Firms To Watch: Intellectual property

IP specialist E-Proint, which has operations across Central America and the Caribbean, launched its Salvadoran office in October 2020 with the arrival of the highly regarded Edy Guadalupe Portal from Portal & Asociados.
Edna López heads the El Salvador practice of Mayora IP, S.A., the IP arm of Guatemalan firm Mayora & Mayora, S.C., and is particularly active in matters throughout the Northern Triangle region, where the firm's offices are based.

Intellectual property in El Salvador

García & Bodán

The 'well-rounded and committed' intellectual property group at García & Bodán continues to be a leader in the region, advising local and international clients on a wide range of matters with the support of its offices in Guatemala, Honduras, Nicaragua and Costa Rica. The team assists with anti-piracy issues, the procurement and maintenance of health registrations, administrative IP actions, trade mark litigation, copyright infringement cases and regulatory compliance. The team is led by the 'outstanding' Julio Vargas, who heads the firm's regional IP practice and is an expert in administrative and judicial proceedings, and backed by senior associate and regulatory specialist Fermina Bolaños Meardi. The group’s client roster includes household names such as PepsiCo, the Kellogg Company, Mattel and the Kraft Heinz Company, and covers sectors including food and beverages, telecoms, aviation, pharmaceuticals, retail, education and entertainment.

Practice head(s):

Julio Vargas

Testimonials

‘The team has a lot of knowledge and excellent availability, particularly from the main partner. It is a well-rounded and committed team with good contacts.’

‘Julio Vargas is outstanding. He is knowledgeable about the subject, always available and creative in negotiations.’

Key clients

PepsiCo

The Kraft Heinz Foods Company

Grupo Televisa de México

Grupo Lala de México

Ministry of Education of the Salvadoran Government

Crocs

Sky/DirecTV

Productos Alimenticios Diana

Converse/All Star

Mattel

The Kellogg Company

Work highlights

  • Advised Mattel on anti-piracy measures to enforce its IP rights against imported products from China which infringe its copyright over the Barbie doll and the UNO game.
  • Acting for the Ministry of Education, Science and Technology of El Salvador in the prosecution of national phase patent applications for a chemical agent in Japan, the US and Brazil.
  • Acting for Lala Laca/ANRA in co-ordinated litigation strategies against infringers of the client’s restaurant brands in El Salvador, Guatemala, Nicaragua, Costa Rica, Colombia and the EU.

Romero Pineda

Highlighted for its 'IP knowledge and skills', the powerhouse intellectual property team at Romero Pineda remains a leader in the market, maintaining and protecting the IP of its high-profile local and international clients. The group’s full service extends to trade mark and copyright registrations and renewals, IP litigation and regional expansion strategies. The team is led by managing partner, firm vice president and respected IP authority José Roberto Romero, brand management expert Roxana Romero and associate Elsy Duran, a specialist in IP registrations. It is backed by Carlos Castillo, who is well regarded for his strength in IP disputes and associates Nadya León and Susana Navarro, who handles patent matters. The group’s client portfolio spans the food, hospitality, automotive, consumer goods, banking, energy, telecoms and pharmaceuticals sectors, and includes multinational companies such as Avon Products, Specsavers and Grupo Bimbo.

Practice head(s):

Jose Roberto Romero; Roxana Romero; Elsy Duran

Testimonials

‘Their lawyers have all the IP knowledge and skills necessary to carry out the proper management of the matters that we entrust to them.’

‘Roxana Romero, Elsy Durán and Nadya León are always up to date on each of the matters that we entrust to them, and are always punctual and knowledgeable when providing us with their opinions and advice.’

‘Romero Pineda has maintained a strong reputation in IP matters in El Salvador.’

Key clients

Productos Alimenticios Bocadeli

Avon Products

Gevers Legal

Specsavers Optical Group

Grupo Bimbo

Grupo Salinas

HealthCo Products

Joint Stock Company “Biocad”

L’Air Liquide Societe Anonyme pour l’Etude et l’Exploitation des Procedes George Claude

Yildiz Holding

Work highlights

  • Advised Productos Alimenticios Bocadeli on the IP issues relating to its new operations in South America, including trade mark searches, filings, prosecutions and renewals.
  • Advising Bio Pappel Scribe on trade mark filings, prosecutions and renewals in El Salvador, Guatemala, Honduras, Panama and Belize.
  • Advising PAE on trade mark filings, prosecutions and renewals in El Salvador, Guatemala, Honduras, Costa Rica, Nicaragua, Panama and the Dominican Republic.

Arias

The intellectual property and life sciences team at Arias advises national and multinational clients on a wide range of matters, including the obtaining of health permits, infringement actions, advertisement-related matters, the new applications for and renewals of IP rights, and post-registration changes. Led by Morena Zavaleta, the team is supported by senior associates Marcela Canjura, an expert in trade marks, and Elisa Gonzalez, who focuses on health registrations and regulatory matters, particularly in the life sciences sector. The group’s client roster features high-profile corporations including Phillip Morris International, the Coca-Cola Company, Walmart and Procter & Gamble, across the pharmaceuticals, food and beverages, retail, automotive and manufacturing industries, among others.

Practice head(s):

Morena Zavaleta

Key clients

Phillip Morris International

AB InBev

Honda

Davivienda

Natura Cosmeticos

Grupo Inditex

Coca-Cola Company

Sanofi

Procter & Gamble

Walmart

Work highlights

  • Assisted Holcim with opposing four trade mark applications relating to the trade mark CEMSSA.
  • Assisted Fruit Shippers with opposing the registration of the trade mark BONITA CLASSIC FOODS.
  • Assisted Carbuss Indústria Catarinense de Carrocerias in filing an opposition after company Busscar De Colombia filed an application for the trade mark BUS STAR.

Espino Nieto & Asociados

The intellectual property group at Espino Nieto & Asociados continues to advise clients on trade mark searches, filings, renewals, searches of name, patent prosecution, the IP aspects of franchise agreements and transactions, and IP litigation. Danilo Rodríguez and Veronica Mina are the key contacts.

CENTRAL LAW El Salvador

With 'excellent organisation and teamwork', the intellectual property group at Central Law El Salvador advises on IP litigation, transfer of technology issues, the IP aspects of contracts, confidentiality agreement and acquisitions, portfolio management and health registrations.. The team is headed by regulatory expert Sandra Cabezas and IP litigation specialist José Manuel Argüello and is backed by associates Fernando Argumedo and Elena Isabella De Sabata, who is experienced in health regulatory matters. The group’s client roster covers the retail, medical devices, healthcare, pharmaceuticals, food and electronic industries, and includes local and international companies.

Practice head(s):

Sandra Cabezas; José Manuel Argüello

Testimonials

‘They are able to handle the regional coordination of matters associated offices. The team has excellent organisation and teamwork, present concrete, grounded and coherent advice, and are more orderly and organised than a traditional firm.’

‘The team give us confidence. They know what they are doing, they explain issues properly and they transmit peace of mind to their clients. Jose Manuel Arguello assisted us throughout the regional trade mark registration process and supported us at all times.’

Key clients

Distribuidora Liverpool

Olympus

Abbot Laboratories

Pricesmart El Salvador

Grupo Profarmaco

Mediproducts

Alcon/Novartis

Pan Sinai

Alura Animal Health and Nutrition

AbbVie

Almacenes Vidrí/Novex

Work highlights

  • Assisting Distribuidora Liverpool with the assessment and registration of more than 150 distinctive signs (trade marks, trade names and slogans).
  • Advising Olympus on the assessment and registration of medical devices in El Salvador.
  • Provided Abbott Laboratories with advice on the development of strategies to maintain the current sanitary registrations and authorisation of its products.

Consortium Legal

The intellectual property team at Consortium Legal assists its national and multinational clients with a diverse spectrum of IP matters, advising on copyright, patents and trade marks, sanitary and pharmaceutical registrations, administrative issues and IP litigation. Headed by international trade mark expert Suzanne Berrios De Tablas, and backed by associate Francisco Medrano, the team represents clients across the banking, energy, tech, hospitality, consumer products, pharmaceuticals and telecoms industries.

Practice head(s):

Suzanne Berrios de Tablas

Testimonials

‘Prompt responses and good advice on how to proceed.’

‘They resolve issues rapidly.’

Key clients

Digicel Caribbean/Digicel

Dollar City

Grupo PDC

Industrias Sintéticas de Centro América (INSINCA)

Work highlights

  • Advised Grupo PDC on the acquisition of all the inventories, assets and intellectual property of Dizac.
  • Managing and defending Digicel Caribbean/Digicel’s intellectual property rights against trade mark violations.
  • Assisting Industrias Sintéticas de Centro América (INSINCA) with the protection of distinctive signs in the Central American region against companies that produce imitation products.

De La Gasca & Cía.

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

LatinAlliance El Salvador

The intellectual property practice at LatinAlliance El Salvador provides 'excellent advice and a personalised service' to its national and multinational clients. The group advises on a diverse range of issues, from trade mark oppositions, portfolio management and patent prosecutions to the IP aspects of contracts and licensing agreements. The team is spearheaded by regional head of IP Fabiola Torres and supported by founding partner Botho Steinvorth Koberg. The group’s client roster includes companies from the pharmaceuticals, tech, food, textiles, consumer goods, beauty products, life sciences and retail sectors.

Practice head(s):

Fabiola Torres

Testimonials

‘The firm’s attorneys work together as a team, providing an excellent client service.’

‘Fabiola Torres is my go-to when working in El Salvador. She has extensive knowledge of the law in the region, allowing her to centralise clients’ IP portfolios with the rest of the LatinAlliance offices. Her client service, attention to detail and knowledge distinguish her from other lawyers in the region.’

‘Excellent advice and a personalised service.’

‘It is a youthful but knowledgeable team that provides a high-quality service and competitive prices.’

‘Fabiola Torres is an excellent lawyer, who is always available to clear up clients’ concerns, no matter the day or time.’

‘Great subject matter knowledge and dynamic, to-the-point advice.’

Key clients

Altian Pharma (part of InsudPharma Group)

Chemo Group

Creativa Consultores

Grupo Carval

Laboratorios Medikem

Alimentos Ideal

Profil

Yobel Supply Chain Management

Industria La Popular

Grupo HMM

Caribbean Probiotics

Work highlights

  • Advising on the entire Altian Pharma trade mark portfolio in El Salvador, Honduras, Guatemala, Nicaragua, Costa Rica, Panama and the Dominican Republic.
  • Advised Industria La Popular on seven trade mark licence agreements granted by Unilever for soaps.
  • Assisted Colombian law firm Buriticá Abogados with the registration of Conair’s industrial design.

Dentons Munoz

The intellectual property and technology department at Dentons Muñoz advises its local, regional and multinational clients on a diverse spectrum of IP matters. These include e-commerce and internet law, trade secret protection, due diligence processes, licensing agreements, health registrations, and patent, copyright and trade mark prosecution. Headed by IP and technology director Silvia Nasser, the team’s client roster contains household names such as the Coca-Cola Company, McDonald’s and Walmart, and covers the retail, restaurants, food and beverages, software and energy sectors.

Practice head(s):

Silvia Nasser

Key clients

Coca Cola Company

Walmart Centroamérica

Wal-Mart de México

Super de Alimentos

Alimentos Prosalud

Industrias Caricia

Didea

AFP Crecer

McDonald’s Corporation

Puma Energy Bahamas (Sucursal El Salvador)

Evertec Group

Alimentos Ideal

Papelera Internacional

Work highlights

  • Advised Walmart Centroamerica on the filing of a nullity action against the owner of the trade mark for ALCOHOLGEL.
  • Advising on the registration of and lifting of the embargo on 57 trade marks owned by McDonald’s Corporation at the Salvadoran Trademark Office.

ECIJA

The 'strategic' intellectual property group at ECIJA coordinates with its global network to advise local and international clients on a broad range of IP-related matters, including brand protection, anti-piracy actions and infringement litigation. The group is led by the Salvadoran office founder and manager Alfredo Navas Duarte and e-commerce expert Karla Alas de Duarte, with the support of litigation practice head Carlos Quintanilla and associate Alejandra Gómez. The team’s client roster features companies from the e-commerce, education, logistics, health, banking, energy and food sectors.

Practice head(s):

Alfredo Navas Duarte; Karla Alas de Duarte

Testimonials

‘It is a well-rounded team with experience in each branch of the law, which allows them to provide us with comprehensive advice.’

‘They have the necessary expertise in intellectual property, which generates greater confidence and support on a day-to-day basis.’

‘In addition to having a clear and thorough understanding of the law, the firm has great sensitivity to the client’s needs, always proposing the most practical and efficient options to achieve the intended purposes. The clarity with which they explain the challenges of the system and seek solutions is invaluable. Their client service is also a very important asset.’

‘The team stands out for dealing with matters promptly, its follow-up and client service.’

‘They are strategic partners to their clients.’

‘We receive direct input from the lead partner.’

Key clients

Toto

Motocity

Superea

Laca Laca

Exor International

Work highlights

  • Advising Toto on its IP strategy for the Central American region.
  • Advising Motocity on protecting its IP in El Salvador.
  • Advising Superea on all IP matters, protecting not only its own brands but also the copyright protection and licensing of computer programmes designed by the client.

EY Law Central America

The intellectual property group at EY Law Central America advises its national and multinational clients on patents and copyright issues, unfair competition cases, the IP aspects of franchise agreements, industrial property filings and sanitary permits. The group is headed by Costa Rica-based Hernán Pacheco, the managing partner of EY Law Latam North and Central America, and 'excellent' IP practice director Mónica Machuca, an expert in the regional development of trade marks. It is supported by senior legal analyst Gabriela Lemus, who specialises in regulatory compliance. The team’s client roster spans such sectors as hospitality, healthcare, pharmaceuticals, food and beverages, and agrochemicals.

Practice head(s):

Hernán Pacheco; Mónica Machuca

Testimonials

‘The strong point of this team is its ability to hire excellent and dedicated attorneys. In addition to intellectual property, they have extensive knowledge of commercial law, which is an excellent complement to their service.’

‘Mónica Machuca is an excellent lawyer.’

Key clients

Real Hotels & Resorts

Licorera Cihuatan

Medic Plast

Leo Pharma

Provipan

Lozano Villamizar Morales Abogados

Work highlights

  • Advised Real Hotels & Resorts on the management of its entire trade mark portfolio.
  • Advised Licorera Cihuatan on IP issues relating to marketing and the protection of its trade mark portfolio in Central America, South America, the US, Europe and Russia.
  • Advised Medic Plast regarding the controversial registration of the trade mark ‘cannabipiel’ in El Salvador.

Lexincorp

The intellectual property department at Lexincorp advises local and international clients on a broad range of issues, assisting with the registration and protection of IP rights. The team is led by managing partner and regional director Enrique Escobar and associates Paola Alarcon and Adriana Portillo. The group’s client portfolio includes international companies such as Millicom International and Entertainment One, and spans the telecoms, entertainment and electronics sectors.

Practice head(s):

Enrique Escobar; Paola Alarcon; Adriana Portillo

Testimonials

‘The team stands out for its agility and professionalism in managing the process.’

‘Paola Alarcon is an excellent lawyer, with extensive knowledge in her field. She is always available to support us and provide the best advice.’

Key clients

Millicom International Cellular

Woden Colombia

Entertainment One

Work highlights

  • Filed eight successful oppositions in favour of Millicom International.
  • Advising Entertainment One on anti-counterfeiting actions against goods coming into El Salvador which infringed upon its protected brands Peppa Pig and PJ Mask.
  • Advising Woden Colombia on the protection of its intellectual property assets in Central America, starting with the registration of 18 brands and an evaluation of its IP portfolio.

Portal & Asociados

Following the late 2020 departure of former IP-partner Edy Guadalupe Portal and her team (to Eproint), Portal & Asociados's intellectual property practice has had a more limited range but continues to provide support on matters including anti-counterfeiting, unfair competition, certain IP aspects of franchising and licensing, and both health and domain name registrations.

Sfera Legal

The team at Sfera Legal advises clients on trade mark, copyright, patent and industrial design filings and opposition actions. Headed by Mario Ernesto Ayala, who is highly experienced in trade mark registrations, the team acts for clients spanning the automotive, apparel and courier services sectors.

Practice head(s):

Mario Ernesto Ayala

Key clients

Sailun Group Co

Usaflex Industria e Comercio

Airpak Fidelity Corp (AIFCO)

Work highlights

  • Assisted Sailun Group with the registration of four trade marks.
  • Assisted Usaflex Industria e Comercio with the registration of six trade marks as part of the introduction of the brand to El Salvador.
  • Assisted Airpak Fidelity Corp with the registration of four trade marks as part of its new brand image.