Intellectual property in Guatemala
With offices across the region, BLP is well equipped to advise international brands on the management of their IP portfolios throughout Central America; the team regularly assists in trade mark clearance and prosecution, patent applications (including under the Patent Cooperation Treaty), the registration of industrial designs and utility models, and copyright matters. Also of note is its vast experience in IP litigation and administrative proceedings, including anti-counterfeiting cases. The firm's strong international client base includes leading names from the pharmaceutical and technology industries. Luis Ruiz, who has expertise in complex IP litigation, as well as the registration of trade marks, patents and copyright, leads the team. Director Pamela López, who often advises on the IP aspects of M&A transactions, is another key contact.
Sony Interactive Entertainment
US Department of Health and Human Services
H&M Hennes & Mauritz
Dennemeyer & Associates
- Advising a household name company on IP matters relating to an online radio station in several Central American companies.
- Advising Bedrock Brands and Shinola/Detroit on the management of their trade mark portfolio in Guatemala, including handling administrative litigation.
- Acting for Abbott Laboratories in long-running litigation against local pharmaceutical laboratory Provimed over the counterfeiting of products.
- Advising Dennemeyer & Associates on the local management of its clients’ trade mark, patent and design portfolios in Central America.
Consortium Legal's IP department stands out for its 'personalised and immediate service'. The team regularly advises international food, beverage and pharmaceutical clients on the management of their trade mark portfolios in Guatemala, and the co-ordination of their IP assets across Latin America and Europe. It also handles the registration of domain names, filing of geographical indications or appellations of origin, and marketing issues relating to the use of trade marks and slogans. Litigation, including infringement, cancellation and unfair competition proceedings, is also an area of strength. The team is led by the 'experienced, responsible and ethical' Ninoshka Urrutia, while associate Stephanie Arévalo, who specialises in patents and applications for trade marks abroad, is also a key contact.
‘The IP department at Consortium Legal in Guatemala has been operating for 25 years, which has allowed it to build up a strong portfolio of important clients and acquire experience and a good reputation in this area.’
‘Personalised and immediate service. They take action straight away.’
‘The cohesion of the process and the feedback to clients is strong and reliable.’
‘Ninoshka Urrutia, Maria Fernanda Morales and Sandra Ortiz provide a personalised service, excellent treatment of clients and friendly communication. They always have a smile, are quick to act and are professional.’
‘The greatest speed and efficiency.’
‘The team is led by Ninoshka Urrutia, who has more than 20 years’ experience in IP and has been at the firm for many years. She is very experienced, responsible and ethical in her work. She is always prepared to look for the best solutions and to work with us with a positive attitude.’
Asociación de Productores de Café
Laboratorios Quimico Farmaceutico
Productos Alimenticios Diana
The IP arm of Central American firm Mayora & Mayora, S.C., Mayora IP, S.A. has particular strength in the management of trade mark portfolios, domain names and cross-border technology transfers in relation to trade secret law. The team, which draws on the litigation expertise of its sister firm to handle infringement, nullity and cancellation actions, is noted for its strong client base of international brands. The practice is led by 'excellent' administrative partner Santiago Mayora, while managing partner Eduardo Mayora is also a key member of the team. They are supported by senior associates Hugo Rivas, who leads the patent department, and Byron Deulofeu, who specialises in IP litigation.
‘We were very satisfied with the service we received from Mayora IP. We will definitely return to work with them in the future.’
‘Santiago Mayora and Nancy Nufio were excellent and very professional.’
‘What makes this practice unique is that all the lawyers in the team are supremely trustworthy. The perseverance of the whole team, their continued discipline and diligence, wisdom, patience, calmness and self-control, and, finally, their honesty and sincerity are key factors.’
‘Santiago Mayora, Hugo Rivas and Eduardo Mayora stand out for their consistency, their ongoing advice, availability at all times and ability to meet deadlines. They provide my company with services across eight different countries. Even if you are not a large business, they give the time and service that you need.’
Honda Motor Co
- Acted for a global luxury fashion brand in a copyright infringement case.
- Acted for a client in an anti-counterfeiting case.
- Advised a restaurant client on infringement cases where nominative fair use exceptions apply.
- Advised a consumer product manufacturing company on a complex trade mark infringement case.
Praised for its 'excellent client service, fast responses and friendly approach', Guatemalan firm Palomo Abogados (formerly Palomo & Porras) is experienced in the management of IP portfolios both in the country and beyond, across Central and South America. The team has experience in trade marks, patents and copyright, as well as in IP litigation and anti-counterfeiting actions. The team's roster of international clients includes technology, industrial machinery, financial, beverage and consumer products companies. Héctor Palomo, who specialises in IP litigation, leads the team with director Sandra Iriarte, who focuses on the prosecution, enforcement and administration of IP portfolios. They are supported by experienced associate Paula Passarelli, who leads the international practice of the IP department.
‘It is a joined-up and cohesive team. All of the members are very professional, with good knowledge of their specialist areas, and they respond quickly to queries.’
‘Sandra Iriarte, Hector Palomo and Paula Passarelli stand out for their personalised service, and their thorough knowledge of the case and all the legal aspects surrounding it.’
‘The client service is extraordinary and they have excellent response times.’
‘All the lawyers in the team manage their cases very well, which means they are able to deal very promptly with queries.’
‘Palomo offers an excellent service. We feel the team is very comprehensive and combines all the necessary skills.’
‘They offer excellent client service, fast responses and a friendly approach. Hector Palomo and Sandra Iriarte are excellent professionals. Their abilities are undisputed.’
‘The team has a good balance of partners and associates, and they are all well informed about the details of the case, so that clients feel like they are always communicating with the same person. The team is also very professional and highly qualified, and their legal advice and knowledge of their area of law is very detailed, but at the same time clear and comprehensible.’
‘The team is highly qualified but very friendly and approachable.’
Arochi & Lindner SC
Starbucks Coffee Company
React – The Anti-Counterfeiting Network
Cervecería Cuauhtémoc Moctezuma
Ulmer & Berne LLP
Hovey Williams, LLP
- Instructed by a law firm in Mexico to advise a well-known technology company on IP matters, including trade mark litigation.
- Advised React on various anti-counterfeiting actions.
- Advised Lincoln Electric in a case involving counterfeiting welding machines with the client’s trade mark.
- Instructed by US IP firm Hovey Williams to represent Compass Minerals Manitoba in the prosecution and litigation of patent applications which were opposed by an agro-industrial association in Guatemala.
Viteri & Viteri
A specialist in IP law, Viteri & Viteri is experienced in trade mark and patent matters, as well as designs and trade secrets. Its clients include domestic and international retail, cosmetics, pharmaceutical and technology companies. The key contacts are the highly experienced Ernesto José Viteri Arriola and senior partner Ernesto Ricardo Viteri Echeverria.
With a presence across Central America, Arias counts global brands from the pharmaceutical, cosmetics, automobile and consumer product manufacturing sectors among its clients. The team advises on trade mark and patent registrations and copyright applications, domain names, geographical indications and trade mark oppositions. It is also highly experienced in IP litigation, including anti-counterfeiting and anti-piracy actions. The practice is led by highly regarded senior associate Ivón Hernández, who has expertise in litigation and the co-ordination of trade mark filings outside Guatemala, including in Central America, the US and the Caribbean.
‘Ivón Hernández is one of the best IP lawyers in Guatemala of her generation.’
Procter & Gamble
US Dairy Export Council
Lorenzetti – Industrias Brasileiras Electrometalúrgicas
- Representing the US Dairy Export Council in the defence of a claim filed by the European Union against a resolution of the Ministry of the Economy that grants protection to the appellation of origin ‘Parmigiano Reggiano’ which identifies an Italian cheese but declares the name ‘Parmesan’ as generic.
- Advising Lorenzetti on matters relating to the unauthorised use of the client’s 3D trade mark for electric shower heads.
- Advising Industria de Hamburguesas (the local franchisee of McDonald’s) on IP matters, including trade mark filings.
CENTRAL LAW Guatemala
Regional firm CENTRAL LAW Guatemala is experienced in advising clients on managing and protecting their IP rights throughout Central America. The team, which is praised by clients for its 'deep understanding of intellectual property matters', regularly advises on trade mark and patent prosecutions, sanitary registrations, copyright, software matters and trade mark oppositions. Recently, it has been increasingly active in anti-counterfeiting cases, and has expanded its client base to include several well-known international brands. 'Exceptional' director Gustavo Noyola leads the practice, supported by associates Maria José Castellanos, who focuses on co-ordinating regional and local IP portfolios, and Fernando Díaz Durán, who specialises in IP litigation.
‘What makes this team unique is the ease with which they understand our interests as clients, and provide solutions to our needs quickly and effectively.’
‘Excellent communication and negotiating skills’.
‘Their client care is unsurpassed, as is their communication.’
‘It is a team with a lot of experience, knowledge and, above all, the willingness to get to know our cases and needs in order to provide the best possible solution. The service provided is very good.’
‘I think the standout feature of this firm is its willingness to get to know and understand the case, so that it can offer tailor-made solutions, rather than simply searching for a quick solution without getting to know the client’s needs. Their best qualities are their experience, legal knowledge and communication skills. They are very accessible and can explain to us in non-legal language the scope of the solutions and how this will meet our needs. I would like to mention Gustavo Noyola, who is outstanding. We feel like he is part of our team after his work on our project.’
‘The firm has a deep understanding and knowledge of intellectual property matters, including trade mark strategy, procurement and enforcement in Guatemala.’
‘Gustavo Noyola is an exceptional lawyer, with expertise in brand strategy and the management and enforcement of large portfolios. He works diligently and is able to provide unique solutions tailored to the client’s individual needs.’
‘It is a young and enthusiastic team that is knowledgeable about this area of law.’
American Standard Brands
- Advising UL on the protection of its brand in Guatemala, including co-ordinating enforcement actions.
- Advising LinkedIn on filing an application for the trade mark of the ‘IN’ design in Guatemala.
- Advised Lenzing on the registration of its trade marks in all Latin American countries.
Local firm Legalsa has a strong focus on IP litigation, with particular experience in anti-counterfeiting claims. The team also handles trade mark and patent prosecution and copyright protection for works of art, and is experienced in managing clients' IP portfolios in Guatemala and across Central America. It is especially active in the IT and financial services sectors, though its client base includes international brands from a variety of industries. Key contacts include the highly experienced Karina Calderón; IP litigation specialists Henry Comte (who is currently serving as a magistrate in the Constitutional Court) and Alejandro Penados; and associate Jose Bassila, who specialises in advising start-ups on IP issues.
Samsung Electronic Co
Puma Energy International
Pilgrims Operaciones Laguna
Distribuidora Sabesa de la Laguna
- Representing HOB Entertainment in litigation opposing the registration of the ‘House of Blues’ trade mark by a Guatemalan company.
- Acting for Colombina in an administrative appeal opposing the registration of the trade mark ‘Pirouline’ by DBC Corporation due to its similarity to the client’s ‘Pirulito’ trade mark in the same class.
- Advised América Móvil on the IP aspects of its acquisition of Telefónica’s operations in Guatemala.
In IP, Lexincorp's growing client roster includes a number of pharmaceutical and sanitary product companies, among others, which the team assists on the management of IP portfolios across Central America. It is active in the registration and renewal of trade marks and patents, and copyright matters. IP litigation also features among the firm's workload. The department is jointly led by Gonzalo Menéndez González, who focuses on non-contentious IP matters; Ovidio Parra, who has extensive experience in IP litigation; and managing partner Gonzalo Menéndez Park.
Turner Broadcasting System
Millicom International Celullar
Hewlett Packard Enterprise
Laboratorios Productos Industriales
Phibro Animal Health
Les Laboratoires Servier
- Advising Bajaj Auto on the registration and renewal of trade marks.
- Advising Turner Broadcasting System on the registration and renewal of trade marks.
- Advising MDC (a CPA Global company) on trade mark renewals, registrations of change of name, and patent annuity payments, registrations and renewals.
Palacios & Asociados/Sercomi
Local boutique Palacios & Asociados/Sercomi focuses on IP matters, including advising on trade marks, patents and designs, and handling litigation such as enforcement actions. The team assists with the management of IP portfolios throughout Central America and the Dominican Republic. Marco Antonio Palacios is a key practitioner in the department.
Highlighted for its 'strong understanding of intellectual property matters', A. D. Sosa & Soto specialises in the management of IP portfolios worldwide. In addition to IP filings, the team handles the enforcement of IP rights, including infringement and anti-counterfeiting actions. The practice also has a niche expertise in technology transfer, and advises on IP policies and agreements in the education sector. Practice head Juan Sebastián Soto is described by clients as 'the go-to person in Guatemala for complex IP matters'; he has particular experience advising on the protection of IP rights within distribution and franchise agreements. 'Excellent' manager Hania Krück is also a key lawyer in the team.
‘The team is excellent. Its handling of trade mark registrations in Guatemala and internationally is very efficient.’
‘Juan Sebastián Soto has an impressive understanding of the subject. He is the go-to person in Guatemala for complex IP matters.’
‘Hania Kruck is an excellent lawyer: her responses are almost immediate and her work is impeccable.’
‘What makes A.D. Sosa & Soto unique is the good professional relationship that we have had with this firm for several years. We would like to highlight its professionalism and great sense of ethics, which makes it one of the most highly regarded firms in Guatemala. The lawyers in the team are always ready to collaborate despite the workload that they might have.’
‘At A.D. Sosa & Soto, we would like to highlight the work of Hania Kruck and Sebastian Soto. Both lawyers represent their firm very well; their approach and the solutions they provide demonstrate their knowledge of intellectual property legislation in Guatemala. The work they do shows a high level of responsibility and commitment to giving the best customer service.’
‘A strong understanding of intellectual property matters, including trade mark strategy, procurement and enforcement in Guatemala.’
‘The team has exceptional lawyers, with expertise in brand strategy, management and enforcement of large portfolios. We work closely with Hania Kruck, who works diligently and is able to provide unique solutions tailored to client’s individual needs.’
Centro Cultural Español
Recon Oil Industries Private Limited
Procter & Gamble
The Gillette Company
Cooperativa De Productores De Leche Dos Pinos
Suzuki Motor Corporation
La Casa De Produccion
Siemens Medical Instruments
Controladora Vuela Compañía De Aviación
Universidad Del Valle De Guatemala
- Advised Compañia Distribuidora (Codisa) on the protection of its ‘Magia Blanca’ brand.
- Advising Universidad del Valle de Guatemala on its IP policies and legal framework for the protection and licensing of inventions.
BUFELCO Bufete López Cordero
BUFELCO Bufete López Cordero is particularly experienced in complex IP litigation, including opposition, infringement and cancellation actions, and has an active anti-counterfeiting practice. The team has experience in advising on trade marks, patents, copyright, designs and industrial models, and handling IP portfolios for local and international clients. Its client roster includes a number of leading global brands, among them technology, pharmaceutical and retail companies. Managing partner Guillermo López Davis leads the team, supported by associate Iris García King, who has particular experience in trade mark prosecution and the IP aspects of corporate transactions.
Carvajal Propiedades e Inversiones
- Successfully acted for Victoria’s Secret Stores Brand Management in an action seeking the nullity of the registration of the trade mark ‘Love Pink’ by a local retailer on the grounds of bad faith.
- Acted for Victoria’s Secret Stores Brand Management in anti-counterfeiting proceedings to protect the client’s trade marks in Guatemala.
Carrillo & Asociados is known for its experience in litigation relating to the counterfeiting and smuggling of products. The team also advises on patent prosecutions, trade mark registrations, utility models and industrial designs. It acts for domestic and multinational companies from a range of sectors, including pharmaceuticals, cosmetics, clothing, food and beverage, and communications. The practice is led by seasoned IP litigator Rodrigo Callejas; dispute resolution specialist Luis Mazariegos and associates Alfaro López, who advises on the full range of trade mark matters, and Carlos Meza are also key members of the team.
- Defending a client against the cancellation of a trade mark registration.
- Advised a client on producing a cease and desist letter over the unauthorised use of its trade mark.
QIL+4 ABOGADOS, S.A. has expanded its IP practice from advising on patent, trade mark and copyright applications to also become increasingly active in IP prosecutions and litigation, including handling criminal actions involving counterfeited products. The multi-disciplinary team can draw on the wider firm's strength in areas including dispute resolution, tax and corporate law to handle contentious issues and advise on the IP aspects of transactions. The practice is led by managing partner Marcos Ibargüen, who is experienced in IP litigation, and senior associate Alejandro del Valle, who advises on trade mark filings, patent prosecution and contentious IP matters.
PPG Industries USA
Cadejo Brewing Company
- Assisting a client with an agreement on the co-use of a similar trade mark.
- Advising a client on filing an opposition against the registration of a trade mark.
Praised for its 'prompt and personalised client service', local family firm Bermejo & Bermejo has a strong domestic and regional client base which spans a number of sectors, particularly the agrochemical, hospitality, airline and pharmaceutical industries. The team is experienced in advising on trade mark and patent filings in Guatemala and the management of IP portfolios throughout Central America. It also handles IP litigation. The 'first-rate' Luis Fernando Bermejo leads the practice.
‘Prompt and personalised client service. Immediate responses.’
‘They are reliable and do very good work. They report back to us with clarity and very fast.’
‘Luis Fernando Bermejo is a very good attorney. He is very accessible at any time and gives accurate and fast responses.’
‘Luis Fernando Bermejo is proactive, quick and agile, and provides a high-quality legal service.’
‘Bermejo & Bermejo provide a personalised service and keep in touch with the client, giving you a feeling of familiarity and closeness.’
‘Luis Fernando Bermejo tries to find the best solutions for clients’ difficulties and problems, which are based on legal provisions and allow the client to best achieve the necessary protection of their interests in Guatemala.’
‘The team are young, knowledgeable in their field and always available.’
‘Luis Fernando Bermejo is a first-rate lawyer, but what most stood out to me was his attention to detail.’
Exeltis Global Group
Adoc/Clark & Freeman
- Defending Tropic Air against an opposition to the registration of its primary trade mark.
Established in Guatemala in 2017 through the merger of global firm Dentons with regional practice Muñoz Global, Dentons Muñoz acts for an extensive roster of Central American clients. The growing IP practice has experience in the protection and enforcement of trade marks, patents, designs and trade secrets, and has been increasingly active in copyright matters, particularly in the film and technology sectors. 'Excellent' practice director Gabriela Gándara Ulloa also has experience in IP litigation.
‘Gabriela Gándara is excellent.’
La Danta Films
Ferretería de la Construcción
Super de Alimentos
Universidad Francisco Marroquín
- Advised Wonder Pictures on the IP issues related to the production of a film in Guatemala, including the management of copyright derived from the film and the distribution of royalties.
EY Law Central America handles IP matters across the region, including prosecution, renewals and oppositions, and has expanded its practice to cover reviewing the value of clients' IP assets, advising on IP-related contracts and assisting with sanitary registrations. The team acts for local and international clients from the consumer products, retail, food and beverages, pharmaceutical, banking, real estate and technology sectors. Enrique Möller Sánchez, who has experience in contentious IP matters, and manager Alma Mejía are names to note.
Aguilar y Revenga
Innovaciones Tecnológicas De Guatemala
Asesores Del Caribe
Avalon Contact Center y BPO
Zaimella Del Ecuador
Prosegur Compañía De Seguridad
Productora La Florida
- Advising Aguilar y Revenga on the protection of IP.
García & Bodán
With offices in Guatemala, El Salvador, Honduras, Nicaragua and Costa Rica, García & Bodán is able to advise on the management of IP portfolios and health registrations across the region. The team, which has expertise in trade marks, patents, industrial designs and utility models, is also active in IP litigation and enforcement. Associate Elizabeth Flores is the coordinator of the IP practice in Guatemala and is experienced in both contentious and non-contentious IP matters.
Grupo Lala de México
The Kraft Heinz Foods Company
- Advising international brands such as Grupo Lala de México on the management of their trade mark portfolios in Guatemala.
LatinAlliance Guatemala frequently draws on the support of the firm's offices in El Salvador, Nicaragua, Costa Rica and Honduras in IP matters. The team specialises in advising leading Latin American pharmaceutical companies on the management of their trade mark portfolios, patents, licensing agreements and transfer contracts. Ruth Olivares, who heads the Guatemalan practice alongside El Salvador-based associate Fabiola Torres, has experience in trade mark registration procedures throughout Central and South America and in IP litigation.
Xtreme Soluciones Inteligentes
Yobel SCM Logistics
- Advising Laboratorios Medikem on the management of its IP portfolio in Guatemala.
Central American firm Sfera Legal is experienced in a range of IP matters, particularly trade mark registrations, throughout the region. The team also handles IP litigation, including infringement and anti-counterfeiting actions. Clients include telecoms, food and beverages, media, healthcare and technology companies. The practice is led by associate Melanie Avea Sandoval, who handles registrations, IP disputes, and health and regulatory matters; she and managing partner Ignacio Andrade Aycinena are described by clients as 'specialists with a lot of experience'.
‘We are pleased with their punctuality and immediate attention to our requirements. Their advice is very thorough and they are precise in their legal opinions. They have a proactive approach and always seek out solutions to the legal difficulties that arise in every process.’
‘Melanie Avea and Ignacio Andrade are specialists with a lot of experience.’