Intellectual property in Ecuador

Bustamante Fabara

Bustamante & Bustamante is highly experienced in patent and trade mark work, handling a wide range of prosecution, registration and enforcement matters in this space. However, the firm is particularly notable for its contentious work, acting in unfair competition cases, opposing trade mark registrations and initiating trade mark cancellation proceedings. The team is led by José Rafael Bustamante Espinosa, who is the key contact for contentious matters, and Carmen Robayo, who focuses on trade marks and on regulatory advice. On the patent front, associate Avelina Ponce takes a leading role, while Spanish-qualified associate Matilde Garrigós is another name to note. Since publication, the firm has announced its merger with fellow local firm Fabara & Compañía to become Bustamante Fabara, effective as of November 2021.

Practice head(s):

José Rafael Bustamante Espinosa; Carmen Robayo

CorralRosales

CorralRosales provides a full service in IP matters, handling patents, trade marks, franchising, copyright and design right issues, both contentious and non-contentious, for several leading foreign clients as well as large domestic players. The firm is particularly active in the pharmaceutical space, with a client list that includes Bayer, AstraZeneca and Sanofi, among others, advising both on patents and on the prosecution of counterfeiters. Maria Cecilia Romoleroux leads the practice alongside Francisco Gallegos, while Gabriel Kuri is a key contact for patent work in particular. The firm is also home to lawyers with government-side experience in the form of associates Katherine González and Andrea Miño, the latter of whom joined in October 2020; both previously held roles at the Ecuadorian IP Office. Another key contact is senior associate Eduardo Rios, who is particularly noted for his strength in anti-counterfeiting cases.

Practice head(s):

Maria Cecilia Romoleroux; Francisco Gallegos

Testimonials

‘They provide a full service covering various areas of law and are masters of their field.’

‘They are very clear and get straight to the point, and do not waste time with digressions.’

‘The CorralRosales team is excellent.’

‘Maria Cecilia Romoleroux is a super star. I would recommend her without hesitation.’

‘It is a very organised team. All the members are up to date on the cases, which shows great teamwork.’

‘Francisco Gallegos stands out for his efficiency, prompt responses, knowledge and skill in this area.’

Key clients

UCB Biopharma

Société Des Produits Nestlé

La Fabril

AstraZeneca

IKEA

Pacari

Sanofi

Bayer

Samsung

Huawei Technologies

Work highlights

  • Advised major technology sector clients including Samsung and Huawei on the seizure of counterfeit products.
  • Acted for Pfizer in the prosecution of individuals involved in the counterfeiting of pharmaceuticals, in particular antibiotics with the client’s Terramicina mark.
  • Acted for Crocs in the seizure of footwear infringing its 3D mark.

Falconi Puig Abogados

Falconi Puig Abogados remains one of the most active names in Ecuador’s IP space, receiving instructions from clients in a wide range of sectors including retail, food and beverages, banking and pharmaceuticals. The firm is particularly active in the trade mark space, advising on the filing of and opposition to trade mark applications, cancellation proceedings, and cross-border work involving other members of the Andean Community.  The firm also acts in more unusual cases, such as those involving design rights, piracy and geographical indications. The practice is jointly led by Cecilia Falconi, who is particularly active in the anti-counterfeiting field, and Sasha Mandakovic and Carlos Alberto Arroyo del Río, who handle both transactional and contentious work. Santiago Mosquera is also noted for his advice on a wide range of IP matters. Since publication, the firm has further strengthened its anti-counterfeiting practice with the promotion of Ángeles Puente to the partnership – effective as of May 2022.

Practice head(s):

Cecilia Falconi; Sasha Mandakovic; Carlos Alberto Arroyo del Rio

Testimonials

‘This team’s strong point is that it is made up of a group of lawyers with diverse skills and extensive knowledge in each area of IP law that they address.’

‘Cecilia Falconi, Sasha Mandakovic and Carlos Alberto Arroyo are completely outstanding.’

‘A specialist firm that provides a good service in Ecuador.’

‘Cecilia Falconi is a highly experienced lawyer who offers clients personalised advice.’

‘They have extensive knowledge of the subject and are always at the disposal of their clients to answer any questions, at any time.’

‘They are people with whom we have worked for many years, which makes us feel as if we are working not only with friends, but with family. They are expert professionals in their field.’

‘The team is highly skilled in all areas of intellectual property law. In a market that it is usually limited to prosecution specialists, FPA is characterised by its coverage of all areas of the law around intangible assets, from the simplest registration of a trade mark to advice on patent infringement or the IP aspects of advertising regulation.’

‘Carlos Arroyo and Sasha Mandakovic are both extremely meticulous and focused on the details of the matter.’

Key clients

Zuleta y Anexas

Multilaboratorios Medplus

7-Eleven

Stokely-Van Camo

Galender Assets

Banco Del Pacífico

PepsiCo

Procter & Gamble

Carvagu

Anaerobicos

Work highlights

  • Advised 7-Eleven on a cease and desist letter to a convenience store with the name 7Go Seven and a logo with similarities to a well-known trade mark of the client’s.
  • Advised Stokely-Van Camp, a subsidiary of PepsiCo, on the opposition to trade marks filed by Ajegroup.
  • Advised Zuleta y Anexas on a trade mark audit to determine which of its brands and devices should be protected, and filed seven trade mark applications.

Fabara & Compañía

Maria Rosa Fabara Vera heads the IP team at Fabara & Compañía, which focuses primarily on trade marks and patents, as well as on unfair competition matters, an area where it has seen an increasing amount of recent work, often acting alongside the competition law team. Pablo Fabara Vera is the key contact for IP litigation, with recent work including trade mark infringements, design right disputes and trade mark opposition cases. Since publication, the firm has announced a tie-up with fellow local heavyweight, Bustamante & Bustamante, becoming Bustamante Fabara as of November 2021.

Practice head(s):

Maria Rosa Fabara Vera

Testimonials

‘It is the only firm I work with due to its knowledge and prompt, tailored client service.’

‘A warm and personal service.’

‘Fabara offers prompt, efficient and precise advice.’

‘Maria Rosa Fabara stands out for her professionalism, accessibility and excellent client service.’

‘Strong ability to connect local requirements and restrictions with global property needs and rights.’

‘Good partner involvement.’

‘The team is highly qualified and experienced, which guarantees they will provide us with good advice before making decisions. Throughout the time that we have been working together, we have had a satisfactory experience.’

‘In the IP litigation practice, Pablo Fabara stands out for his fast and dynamic approach and great capacity to deal with problems. He has vast experience and intellectual ability, which is beneficial to us.’

Key clients

Boehringer Ingelheim International

Blenastor

Gloria

Colombina

GAC Franchise Brands

Grupo Bimbo

Vitality Group International

Heineken Ecuador

Intercontinental Great Brand

Giorgio Armani

Pasta Zara

Bio Minerals

Textiles El Rayo

FloranaFarms

Humberto Rolando Castillo Calle

Work highlights

  • Advised Blenastor on a nullity action against commercial slogans registered by another party.
  • Represented Boehringer Ingelheim International in an appeal challenging the denial of a patent application.
  • Defended Gloria against the opposition to its registration of the Mr Chips trade mark.

Lexvalor Abogados

Lexvalor Abogados provides a wide range of IP services, with a strong track record in matters relating to patents, plant varieties, enforcement and litigation, and anti-counterfeiting. The firm is also especially active in the field of trade mark clearance and prosecution, handling portfolios for large international clients such as Post Foods, AT&T and Moët Hennessy, among others, as well as large domestic players including Industrias Ales and Corporación Favorita. The team is led by Luis Marin Tobar and Hernán Ponce Aray, the latter of whom is particularly recommended for work in the pharmaceutical sector.

Practice head(s):

Luis Marin Tobar; Hernán Ponce Aray

Testimonials

‘They provide a personal service and the partners are always available to deal with urgent enquiries.’

‘There is good co-ordination between the lawyers in the team.’

‘Hernán Ponce is always available to give good advice on problems we encounter with our brands, as well as to listen to our concerns.’

‘They have good attention to detail and are always proactive.’

‘Luis Marin is absolutely professional. He is always up to date and anticipating the next move.’

‘Fast and meticulous.’

‘The team stands out for its speed, agility and excellent, personalised client service.’

‘We are very satisfied with the advice we have received from Luis Marin. He is very experienced and professional.’

Key clients

Abbott Laboratories

Cole Haan

Post Foods

The Directv Group

Grupo Pintulac

Alliancepharma Technologies

Veto Global Sourcing

Fideval Administradora de Fondos y Fideicomisos

Distribuidora Farmacéutica Ecuatoriana (Difare)

Laboratorios Saval

Alpina Productos Alimenticios (Alpiecuador)

Corporación Favorita

The Scotch Whisky Association

Dyvenpro Distribución y Venta de Productos

Corporación Way / Imbauto / Vallejo Araujo

Uribe & Schwarzkopf Ingenieros y Arquitectos

Grupo Link

Comohogar

Empresa Editora El Comercio

La Tablita Group

Television y Ventas (Televent)

Work highlights

  • Acting as counsel to Moët Hennessy in anti-counterfeiting investigations involving its products in Ecuador.
  • Acting as counsel to Abbott Laboratories in relation to new medical compounds and their viability for protection and commercialisation in Ecuador without infringing valid patents or applications.
  • Advising the Scotch Whisky Association on the defence of the “Scotch whisky” geographical indication in Ecuador, including the investigation of local spirits commercialised as Scotch whisky, cease and desist letters and enforcement procedures.

Meythaler & Zambrano Abogados

Meythaler & Zambrano Abogados is particularly active in the pharmaceuticals space, with a range of high-profile international clients approaching the firm for advice on IP matters. The team frequently handles high-profile litigation, with José Meythaler leading the contentious IP practice, which deals with patent infringement cases and also handles appeals against licensing decisions by the patent authority. Margarita Zambrano heads up the non-contentious offering, and is particularly notable for her work on IP licensing. At the more junior level, associate Maricruz Cepeda is a key name in the litigation practice.

Practice head(s):

Margarita Zambrano; José Meythaler

Testimonials

‘A solid team which is knowledgeable about the current law.’

‘The practice is specialised, which means they can provide immediate and efficient advice, meeting all the necessary criteria. They are masters of their field of law.’

‘The firm stands out for its specialisation and client service.’

Pérez Bustamante & Ponce

Pérez Bustamante & Ponce has recently seen a growth in instructions relating to the protection of plant varieties; work highlights include advising an Italian client on the registration of several new varieties in Ecuador. The firm is also highly experienced in the trade mark space, advising high-profile international clients on the maintenance of their portfolios, including registrations, oppositions and cancellations. Francisco Pérez-Gangotena heads the team, and is especially notable for his experience in copyright and other matters affecting the entertainment sector. At the associate level, Camila Mateus, a former adviser to Ecuador's Intellectual Property Committee, is recommended for matters involving the EU, while Alysa Arcos specialises in work that involves other jurisdictions within the Andean Community.

Practice head(s):

Francisco Perez-Gangotena

Testimonials

‘What stands out for me, as a client, is the team’s knowledge of the business and ability to translate intellectual interests into legal strategy.’

‘Camila Mateus provides timely and accurate advice that supports our business strategy. She has significant knowledge of intellectual property.’

‘Francisco Pérez offers prudent and effective advice, and has a great ability to read and interpret the client’s needs and come up with successful strategies.’

‘Prompt, friendly, multi-disciplinary and accurate advice. PBP always keeps the client up to date on the progress of their case.’

‘They demonstrate solid legal knowledge, flexibility, empathy, communication skills and leadership.’

‘Efficient and prompt. Give the client confidence.’

‘Perez Bustamante & Ponce is a firm where experience and responsiveness is evident. They are a pleasure to work with because they are reliable and professional.’

‘In my opinion, they stand out for their dedication to their clients and constant availability to assist them.’

Key clients

The Timken Company

Anheuser-Busch

Jaguar Land Rover

American Airlines

Jafer Enterprises R&D (YANBAL)

Aloe Vera of America

Ardea Biosciences

Owens Brockway Glass Container,

Impresa Individuale Biancheri Alberto

ARC Infruitec/Nietvoorbij

Work highlights

  • Advised Jaguar Land Rover on its opposition to the filing of the “Diseño del Puma” trade mark in Ecuador, which is almost identical to the client’s.
  • Filed an opposition on behalf of American Airlines to the trade mark “Advantage Travel”, based on the client’s prior rights to the “Advantage” mark.
  • Acted for Jafer Enterprises R&D in defending its trade mark against a cancellation action for lack of use.

Romero Corral Abogados

Boutique firm Romero Corral Abogados is particularly notable for its trade mark practice, managing portfolios for both domestic and international clients, including the filing of cancellation actions and defending against similar actions. Margarita Romero is particularly experienced in matters regarding digital assets, also heading the firm's privacy and data protection practice, while Alfredo Corral handles unfair competition cases. Other key figures in the team include Samantha Maldonado, who heads up the firm's enforcement work.

Practice head(s):

Margarita Romero; Alfredo Corral; Xavier Gómez; Samantha Maldonado

Testimonials

‘They are very precise and meticulous.’

‘The team are efficient, firm, attentive to detail. They are perfectionists.’

‘Professionalism and experience.’

‘They are prompt and effective in their responses.’

Key clients

Alimentos Ecuatorianos los Andes

Auteco Mobility

Central Cervecera de Colombia

Compañia Nacional De Levaduras (Levapan)

Eastern Airlines

Ecomsur

Facephi Biometría

Gaseosas Colombianas

Industrial de Diseño Textil (Inditex)

Licores San Miguel

N.V. Organon

Oil-Dri Corporation of America

Oriflame Cosmetics

Quala

Target Brands

Vestas Wind Systems

Virumec

Work highlights

  • Acted for Inditex on challenging the registration of trade marks with similarities to the client’s “Zara” brand.
  • Acted for Olympic Juice (Olyjuice) in an action for the cancellation of a trade mark that has not been used in the Andean Community.

Bermeo & Bermeo Law Firm

Bermeo & Bermeo Law Firm is home to several strong IP lawyers, including senior partner Rodrigo Bermeo Rosales, who handles complex litigation, trade mark prosecution specialist Rodrigo Bermeo-Andrade, and patent expert Pablo Bermeo-Andrade.

Dentons Paz Horowitz

Dentons Paz Horowitz handles a wide range of complex IP work, including advising on less common types of IP such as tactile trade marks, trade secrets and sound marks. Additionally, the firm is frequently instructed in more standard trade mark and copyright work. International trade mark and geographical indication specialist Bruce Horowitz heads the team alongside Byron Robayo Arroyo, who handles a wide array of cases, including trade dress and patent matters. Senior associate Verónica Chiriboga joined the firm in September 2020 from Falconi Puig Abogados and focuses primarily on trade mark prosecution, enforcement and anti-counterfeiting.

Practice head(s):

Bruce Horowitz; Byron Robayo

Testimonials

‘They are experts in patents and trade marks.’

‘Excellent client service, punctuality and, above all, a focus on results.’

‘It is a super organised, accomplished and efficient team. They do their job well, and always on time.’

‘What stands out about the team is their personal qualities and the passion they have for their work.’

‘The team’s ability to generate effective solutions means it provides unique support.’

‘Byron Robayo is an extremely capable professional with negotiation skills that allow him to effectively guide his clients towards the best outcome in each particular case.’

‘Byron Robayo is an expert in intellectual property law, Ecuadorian regulations and everything related to the field.’

‘They stand out for their knowledge and friendly attitude.’

Key clients

Portales Distributors

Magic Flavors

Austrofood

Tintin & Tintin Odontocenter Medicalecuador

Confecciones Cabrera

Oriental Industria Alimenticia (OIA)

MHDM

Comercial Konitos

Alianza por el Emprendimiento y la Innovación (AEI)

Sparkassenstiftung für internationale Kooperation

Magic Nature

Biobloo

Universidad Central del Ecuador

Fabcad

Envapress

KTK

Incremar

Work highlights

  • Advised O.I.A. on the process of revoking a 3D mark registration.
  • Advised Banco Solidario following the unlawful use of its intellectual property rights in a phishing scam.
  • Advised a client on the process of revoking an improper trade mark registration.

Quevedo & Ponce

Daniela Román Aguinaga heads the IP team at Quevedo & Ponce, which acts for a range of high-profile international clients, and is particularly active in the pharmaceutical industry. Román specialises in patent cases, while Ernesto Guarderas Izquierdo is a key name for trade mark work, including representation in unfair competition cases. Also recommended are litigator Alejandro Ponce Martínez and Alfredo Gallegos Banderas, who handles matters which straddle the divide between corporate and IP work.

Practice head(s):

Daniela Román

Tobar ZVS

Alfonso Rivera leads Tobar ZVS' intellectual property team, which provides advice on both domestic IP laws and issues affecting the broader Andean Community. The firm handles a wide range of matters, including patents, trade marks, design rights and copyright, but is particularly notable for plant variety work, acting for some of Ecuador's largest agricultural players. Rivera is highly experienced in anti-piracy work, while at the associate level, Hipatia Donoso focuses on IP portfolio management.

Practice head(s):

Alfonso Rivera

Testimonials

‘The team is very organised, responsible and punctual.’

‘Alfonso Rivera and Hipatia Donoso are very professional, responsible, hardworking and friendly.’

‘I have received good treatment from the Tobar ZVS team. I feel like they do the job well and professionally. Response times are good.’

‘Alfonso Rivera is a good lawyer and always on top of matters.’

‘Hipatia Donoso is a very dedicated and professional lawyer who is thorough in the work that she does.’

‘They are very effective and promptly respond to the client’s requirements. They are friendly and well prepared.’

‘Tobar deal with both day-to-day work and more complex cases in a very satisfactory and effective way.’

‘Alfonso Rivera is a very responsive partner, who personally deals with cases and strives to find creative solutions to solve disputes in Ecuador. He is a very dynamic attorney and is really focused on problem-solving. It is always a great pleasure to work with him.’