Next Generation Partners

Firms To Watch: Intellectual property

Boutique firm Aguirre Noboa Law Firm is particularly active in trade mark prosecution and litigation, with a further emphasis on copyright matters; Carlos Alberto Aguirre and Cristina Guerra are the key points of contact.
Maldonado León Abogados is active in the registration of trade marks, patents and copyrights, with further expertise counselling clients in relation to enforcements and oppositions; Franklin Maldonado and David Maldonado are the key points of contact.
Robalino Law‘s IP practice specialises in the defense of domestic and international clients in connection with trade mark oppositions; associate practice director of the IP, life sciences, and personal data protection practices, Pedro Córdova , is the key contact.

Intellectual property in Ecuador

Bustamante Fabara

The November 2021 formation of Bustamante Fabara has seen its IP team benefits from combined expertise in both contentious and non-contentious matters. The practice group advises the likes of DirectTV, Heineken and Warner Bros Entertainment, and demonstrates a certain emphasis on the filing and cancellation of trade marks, disputes in relation to design rights, and proceedings focused on infringement. The practice is co-led by José Rafael Bustamante Espinosa and Maria Rosa Fabara, who are active in patent prosecution and trade mark opposition cases, respectively. Primary associate support comes from Pablo Fabara Vera, who is noted for his expertise in a range of IP litigation; and Avelina Ponce, who is the key contact for patent related work.

Practice head(s):

José Rafael Bustamante Espinosa; María Rosa Fabara Vera

Key clients

DirecTV

Warner Bros Entertainment

Carolina Herrera

Blenastor

Heineken Ecuador

Grupo Bimbo

Bayer

Fundación Vista Para Todos

Discovery

Gloria

Work highlights

  • Successfully defended Grupo Bimbo in an opposition action filed by a competitor, demonstrating the inadmissibility of the action and bad faith by the counterparty.
  • Represented Heineken Ecuador in a lawsuit alleging a violation of constitutional rights after its trade mark application was denied.
  • Acted for The Conversation in relation to the challenge of a decision to deny the client’s registration of the sign “The Conversation”.

CorralRosales

CorralRosales is noted for its full-service IP offering for domestic and foreign clients, handling both contentious and non-contentious work in relation to patents, trade marks, franchising, copyright and design rights. With a client base focused largely on the pharmaceutical and technology industries, the team acts for the likes of Bayer, AstraZeneca, Samsung and Huawei on a range of patent prosecution and anti-counterfeiting matters. Leadership of the practice is shared between María Cecilia Romoleroux and Francisco Gallegos, who co-head the IP team, and chemical engineer Gabriel Kuri, who leads on patents’ matters. At associate level, senior Eduardo Ríos is noted as a key contact for litigation and anti-counterfeiting matters; the team also benefits from the expertise of Katherine González, whose experience includes time at the Ecuadorian IP office.

Testimonials

‘It is a leading firm in IP matters in Ecuador. The trajectory and experience of the firm has made the firm’s recommendations the most innovative and at the same time efficient for the client.’

‘It is a firm that is committed to the issues of clients, provides assertive and current solutions; is always available for our consultations and in an almost immediate time we have an answer.’

‘They have a team that is always thinking about the needs of the client, reacting actively and professionally.’

‘María Cecilia is very active internationally, present in associations and events, which always keeps her as an international reference, updated on all the news. Francisco is a benchmark in quality of work, customer service, attention to detail.’

‘Personally, I have worked with Francisco Gallegos and Katherine González and the truth is that everything is impeccable! Professionalism and attention.’

‘The CorralRosales team keeps its clients constantly informed of legislative developments, through newsletters or simply by applying them to the specific cases that we present to them.’

‘Their main qualities are reactivity and availability to discuss in person any question that arises. Among the partners that I deal with the most, whose practice I can describe as outstanding is Maria Cecilia Romoleroux and Xavier Rosales.’

‘Maria Cecilia Romoleroux is one of the leaders in IP and stands out for her advice to companies around the world.’

Key clients

UCB Biopharma

Société Des Produits Nestlé

La Fabril

AstraZeneca

IKEA

Pacari

Sanofi

Bayer

Samsung

Huawei Technologies

Work highlights

  • Acted for various luxury brands and electronic consumer goods companies in connection with seizures of counterfeit cosmetics in Ecuador, including an 800,000 item seizure of imitation footwear and accessories, and a 500,000 seizure of cellphone accessories.
  • Representing America Movil in two judicial litigation actions in which courts held their sphere marks to be well-known, thereby conferring extended trade mark protection.
  • Representing Damm in judicial litigation of the multi-territory dispute over rights to “Estrella”.

Falconi Puig Abogados

Falconi Puig Abogados remains a leader in the Ecuador IP ecosystem, with a specialist practice active on the filing of and opposition to trade mark applications, cancellation proceedings, and cross-border matters involving the Andean community. Among other highlights, it recently acted for clients including PepsiCo and Banco de Guayaquil in a series of trade mark oppositions filed against other actors in their respective sectors. Anti-counterfeiting specialist Cecilia Falconi leads the practice alongside Sasha Mandakovic and Carlos Alberto Arroyo, who have nearly 45 years' experience of both transactional and contentious work between them. Further senior-bench depth is provided by Jaime Mantilla, who has a broad IP and litigation practice, and Santiago Mosquera whose practice takes in trade marks, copyright, patents, franchising, utility models, geographical indications and plant variety protection; additionally, Ángeles Puente was promoted to the partnership in May 2022, strengthening the firm’s anti-counterfeiting practice. 

Key clients

Galender Assets

PepsiCo

Banco de Guayaquil

Universal Sweet Industries

Institut National de l’Origine ed de la Qualite (INAO)

Solubles Instantaneos (SICA)

Lexvalor Abogados

Lexvalor Abogados is noted for its broad IP offering, with a team experienced in patents, plant varieties, litigation, trade mark clearance and anti-counterfeiting. Led by Luis Marin, the practice is also active in portfolio management, where it acts for a catalogue of domestic and international clients including Post Foods, Corporación Favorita, Fideval and AT&T. Also noted is associate Emily Moreno, who provides support on prosecution matters and administrative proceedings. Hernán Ponce Aray left the firm in July 2021 to become the Ambassador to Belgium.

Practice head(s):

Luis Marin

Testimonials

‘The team is spectacular.’

‘Luis Marin has served us excellently.’

 

Key clients

Abbot Laboratories

Waterotor Energy Technologies

Santos CMI

Prophar

Post Foods

Soluciones Brio

The DirecTV Group

Industrias Ales

Alpina Productos Alimenticios

Corporación Favorita

Ecopacific Empresa Comercial del Pacifico

Uribe & Schwarzkopf

Grupo Pintulac

Fideval

Freezetone Products

Baldoré

Scotch Whisky Association

Laboratoires Ineldea

Diners Club International

Work highlights

  • Represented Diners Club International in the prosecution of its new Payclub Tag application and the updating of its local portfolio in Ecuador.
  • Represented Prophar regarding the strategy and coordination of multiple enforcement actions, including criminal proceedings.
  • Represented Moet Hennessy in investigations and actions against counterfeit sales of its products in Ecuador.

Meythaler & Zambrano Abogados

With a roster of high-profile international clients, Meythaler & Zambrano Abogados stands out for strong patents capabilities and its focus in the pharmaceuticals sector. The practice also frequently acts on high-profile litigation, dealing with infringement and licensing cases. Acting on these cases and leading the contentious IP practice is José Meythaler, who also has extensive experience dealing with the patent authority. Fellow name partner, Margarita Zambrano, heads the non-contentious practice and has a strong focus on IP licensing. Maricruz Cepeda also co-leads the firm’s IP practice, and is a key contact for litigation.

Practice head(s):

Jose Meythaler Baquero; Margarita Zambrano; Maricruz Cepeda Torres

 

Testimonials

‘They are a great team. We have been working together for almost 24 years.’

‘The difference is that they have solid knowledge about this matter.’

Work highlights

    Pérez Bustamante & Ponce

    Pérez Bustamante & Ponce’s IP practice focuses on the handling of trade mark issues for a roster of high-profile international clients, undertaking registrations, oppositions and cancellation orders, among other matters. In addition, the firm regularly acts on disputes concerning copyright, trade name and patent matters. Francisco Pérez leads the team and has  over 25 years’ experience in portfolio management and IP litigation. Other key practice figures include, associate Rafael González, who specialises on infringement litigation regarding copyright and trade marks; and Alysa Arcos (promoted to senior in April 2022) who is noted for her counselling and management of portfolios in both national and international contexts. Futher reinforcing the practice’s portfolio management capabilities is associate Adriana Campaña, who joined from the Ecuadorian Institute of Intellectual Property in September 2021.

    Practice head(s):

    Francisco Pérez Gangotena

    Testimonials

    ‘The team gives practical, swift, and good advice.’

    ‘We have mainly worked with Alysa Arcos as our contact. She is very responsive and we feel confident to rely upon her advice. The same applies to the rest of the team.’

    ‘The practice is good, it is within the quality standards expected in a high-level law firm in Ecuador. They are agile, dedicated and pay good attention to their clients’ matters. They have a good clientele that has large volumes of brands that are processed in our country.’

    ‘I highlight Francisco Perez, for his human quality, his responsibility and for his leadership and decision-making capacity.’

    ‘ They offer responsibility in quick and concise responses, as well as the ability to resolve and get involved with the client in making decisions.’

    ‘Francisco Pérez provides an excellent service to his clients, he has knowledge of the operation of the law and is well versed in IP litigation issues.’

    ‘They provide a very good service.’

    ‘They are close and very friendly.’

    Key clients

    Amazon Technologies

    Ford Motor Company

    Bonapharm

    Cerveceria Nacional

    Corporativo Int. Mexicano

    Rappi

    Jaguar Land Rover Limited

    Anheuser-Busch

    Jafer Enterprises R&D

    Yanbal

    American Airlines

    Work highlights

    • Acted on behalf of Munich SL with respect to the filing of an opposition against an imitation trade mark application in International Class 25.  
    • Advised Cratel in relation to the third season of MasterChef, speaking with each of the 23 final participants about the implications of their agreements regarding the reality show, including their performances and duties.    
    • Acted for Beverage Brand & Patents Company BBPC in connection with two trade mark applications and a cancellation action relating to a Colombian trade mark in International Class 32.

    Romero Corral Abogados

    Boutique firm Romero Corral Abogados specializes in trade mark issues, with the management of portfolios for domestic and international clients and the filing of cancellation actions constituting key areas of work for the firm. Leadership of the team is shared between trade mark and privacy expert Margarita Romero and competition specialist Alfredo Corral; while Xavier Gómez and Samantha Maldonado head the patents and contracts, and litigation and regulatory practices, respectively. Associate Nathaly Castillo heads up the trade marks practice which undertakes searches, applications, publications and resolutions, registration certificates, renewal applications, change of name applications and assignment applications.

    Practice head(s):

    Margarita Romero; Alfredo Corral; Xavier Gómez; Samantha Maldonado

    Testimonials

    ‘Timely response, always very prompt. Competitive rates, but it should be noted that Ecuador has one of the highest rates in the region.’

    ‘Prompt response from Margarita Corral and Nathaly Castillo.’

    ‘Timely responses to my queries. Clear reports of progress in my trademark registrations.’

    ‘Clarity and promptness in responding to communications.’

     

    Key clients

    A Inversiones

    AB-Biotics

    Acun Medya Korlatolt Felelossegu Tarsasag

    Antonio Tarazona

    Asesora Assitant Bussiness Setecafinity

    Australis Mar

    Benchmark Genetics

    Costa Crociere

    Exlabesa Building Systems

    Nutrabiotics

    Poki

    Ruiz Oños Pharma

    Stradivarius España

    Tobar ZVS

    The intellectual property practice at Tobar ZVS is characterised by its broad service offering, acting for clients on patent, trade mark, design rights and copyright matters in the context of both the national market and the Andean community framework. The ‘knowledgeableAlfonso Rivera leads the team – his practice is focused on anti-piracy work, while associates Mikaela Teràn and Hipatia Donoso specialise in IP infringements and portfolio management.

    Practice head(s):

    Alfonso Rivera

    Testimonials

    ‘The Tovar ZVS office always denotes seriousness and knowledge in the issues that are consulted.’

    The team is quick and precise in its responses.’

    ‘The amounts invoiced are clear and correspond to those initially contracted.’

    ‘Its treatment is affable and close, without losing the seriousness and responsibility that each case deserves.’

    ‘You always have the security of receiving the best advice, with clear and objective answers.’

    ‘Alfonso Rivera is an excellent lawyer, knowledgeable about the subject. He is a kind person, who conveys confidence and security in the proper handling of each issue.’

    ‘Mikaela Tehrán is efficient and ready to answer and resolve any doubts that may arise.’

    ‘The entire team is always willing to serve, to clarify doubts and to provide the required information at the necessary time.’

    Work highlights

    • Advised Consumer Products on the filing of three border measures resulting in the seizure of counterfeit goods.
    • Advised several Asian automotive manufacturers on the design and  registration of new models.
    • Acted for a microbiology and agricultural company on the prosecution of 27 trade marks.

    Dentons Paz Horowitz

    The team at Dentons Paz Horowitz handles a variety of IP work, with a niche focus on tactile trade marks, utility-model patents and sound mark registrations. Led by Byron Robayo Arroyo, who has experience in trade dress and patent matters, the team is also active in routine trade mark and copyright work, and has  an active role in enforcement actions and trade mark registrations. Bruce Horowitz, who is an expert in international trade marks and geographical indications, is also noted; as is senior associate Verónica Chiriboga, who supports the team in trade mark prosecution and anti-counterfeit matters.

    Practice head(s):

    Byron Robayo

    Testimonials

    ‘The team has a deep knowledge of the subject, handles all the variables and practices that intellectual property has. They proactively suggest new alternatives.’

    ‘A team that is at the forefront of practices and trends with a business focus, going beyond the legal and technical, and maintaining a strategic vision.’

    ‘The team is adequately amalgamated and coordinated for the management of different cases entrusted to them, which enables communication with the client to be assertive and functional, obtaining the desired results and always feeling protected by its efficient and up-to-date advice on the subject.’

    ‘The lawyers, especially Byron Robayo and Verónica Chiriboga, stand out for their up-to-date knowledge of the subject that allows them to fully understand the needs of their clients and provide the best advice. In addition, they always have good recommendations for handling cases or for new initiatives to undertake.’

    ‘Byron Robayo provides domain in knowledge, as well as personalized and timely attention.’ 

    ‘The team is well structured because they combine the legal and technical knowledge. They have experience and administrative knowledge that allows them to prepare a more appropriate defense for each case.’ 

    ‘Byron Robayo as a partner and head of the area is an excellent leader. Despite being a young lawyer, he has extensive experience in the subject, which has allowed him to innovate and handle cutting-edge cases. Has achieved resolutions.’ 

    ‘For me it was a pleasure to have worked with Veronica Chiriboga, not only because she was very professional in her work but also because she showed great empathy with my needs and an extraordinary human quality. Verónica made me feel very supported at all times in the process.’

    Key clients

    Orca Credit Holding

    Kruger Corporation

    Sumelab

    Pivaltec

    Janckel Paul Inventions

    Dentons

    Envapress

    Work highlights

    • Advised Client Orca Credit Holding on an enforcement action and a trade mark registration.
    • Advised Pivaltec with a patent process, including an analysis of the draft of a utility-model patent, and a response to observations from the authorities.
    • Provided Envapress with advice on a competitive intelligence analysis to develop still mineralized water.

    Julio C Guerrero B Estudio Jurídico de Propiedad Intelectual

    Julio C Guerrero B Estudio Jurídico de Propiedad Intelectual, which is famed for registering the country’s first ever patent, focuses on trade mark, industrial design and copyright matters for a range of domestic and foreign clients. Among recent highlights, the firm acted for Industrias Alimenticias Ecuatorianas in litigation concerning a cancellation action relating to the “Bizcoletas” mark. IP all-rounder, manging partner Johana Aguirre , leads the seven-strong practice; key support is provided by senior associate Christian Bandre , who is active in litigation.

    Practice head(s):

    Johana Aguirre

    Key clients

    Rolex

    Ferrari

    Capcom

    Abbvie

    Panasonic

    Shimano

    Yamaha

    Bridgestone

    Victorinox

    Siemens Aktiengesellschaft

    Seiko Holdings Kabushiki Kaisha

    Viña Concha y Toro

    International House of Pancakes

    Pink Floyd (1987) Limited

    Work highlights

    • Successfully defended Sangsin Brake in litigation involving a damages claim for trade mark infringement.
    • Represented Reckitt Benckiser in a case involving administrative litigation and enforcement, including preliminary injunctions and the take-down of a website.
    • Represented Bath & Body Works Brand Management in administrative litigation using elements of copyright to prevent a third party registering marks imitating its product labels.

    Quevedo & Ponce

    Daniela Román Aguinaga  and Juan Esteban Ponce Villacís co-lead the IP practice at Quevedo & Ponce, which handles a broad range of IP work for high-profile international clients and is particularly active in the food and pharmaceutical industries. With over 30 years; experience, Ernesto Guarderas is the name to note for patents work; while Alejandro Ponce and Alfredo Gallegos focus on IP issues with an overlap with corporate law.

    Practice head(s):

    Daniela Román Aguinaga; Juan Esteban Ponce