daewoo. As well as advising foreign clients, the firm’s cross-border work includes filing for brand protection for automotive client Rivian Group in 20 Caribbean jurisdictions. Urko Ochoa heads the practice, which often advises the food and beverage sector on oppositions against trademark applications, such as acting for Red Bull. The team sometimes opts for alternative methods of dispute resolution, such as creating an enforcement strategy to avoid a third-party registration of a well-known trademark, while Orietta Blanco and associate and head of trademark and prosecution Pamela Hernandez negotiated a settlement over the cancellation of a trademark application.
Meta Platforms (former Facebook)
E. & J. Gallo Winery
The DIRECTV Group
Western Digital Technologies
- Represented Grupo Solid in reconsideration appeals against oppositions to trademark applications for CORONA in the industrial paints sector.
- Continued assistance for ThyssenKrupp AG, Phillip Morris, Red Bull, Starbucks, Western Digital, Netflix and Mondelez in protecting their trademark portfolios in the Caribbean, which includes strategy, searches, prosecution, maintenance and litigation.
- Advised Grupo Diseño Republica, a digital marketing firm, on copyright infringement claims made regarding a comedy routine used in a commercial.
Troncoso Leroux takes on a wealth of trademark infringement work for clothing brands, often involving seizure of imported counterfeit goods and criminal complaints for well-known clients such as Puma, Lacoste, Gucci and Saint Laurent, frequently assisted by associate Daniel Riley. The firm also files oppositions against trademark applications and cancellations of trademark registrations for this sector. Other sectors of experience are food and beverage and entertainment, with Vanessa Cabrera resolving a trademark infringement for Viacom. Notably, practice co-head Maria Del Pilar Troncoso and senior associate Maxiell Herrera have had success in protecting brands despite the trademark not being registered in the Dominican Republic; for example, they gained the withdrawal of an application for the trademark of a character’s name from The Lord of the Rings, working for the film’s production company. Pedro Troncoso co-heads the department, bringing corporate experience.
Maria del Pilar Troncoso; Pedro Troncoso
‘The team is friendly, efficient, and very attentive to detail. They are always very willing to answer questions and contact the authorities when necessary.’
‘María del Pilar Troncoso is a lawyer with a lot of experience and knowledge related to industrial property legislation, and is always available to attend to even the most urgent matters.’
Eli Lilly and Company
Mayor League Baseball
Futbol Club Barcelona
Central Romana Corporation
SAS Jean Cassegran (LongChamp)
- Executed measures nationwide in the Dominican Republic market for Ron Barcelo, to prevent selling of goods that were being illegally identified with the Barcelo trademark.
- Assisted Bayer AG in the filing of an opposition action against the trademark application for Aspitab Cardiologica, filed by a local drug manufacturer, for being confusingly similar with its famous trademark Aspirina.
- Aided Viacom International in a criminal complaint before the District Attorney Office to stop counterfeiting goods entering the market.
Bufete Lugo Lovatón
Zaida Lugo and José Santana co-lead all IP matters at Bufete Lugo Lovatón, which is particularly active in the food and beverage sector, often defending clients against claims of trademark infringement or unfair competition. Head of litigation and corporate Héctor Collado assists with trademark and copyright infringement matters in the clothing sector, such as the firm’s trademark enforcement work for Chanel. The firm also handles advertising regulations, working with ADECC on the drafting of a new advertising law and representing an advertising client in a rare image use claim in a local court.
Zaida Lugo; José Santana; Hector Collado
Asociación Dominicana de Empresas De Comunicación Comercial
Knijff Trademark Attorneys
Seed Intellectual Property Law Group
Genomma Lab Internacional
Vinicola del Norte
Keurig Dr Pepper
Payless Shoesource Worldwide
Arco Patent & Trademark Attorneys
Fieldfisher (March & Asociados)
Jeunesse Global Holdings
Wan Hui Da Law Firm
Cervieri Monsuarez & Asoc
- Successfully represented Vinicola del Norte, owner of whisky company Duggans, regarding a trademark claim filed by Diageo Brands, based on their trademark Buchanan’s, and the design of the bottles of each of the products, as well as an unfair competition claim based on the same grounds.
- Successfully enforced trademark rights locally on behalf of Bestway Inflatables & Material Corporation, against two trademark infringers who unlawfully obtained a registration of the mark Bestway.
- Successfully represented Amstel Brouwerij, owner of beer Amstel Ultra, regarding two trademark claims filed by Anheuser-Busch, based on their trademark Michelob Ultra, and their label designs of the products.
JJ Roca & Asociados
JJ Roca & Asociados handles IP work for a variety of sectors, such as chemicals, entertainment, technology and education. The firm oversees portfolios for the food and beverage sector, notably taking on Coca-Cola’s trademark portfolio and advising it on oppositions filed by Monster against Coca Cola Energy brand registrations. IP head Sharin Pablo De Roca and IP director Ana Paula Campusano co-lead on many of the firm’s matters. Roca specialises in life sciences and food and beverage work, such as managing pharmaceutical portfolios and negotiating with the Trademark Office over objections to medical technology trademarks. Campusano covers trademark registrations and renewals, such as for Guinness World Records, and often handles disputes out of court, such as negotiating with third parties to withdraw an application or transfer a brand in order to gain trademark registrations for the client.
Sharin Pablo de Roca; Ana Paula Campusano
‘The practice is quite agile, responds quickly and is always very attentive in service.’
‘Sharin Pablo and Ana Paula Campusano always answer very kindly, they know the underlying law well and their explanations are technical enough without being difficult to understand, which greatly facilitates the understanding of the procedures and processes.’
The Coca-Cola Comany
Live Nation Entertainment
Western Digital Technologies
Biofarma/Les Laboratoires Servier
Mckee Foods Kingman
Guinness World Records
- Advises The Coca Cola Company in the management of its entire IP portfolio throughout the Caribbean region, which comprises 25 different jurisdictions.
- Advises IPC Industrial in protecting its IP rights against counterfeiting of its products by a former authorised distributor.
- Advises and represents Les Laboratoire Servier in an opposition action that resulted in a rapprochement from the counterparty which could conclude with the signing of a coexistence agreement.
Pellerano & Messina
Pellerano & Messina provides a breadth of services for its clients, regularly managing IP portfolios through brand development, bringing actions against rights infringement and representing clients in litigation against cancellation actions; for example, the firm defended a consumer goods client against the cancellation of its flagship trademarks. With cross-border experience, such as bringing trademark registration annulment actions for JJ Martin Group in El Salvador and Paraguay, the firm also provides local assistance for foreign IP services companies and law firms; it oversees the IP portfolios in the Dominican Republic for German IP services company Brandstock and Spanish/South American law firm H&A, while assisting with registration of IP rights in the Caribbean region for Panamian law firm Alfaro, Ferrer & Ramírez. Ana Messina leads all matters, aided by associates Adelin Villalobos, patents specialist Hemil Rodriguez and Carlos Tapia. Sectors of expertise include consumer goods, where the firm takes on trademark enforcement, and life sciences, where the firm is representing a client before the Supreme Court regarding a cancellation action.
JJ Martin Group
Alfaro, Ferrer & Ramirez
Deutsche Transnational Trustee Corporation, / Empresas Polar
Calox International / Markatrade
Insecticidas Internacionales Dominicana / Agroser
Herrero & Asociados
Industrias San Miguel
Perfetti Van Melle
- Litigated and prevented the cancellation of the trademarks ‘Cervezas Polar’ and ‘Maltin Polar’, which are flagship trademarks and brands for Deutsche Transnational Trustee Corporation, / Empresas Polar and their oldest brands in the Latin-American market, including the Dominican Republic.
- Hired as lead counsel to coordinate the prosecution and enforcement of Viafirma (Avansi)’s trademark portfolio for 12 Latin American jurisdictions, a key tenet in the client’s ambitious regional expansion plans.
- Represented Calox International / Markatrade – a highly successful Venezuelan company – before the Supreme Court of the Dominican Republic in relation to a successful cancellation action brought on behalf of Markatrade, which was challenged by the affected party.
Russin, Vecchi & Heredia Bonetti
Russin, Vecchi & Heredia Bonetti assists clients with litigation in administrative courts, such as filing oppositions against trademark applications before the National Trademark Office, all the way up to the Constitutional Court, before which the firm is representing a client in an image use claim. Practice head Rosa Campillo Celado and Mónika Fiallo Paradas act for a Dominican photographic services company in a dispute with Adobe regarding the ‘Photoshop’ trademark, representing the client before the National Trademark Office. The firm oversees trademark protection, publicity rights and copyright issues for sectors including pharmaceuticals, nutrition and consumer goods.
Rosa Campillo Celado
‘It is a comprehensive practice that follows the needs of the client with a prompt response.’
‘The people are ethical and professional who provide continuous help in legal challenges with the highest standards of quality of service.’
‘The team is well informed of procedures and follows them diligently.’
‘Personalised treatment. Professional.’
‘This team is up to date with the most recent provisions of the rules, regulations and laws; and keeps us informed both on matters that concern us directly and on other matters that could be of interest to us, or simply to keep us informed with national and international events, anticipating how it could positively or negatively affect our operations. We continue to believe that we are in very good hands.’
‘The vast experience accumulated by the lead partners and the various cases that they have had to handle as a team inspire us to seek their advice and entrust them with our legal matters in commercial, civil and labour matters. It is worth highlighting the performance and good dispositions of Rosa Campillo and Monika Fiallo.’
‘I think they are very professional in their area. In general I am satisfied with their work and professional dedication’
‘Monika Fiallo and Rosa Campillo are lawyers with extensive experience in intellectual property in the Dominican Republic.’
Bmj Industries Tobacco Limited
Mead Jhonson Nutrition Dominicana And Mead Johnson
Castillo y Castillo
Castillo y Castillo‘s IP work focuses strongly on the consumer goods market, with managing partner Luis Pimentel and associate and head of IP Carimer Guzmán covering prosecution and maintenance of trademark portfolios for many clients from the area, including Danone and Rolex. For Danone and additional consumer goods client Blue Diamond, the firm also assists with sanitary registrations of products, and for Rolex and multiple other clients the firm also handles enforcement actions against trademarks at the Trademark Office. Other sectors covered by the firm include finance, such as overseeing the trademarks for Banco Popular Dominicano, as well as pharmaceuticals and entertainment.
Luis Pimentel; Carimer Guzmán
‘Castillo & Castillo is a team that provides excellent service, handling the different issues that are referred to them with great skill and capacity. We have worked on trademark issues with them and have always received a cordial, accurate response and a good follow-up to our cases. We consider that their services stand out in the Dominican Republic. We consider that they have good technological support to provide a good service.’
‘We deal with Carimer Guzmán, who is a very capable person and leader within the firm, she is on top of all matters and keeps us informed of all the details we need to know. In addition to being very proactive, she is very intelligent and handles issues very skillfully.’
‘They respond quickly to legal requirements: Carimer Guzman, Laura Nazario.’
Industrias Banilejas (Induban)
Centro Cuesta Nacional
Banco Popular Dominicano
F. Hoffmann-La Roche
- Representing Induban in the prosecution and maintenance of its large trademark portfolio.
- Representing Belcorp in the prosecution and maintenance of its large trademark portfolio, including the recordal of an assignment of all its trademark portfolio in the DR.
- Representing Banco Popular Dominicano in the prosecution and maintenance of its large trademark portfolio and handling a number of enforcement actions against several marks at the Trademark Office.
Guzmán Ariza‘s main body of work is registration of trademarks, as well as amending previous registrations due to changes of law. A highlight is the firm’s work with innovative 3D marks to avoid counterfeit goods, which it has registered successfully for oil and gas giant Gazprom and manufacturer Senninger Irrigation. Fabio J Guzmán-Saladín oversees all of the firm’s IP work, while senior counsel Leandro Corral has grown the firm’s client list significantly over the last year. The pair work on trademark registrations and renewals particularly for the manufacturing sector, but also advise food and beverage, tourism and pharmaceutical clients on matters such as criminal complaints of counterfeit products and registration of designs and products. The firm also advises Ecuador IP firm Moeller Gomez Lince & Cia on trademark registrations in the Dominican Republic for its clients.
Leandro Corral; Fabio Guzmán Saladín
Gold Star Tobacco
Sunwing Travel Group
T & Beer
Rud Starcke GmbH & Co
Industria Farmo Química
Moeller Gomez Lince & Cia
René Schönefeld Industries
Productora de Capsulas de Gelatina-PROCAPS
Coffee Marks Limited
Rocky Brands/Creative Recreation
Jidam IP Law Firm
Estudio Bazan Martos
McKee, Voorhees & Sease
Productos Alimenticios Santillana
Asamura Patent Office
Moeller, Gomez, Lince & Cia.
Tilleke & Gibbins
Berenato & White
The Concept Law Group
Guang Zhou Xibin Trading Co
- Assisted Kikkoman in modifying the information pertaining to the trademark registration regarding its soy sauce, presenting the documents and registration of the trademark worldwide to argue that the trademark must be protected, and successfully completing the registration confirmation.
- Hired by Gold Star Tobacco to file a criminal complaint against an individual illegally distributing and selling counterfeit products of Gold Star Charcoal in violation of the trademark rights of the company.
- Assisting Senninger since 2020 with the registry of their Wobbler patents, trademarks and trade names, and also handled the cancellation process of an existing registry of Senninger Irrigation’s trade name which was registered by a non-related third party.
OMG‘s IP practice is boosted by IP specialist and consultant Angeannette Tejeda, who has experience of IP law in the Andean Community. Department head Luis Eduardo Aquino often negotiates between foreign manufacturers and local distributors regarding IP rights; for example, he acted for distributor AG Mercantil in negotiations with Philips over exclusivity to distribute AVENT products. In turn, he advised Brazilian manufacturer Ourofino Saúde Animal on assignment of sanitary registrations during the termination of its contract with a distributor. The firm’s cross-border work also covers registrations of assets in multiple jurisdictions.
Luis Eduardo Aquino
‘They are specialists in media law.’
‘Deep knowledge in their fields.’
Aid for Life International
Ourofino Sáude Animal
Asistencia y Gestión Logística
Nexus Caribbean Technologies
- Led a negotiation process with Philips on behalf of client AG Mercantil regarding proposed new conditions for the distribution of Avent products in the Dominican Republic.
- Assisting AFL, a not-for-profit, in the incorporation of Aid for Life República Dominicana as the entity that will channel its efforts towards generating positive social impacts for vulnerable people in the Dominican Republic.
- Assisting Ourofino Saúde Animal in the strategy, design and implementation of contract termination with a local distributor while mitigating its effects.
Pereyra & Asociados
Lorena Pereyra heads the IP practice at Pereyra & Asociados, which handles registrations mostly of trademarks, but also trade names and logos, in the Dominican Republic for international clients. The firm oversaw a trademark application for Venezuelan company Behrens Laboratories, which involved a nullity application for a third-party registration of the brand. Pharmaceuticals is a predominant sector for the firm, as well as technology. Work also includes renewal of trademarks and trade names, oppositions of registrations and transfer of IP rights.
Patrix IP Services
Winkler Partners (Giant Manufacturing)
Yellow Pages – Caribe Servicios de Información
Mondelez International (Cadbury-Kraft)
Esso República Dominicana
CF Hotels (Marriott)
Hospira – Pfizer
Essity Hygiene and Health Aktiebolag
Fiduciaria Duit Capital
- Trademark application for Behrens Laboratories, regarding the Gliceramin pharmaceutical product – the brand was illegally registered by a third party and the firm is working towards a nullity opposition and revocation of the brand to proceed with the registration.
Troncoso y Cáceres
Troncoso y Cáceres frequently works on registration of trademarks, including overcoming denials by the Trademark Office, for international clients such as Pfizer, ExxonMobil and Vans. UPS is also a noted client, with the firm acting for it in filing oppositions against trademark applications, led by Ana Isabel Cáceres Matos and Jesús Troncoso and assisted by senior associate Claudia Vargas Matos, who specialises in IP. Patents work is a key area of the firm’s practice, with global law firms from the US, Argentina and Italy instructing the firm to provide local support on pharmaceutical and agricultural chemical patent applications. The team also acts for clients directly in this area, such as working on patents for US client Arena Pharmaceuticals and Swiss textiles company Huntsman Advanced Materials.
Ana Isabel Cáceres; Jesús Troncoso
‘Whenever we need them, we receive prompt and friendly service.’
‘People are always polite and quick to answer our emails, especially Paola Figueroa Rosario, who demonstrates extensive knowledge of IP.’
Henkel Ag & Co
Henkel Ag & Co
Fross Zelnick Lehrman & Zissu
Societe Louis Vuitton Services
NTD Patent & Trademark
Dannemann Siemsen Bigler & Ipanema Moreira
NATURA & CO
Cowan, Liebowitz & Latman
- Advised UPS in filing an opposition against the registration of trademark OPS Pack.
- Advised Pfizer on the registration of trademark Ngenla in the Dominican Republic.
Ulises Cabrera acts for clients such as Rolex in filing opposition actions against others’ trademark applications in order to protect their IP. Protective strategies also include advice on unauthorised use of a trademark for GlaxoSmithKline, filing complaints for damage to the reputation of a trademark and defending clients against annulment actions for non-use. Patents and industrial designs for technology clients are also covered, with practice head Magdalena Almonte and associate Aidaluz Pimentel providing day-to-day advice to Xiaomi on its portfolio of distinctive signs and filing a patent application for Derrick Corporation, as well as the IP aspects of due diligence as part of an acquisition.
‘The firm has the unusual ability to manage legal affairs throughout the Caribbean, which is extremely difficult to find.’
‘The team is responsive, helpful and has a great knowledge of its area. They provide quick and efficient solutions.’
‘Magdalena Almonte is exceptional; she is a great lawyer, she has extensive knowledge, and she always provides business-oriented approach. We very much look forward to working together with her in the future!’
‘Excellent solutions. Follow-up on issues. Good prices. Ability to find solutions to complicated problems.’
‘Magdalena Almonte: a brilliant lawyer, with deep knowledge of different matters, excellent handling of the client.’
‘The team has deep knowledge of intellectual property matters, good management of trademark portfolios and offers comprehensive advice to its clients.’
‘The human quality of the firm’s lawyers makes them stand out from other competitors, likewise their empathy with clients.’
Novo Nordisk A/S
Químicos y Lubricantes, S.A.
Zhongce Rubber Group Company
Super de Alimentos
Shenzhen Woody Vapes Technology
Premier Electric Japan Corporation
Fundación Juan Bosch
Campbells Soup Company
DIDI Chuxing Technology
S.D. Sight Diagnostics
Productos Alimenticios Bocadeli
- Advised Delivery Hero on acquisition of verticals of Hugo Technologies.
- Represented Rolex in an opposition appeal against the Yarolex trademark application, seeking to declare the Rolex trademark as well known in the Dominican Republic.
- Represented Inversiones y Negocios on a complaint before the Department of Investigations of Crimes and High Technology Crimes for unfair competition due to the damage to the reputation of La Garza, the leading rice trademark in the Dominican Republic, due to the dissemination of false news by digital media.