Intellectual property in El Salvador

Romero Pineda

The powerhouse team at Romero Pineda remains a market leader, advising on the development and protection of the intellectual property portfolios of major regional corporates and global brands such as The Walt Disney Company, with a client base that spans a diverse spectrum of sectors, including tech, food and beverages, entertainment and pharmaceuticals. Helmed by managing partner, firm vice president and IP authority José Roberto Romero, and litigation practice director Carlos Castillo (who has over 30 years’ experience in intellectual property enforcement), the team has a full-service offering which extends to trade marks and copyright, patents and trade design surveillance, searches, registrations, renewals, oppositions, anti-piracy actions and market expansion strategies. The group is supported at associate level by Elsy Duran, a specialist in the consolidation of regional trade mark portfolios; Nadya León, who handles complex administrative and judicial proceedings; and Susana Navarro, who advises on domain name matters. Brand management expert and former practice co-head Roxana Romero left the firm in September 2022.

Testimonials

‘We have always received a professional and cordial service from each and every one of the lawyers who deal with our matters.’

‘The service I have received from Romero Pineda has been one of the best in El Salvador.’

‘Nadya León is an excellent attorney. She responds quickly and gets to the point.’

Key clients

Productos Alimenticios Bocadeli

Grupo Bimbo

Conair

Grupo Hilasal

Proyecciones y Administracion Empresarial/PAE Global/Arch Resources Group

Autostore Technology

Ubiquiti Networks

The Walt Disney Company

Bio Pappel Scribe

Grupo Omnilife

Work highlights

  • Acting for Bocadeli in conducting trade mark searches, handling new filings, prosecutions and renewals, and designing IP strategies in El Salvador, Guatemala, Honduras, Costa Rica, Nicaragua, Panama, Belize, the Dominican Republic, Peru and the US.
  • Advising Mexico-based company Proyecciones y Administracion Empresarial/PAE Global/Arch Resources Group on comprehensive IP strategies.
  • Acted for Ubiquiti Networks in two oppositions to stop identical trade marks from obtaining unlawful registration, with favourable results.

Arias

With an ‘incontestable knowledge of IP’, the team at regional firm Arias has expertise in managing and safeguarding the portfolios of household-name multinationals including Procter & Gamble, Philip Morris and Chevron. Headed by Morena Zavaleta, who brings 25 years of experience in the intellectual property arena to the practice, the department assists with trade mark, patent and copyright-related matters ranging from registrations, renewals and post-registration changes to infringement actions. Key support is provided by recently promoted senior associate Marcela Canjura, a specialist in clearance searches and trade mark remedies, appeals and oppositions, and complex health registrations and consumer protection matters are handled by senior associate Elisa González . The team’s client roster spans such sectors as food and beverages, pharmaceuticals, retail and manufacturing.

Practice head(s):

Morena Zavaleta

Testimonials

‘Arias’s lawyers in El Salvador always keep us abreast of the progress of the matters entrusted to them. Their attention to detail is definitely very good and they have short response times.’

‘Marcela Canjura and Morena Zavaleta have been our main contacts in recent months. We have received an excellent service from them.’

‘Besides the incontestable knowledge of IP, the availability and quick turnaround to address our requirements is what makes this firm shine.’

Key clients

Procter & Gamble

Philip Morris

Inditex

Chevron

Rolex

H Lundbeck

Natura & Co (Avon, the Body Shop and Aesop)

Sanofi

AB InBev

BASF

Work highlights

  • Advising on the management of Alcon’s trade mark portfolio, consisting of 185 registrations.
  • Advising on the management of Natura & Co’s trade mark portfolio (including the Avon, Natura, Aesop and The Body Shop brands), consisting of approximately 275 registrations.
  • Assisted Laboratorios Farsiman with the filing of 45 trade mark applications in El Salvador for its entry into the local pharmaceutical industry.

Espino Nieto & Asociados

The intellectual property group at Espino Nieto & Asociados advises clients on trade mark searches and audits, filings, renewals, changes of name, patent prosecution and the IP aspects of franchise agreements, as well as handling IP litigation. Danilo Rodríguez is the key contact.

Practice head(s):

Danilo Rodríguez

García & Bodán

Providing ‘a personalised service’ that ‘stands out above others’, the experienced intellectual property team at García & Bodán leverages its regional strength, coordinating with the firm’s offices in Guatemala, Honduras, Nicaragua and Costa Rica to manage and protect the trade mark, copyright and patent portfolios of major household-name multinationals, including PepsiCo, Sky International, Armani and United Airlines. Led by respected IP enforcement expert Julio Vargas, who has key expertise in complex administrative and judicial litigation, the team handles anti-piracy and anti-counterfeiting actions, the procurement and maintenance of health registrations, and compliance matters. The team’s client base includes well-known names in the food and beverages, retail, consumer products, entertainment, education and aviation sectors, and it has seen substantial growth in the apparel and food delivery spaces. Senior associate Fermina Bolaños Meardi, a specialist in regulatory affairs and IP tech issues related to cybersquatting, data privacy and consumer protection, is also noted.

Practice head(s):

Julio Vargas

Testimonials

‘We have used García & Bodán for years for the quality of the service they offer us and the speed and accuracy with which they respond to our requirements.’

‘The personalised service they offer stands out above others.’

Key clients

PepsiCo

The Kraft Heinz Foods Company

Grupo Televisa

Grupo Lala

Crocs

Sky/DirecTV

Converse/All Star

Mattel

PedidosYa (Delivery Hero)

Hurley

Work highlights

  • Advised Mattel on anti-piracy measures to protect its IP rights from importations from China (which infringed the client’s copyright over the “Barbie” doll) and from trade mark infringement of the “Uno” game.
  • Advised PedidosYa on the registration of its trade mark portfolio and defended the brand against infringements by bringing opposition proceedings against similar trade marks.
  • Acted for Sky International in administrative litigation in defence of its “Sky” trade mark.

Consortium Legal

Coordinating with the firm's regional offices in Costa Rica, Guatemala, Honduras and Nicaragua, the Salvadoran intellectual property group at Consortium Legal combines deep bench strength with the experience of its team to manage and safeguard the portfolios of national, regional and multinational corporates from the pharmaceutical, food, telecoms, cosmetics, and banking and finance sectors, among others. The team handles copyright infringement litigation, trade mark nullification and cancellation for non-use, anti-piracy actions, and the IP aspects of franchise contracts and medical supply bidding issues, in addition to licensing and due diligence. Suzanne De Tablas, who brings over 20 years of experience to the practice, heads the group, with key support from recently promoted senior associate Francisco Medrano, who handles complex proceedings before the Intellectual Property Registry of El Salvador.

Practice head(s):

Suzanne de Tablas

Testimonials

‘It is an excellent team with a lot of experience in the field.’

‘I like that they collaborate with the offices in other Central American countries, which is useful for managing international portfolios.’

‘I find that they are practical in their responses and legal strategies and do not get bogged down in legal terminology.’

Key clients

Digicel Caribbean

Toy Cantando

Unipharm

Banco Atlántida El Salvador

Visión Mundial

AIDS Healthcare Foundation

Productos Alimenticios Centroamericanos

Dompè farmaceutici

Steiner

Arabela

Work highlights

  • Assisted telecoms company Digital Caribbean with the maintenance and acquisition of new trade mark registrations in El Salvador.
  • Advised Unipharm on judicial trade mark processes to monetise its pharmaceutical products in the Salvadoran market.
  • Aided Banco Atlántida El Salvador with the management of the trade marks and distinctive signs used for its digital financial services and investment funds.

CENTRAL LAW El Salvador

The team at Central Law El Salvador utilises the firm's presence in seven countries across Latin America to develop strategies for the management, registration and protection of the regional intellectual property portfolios of national and multinational corporates. The practice is headed by IP director José Manuel Argüello, who has over 20 years' experience in the practice area, along with associates Elena Isabella De Sabata (who, along with Argüello, specialises in regulatory matters related to the government approval of drugs, medical devices and nutritional products). Representing household names such as Gucci, the team has a diverse client roster spanning the pharmaceuticals, publishing, aerospace, household products and beverages sectors.

Key clients

Almacenes Vidri

Price Smart

Guccio Gucci

HSM IP

Editorial Santillana

C Imberton

Space Exploration Technologies (SpaceX)

Profarmaco

Beliv

Amstel Brouwerij

Mediproducts

Global Farma

Faes Farma

Work highlights

  • Assisted Almacenes Vidri with the development, registration and protection of all its intellectual property at the regional level.
  • Assisted Profarmaco with the registration, protection and surveillance of its trade mark portfolio.
  • Assisted publishing industry client Editorial Santillana with the management of its regional IP portfolio.  

De La Gasca & Cía.

The experienced team at intellectual property and litigation boutique De La Gasca & Cía. assists clients with a diverse range of issues related to trade marks, patents and copyright. Headed by firm managing partner and founder Giancarlo De La Gasca, the group is supported by associate Nelly Serrano, a patent and trade mark specialist.

Practice head(s):

Giancarlo De La Gasca

ECIJA

The intellectual property team at ECIJA advises on comprehensive registration and protection strategies to develop the brands of local and national corporates and coordinates with its offices in Central America, Europe and Asia to assist multinationals seeking to establish a presence in the region, with a particular focus on American food distribution companies. Other clients include pharmaceutical majors Pfizer and Sanofi and key names from the insurance, hospitality, beverages, manufacturing, IT and consumer products sectors. Salvadoran office founder and managing partner Alfredo Navas Duarte leads the practice along with Karla Alas De Duarte, a specialist in new technologies. They are supported by IP litigation specialist Carlos Quintanilla and associate Alejandra Gómez, who has expertise in trade mark oppositions.

Testimonials

‘Alfredo Navas has great experience and knowledge, and it is a pleasure to receive his advice.’

‘Alejandra Gómez is always following up on matters and providing day-to-day support. She has an excellent attitude to assisting clients and shows great quality in her work.’

Key clients

Motocity

City Express

Credicity

Cervecería Salvadoreña

Academia Europea

Superea

Toto

Rapiexchange

Laca Laca

Mediprocesos

Grupo Decoarte

Westgate

San Crespin

Novalaser

Josefi

BCIE

San Juan de Ríos Bangrupo/Parques y Jardines Cuscatlan Chahin

Exor Latam

CMA CGM

Pfizer Zona Franca Sucursal El Salvador

Sanofi-Aventis de Panama

Church and Dwight

Ike

WISE IMG

Procesadora y Distribuidora Nacional

Corporación Saint Germain

Work highlights

  • Acted as the project manager for Toto’s IP strategy in the Central American region.
  • Managing IP renewals and protection strategies for consumer products company Church & Dwight and its iconic “Arm & Hammer” design.
  • Advised Grupo Motorcity on protecting its visual communication strategies from plagiarism in El Salvador.

E-Proint

Since the October 2020 arrival of IP head Edy Guadalupe Portal and her team from Portal & Asociados and the launch of its Salvadoran office, IP specialist E-Proint (which has a network spanning Central America and the Caribbean) has seen substantial growth in the pharmaceuticals sector, adding industry titans Moderna and GlaxoSmithKline to an already robust roster of multinational clients. The group specialises in the management, expansion and protection of its clients’ trade mark portfolios, providing a comprehensive service which ranges from advising on patents, copyrights, trade marks and industrial designs to assistance with IP litigation and due diligence and cybersecurity issues.

Practice head(s):

Edy Guadalupe Portal

Testimonials

‘It is a very competitive professional team that covers several Central American and Caribbean countries in a very efficient way. It is a pleasure to work with them.’

‘Edy Guadalupe Portal is a very active and involved partner in the world of intellectual property.’

‘Eproint is a diligent and well-prepared firm. They have a comprehensive view of IP matters. The team works quickly and in a coordinated manner.’

‘Edy Guadalupe Portal has helped our firm with all facets of its IP matters in El Salvador and Central America. Excellent work.’

Key clients

Bayer

Moderna

Sandoz/Novartis

GlaxoSmithKline

MF Brands (Lacoste)

Eli Lilly & Company

Samsung

Mattel

Underwriters Laboratories

Puma

Work highlights

  • Advising GlaxoSmithKline on the management of its trade mark portfolio, including all 2022 renewals.
  • Assisted Moderna with trade mark filings in 20 countries.
  • Assisted ByteDance, the developer of TikTok, with the expansion of its trade mark portfolio in El Salvador.

LatinAlliance El Salvador

The team at LatinAlliance El Salvador utilises its regional presence (through its offices in Nicaragua, Guatemala and Costa Rica) to manage and safeguard the IP portfolios of companies at the national and regional levels. Led by regional head of intellectual property Fabiola Torres, the team provides a comprehensive service, ranging from advising on licensing agreements, transfer contracts, trade mark oppositions, appeals and patent matters to handling cease and desist letters and trade mark litigation related to cancellation for non-use. While it has notable strength in the pharmaceuticals area, the team’s client base also spans the automotive, consumer products, and food and beverages industries.

Practice head(s):

Fabiola Torres

Key clients

Altian Pharma

Grupo Carval (Laboratorios La Santé, Vallecilla, Galeno Química and Bionutect)

Laboratorios Medikem

Alimentos Ideal

Industria La Popular

Grupo Viz

Super Repuestos

Work highlights

  • Acted for Industria La Popular in opposing a trade mark registration made by Panamanian company Barraza y Compañía to protect the client’s detergent products.
  • Advised Altian Pharma on the commercialisation of a pharmaceutical product to treat respiratory complications in Central America, Panama and the Dominican Republic, in addition to managing the client’s trade mark portfolio.
  • Acted for Cadisa in opposing the registration of the trade mark “Start Respuestos y Diseño” to protect the client’s “Stark” trade mark (both related to the protection of motorcycles and spare parts).