Intellectual property in Guatemala

BLP

BLP‘s ‘excellent‘ team has an impressive client roster of major multinationals from the technology (including fintech) and pharmaceutical sectors, among others. In addition to advising on trade mark prosecution and protection, the team has expertise in patents, copyright, advertising and consumer protection issues, and health registrations, and the regional firm regularly assists with the management of clients’ IP portfolios across Guatemala and Central America. Anti-counterfeiting actions, judicial and administrative IP litigation, and advice on the IP aspects of high-value M&A transactions are all additional areas of strength. The team is led by Luis Ruiz, who co-heads the firm’s region-wide IP practice, and director Pamela López, who has extensive experience in the management of IP portfolios, and has been particularly active recently in advising disruptive technology companies. The arrival of associate Marleni García from an in-house role at Cemar in November 2020 further boosted the team’s strength in this area. Since publication, López has been promoted to partner - effective as of March 2022.

Practice head(s):

Luis Ruiz; Pamela López

Testimonials

‘They have the knowledge and experience necessary to efficiently and adequately represent clients, providing advice as intellectual property experts. They are reliable and fast.’

‘The firm has great, well-known lawyers with experience in our industry.’

‘Excellent professionals who are highly capable.’

Key clients

MasterCard

YouTube

Spotify

GlaxoSmithKline

Amazon

Philips Electronics

Abbott Laboratories

Home Box Office (HBO)

BioNTech

Paypal Holdings

Work highlights

  • Acting for GlaxoSmithKline in a case of alleged counterfeiting of the client’s pain relief product Panadol.
  • Advised HBO on the IP issues relating to the launch of its video-on-demand subscription service.
  • Advised Paypal on the IP licensing, advertising and data privacy issues in connection with the international expansion of its payment processing services.

Consortium Legal

Highly regarded for its practice and its track record‘, Consortium Legal draws on its position as a leading regional firm to advise clients on the management of their trade mark portfolios in Guatemala and Central America (and often assists with IP issues in Europe and the rest of Latin America). The team, which acts for a number of major multinationals, particularly in the food and beverages and pharmaceutical sectors, is also skilled in IP litigation, handling infringement, cancellation and unfair competition actions. Another key offering is the firm’s internal software system, which allows clients to send instructions in an automatic format and stores all their trade mark and patent information. ‘Outstanding‘ practice head Ninoshka Urrutia also has expertise in the protection of geographical indications, domain names and copyright. Associate Stephanie Arévalo directs the firm’s patent department and international department, which specialises in the registration of trade marks worldwide.

Practice head(s):

Ninoshka Urrutia

Testimonials

‘Consortium Legal is a well-known firm in Guatemala. Ninoshka Urrutia is a very distinguished attorney and knowledgeable in this area of practice. She has about 20 years of experience in the area and has been a professor at several recognised universities in the country.’

‘Personalised attention at all times makes this practice unique. The IP team make you feel like you are the only client, and that is something really hard to find nowadays.’

‘Ninoshka Urrutia has outstanding knowledge of IP matters, local and international. Stephanie Arevalo shows attention to detail, and has great knowledge to assist with clients’ queries.’

‘Knowledge of intellectual property matters and good contacts.’

‘Ninoshka Urrutia is an outstanding lawyer – knowledgeable about the subject matter, with an impeccable approach to cases and the ability to multitask.’

‘The Consortium team in the field of intellectual property is highly regarded for its practice and its track record. Ninoshka Urrutia who leads the firm’s team is an excellent professional.’

‘Ninoshka Urrutia is an extremely active lawyer in intellectual property matters in Guatemala and her participation in different chambers and committees really makes a difference. Ninoshka, in addition to being an excellent lawyer, is extremely ethical.’

‘Their personalised attention, the fact that they are always friendly and available, and above all their very professional and ethical approach is what we value the most as clients. Advice is always given in a professional way, taking into account all the aspects of the case and all the pros and cons so that we can make the best decisions as clients.’

Key clients

CMI IP Holding

Industrias Licoreras de Guatemala

Productos Alimenticios Diana

Wal-Mart de México

Colgate Palmolive

Arabela

Laboratorios Arsal

Imperquimia

Fid

Laboratorios Químico-Farmacéuticos Lancasco

Work highlights

  • Successfully represented Colgate-Palmolive in a counterfeiting case.
  • Advising Laboratorios Químico-Farmacéuticos Lancasco on the management of its portfolio in Guatemala and Central America.
  • Advising Productos Alimenticios Diana on the management of its portfolio.

Mayora & Mayora, S.C.

The IP arm of Mayora & Mayora, S.C., Mayora IP, S.A. is highlighted for its ‘extensive knowledge‘ of trade mark, patent, copyright, domain name and trade secrets matters. The team is particularly active in the management of trade mark portfolios, including for a number of international household names, and regularly advises on IP protection in the Northern Triangle region of Central America, drawing on the support of its offices in Honduras and El Salvador. IP litigation is also a notable area of expertise for the team, which regularly handles infringement, nullity and cancellation actions. ‘Well-respected‘ managing partner Eduardo Mayora and administrative partner Santiago Mayora lead the practice. At the senior associate level, Hugo Rivas leads the patent department, regularly handling international PCT filings for local clients, and Byron Deulofeu is experienced in contentious IP matters.

Practice head(s):

Eduardo Mayora; Santiago Mayora

Testimonials

‘What makes this firm unique is the comprehensive service it provides to clients in each area of law, with an emphasis on intellectual property. Santiago Mayora, Eduardo Mayora and Hugo Rivas are standout individuals.’

‘Mayora IP was key to our success when launching our company. We are very satisfied with the service provided to us by the firm and will continue working with them in the future.’

‘All team members are always very accessible and quick to answer and attend to different issues. They provide customised solutions and have the ability to understand our needs and objectives as a company. They provide confidence and security, which is very valuable because they have the ability to guide us, understanding the business and accompanying us every step of the way to achieve what we need. They have connections in Latin America as members of Lex Mundi, which is very important to us.’

‘They have extensive knowledge in intellectual property – as well as in other branches of the law – which helps to provide an excellent service. There is excellent teamwork, transparency and they act quickly to resolve conflicts. Eduardo Mayora and Santiago Mayora are very well-respected lawyers, with a broad practice which shows a vast amount of knowledge, offering clients excellent quality.’

Key clients

McDonald’s Corporation

Diageo

Claro

Honda Motor Company

Ferrari

Banco Cuscatlán

Cargill

Gucci

Amazon

Laboratorios Vijosa

Work highlights

  • Advised Vinoteca on a copyright assignment agreement relating to the creation of a digital menu service.
  • Advised US firm McCarter English on patent matters for a phamaceutical client.
  • Acting for a multinational corporation in a series of infringement cases.

Palomo Abogados

Combining 'technical legal knowledge with a human touch', Palomo Abogados is experienced in trade mark, patent and copyright registration and enforcement, as well as in developing areas of IP including technology transfers, app development software and biotech-related inventions. The team is also well versed in IP litigation, particularly anti-counterfeiting actions, in Guatemala and Central America. Its wide-ranging client base includes companies from the technology, industrial machinery, retail, financial services, and food and beverages sectors, and it also offers a pro bono programme, Protega tu marca, which assists small businesses and entrepreneurs. The practice is jointly led by Héctor Palomo, who is particularly experienced in contentious matters, and director Sandra Iriarte, who handles the management of IP portfolios for national and international clients. Associate Paula Passarelli leads the department's international practice, assisting clients with the administration of their IP portfolios throughout Latin America.

Practice head(s):

Hector Palomo; Sandra Iriarte

Testimonials

‘The team compares very favourably with others in the market, particularly thanks to its extraordinary, unheard of level of responsiveness, personalised and client-focused service and flexibility to the clients’ needs.’

‘Hector Palomo and Sandra Iriarte both have excellent knowledge, proposing good solutions that take into account all aspects of the case. They both have a very detailed approach and are very committed.’

‘What makes this firm unique is the combination of technical legal knowledge with a human touch. Hector Palomo and Sandra Iriarte have proven experience and it gives you peace of mind to know that they are always up to date with your matters. Paula Pasarelli provides agile and clear assistance.’

‘They are very capable and very knowledgeable, but they are also humble, kind and always concerned about your affairs. They provide exceptional follow-up and are always available to clarify any doubts.’

‘By far the best firm I have worked with in Guatemala. Efficient and with mastery of the subject.’

‘Availability and knowledge of the subject.’

‘We have worked together for several years on various IP issues. They have a lot of experience, mainly in international trade mark piracy matters.’

‘They stand out for their personal and professional treatment of clients and colleagues.’

Key clients

Lincoln Electric

Starbucks Coffee Company

React The Anti-Counterfeiting Network

Grupo Salinas (Elektra, TV Azteca, Banco Azteca, Fundación Azteca)

Gregorj  IP

Arochi & Lindner

Lloreda Camacho & Co.

Secretariat for Central American Economic Integration (SIECA)

Brooks Kushman

Promark

Work highlights

  • Advising Lincoln Electric on prosecution and enforcement of its IP rights, as well as preventing the imports of counterfeit products, in various countries in Latin America.
  • Advising Starbucks Coffee Company on the management of its Guatemalan IP portfolio.
  • Representing React in Guatemala and assisting with the protection of the IP rights of its members, such as Novartis, FIFA, Panasonic, Philips, Apple and Samsung, among others.

Viteri & Viteri

The experienced duo of Ernesto José Viteri Arriola and senior partner Ernesto Ricardo Viteri Echeverria leads the team at IP boutique Viteri & Viteri. The firm advises on trade mark, patent, industrial design and trade secret matters for a range of domestic and international clients, with expertise in the retail, cosmetics, pharmaceutical and technology sectors.

Practice head(s):

Ernesto José Viteri Arriola; Ernesto Ricardo Viteri Echeverria

A. D. Sosa & Soto

A. D. Sosa & Soto is experienced in the management of IP portfolios in both Guatemala and internationally, with an independent IP division, Innova IP, which provides support to clients with IP matters throughout Latin America. In addition to advising on IP filings, the team handles litigation, particularly anti-counterfeiting and infringement actions. It also has a notable specialism in technology transfer matters, advising clients in the education sector on spin-offs and IP policies and agreements. The 'excellent' Juan Sebastián Soto leads the practice and is experienced in contentious IP matters and in the IP issues relating to distribution and franchise agreements. Manager Hania Krück is noted for her 'extensive knowledge', particularly in technology transfer matters.

Practice head(s):

Juan Sebastian Soto

Testimonials

‘What makes the firm unique is the agility and practicality of its approach to matters.’

‘Juan Sebastián Soto is an excellent lawyer and his dedication to his clients is unmatched.’

‘We have worked with this firm for more than ten years and the service has always been of the highest quality. For this reason we exclusively use AD Sosa & Soto for all our affairs in Guatemala.’

‘Hania Krück stands out for the extensive knowledge she has in this area of law. She always provides us with the best legal strategies for our clients. Likewise, she shows total commitment to clients’ projects and is always available if required. Additionally, she has an excellent ability to adapt to the individual needs of each client.’

‘One characteristic that distinguishes AD Sosa & Soto is its ability to adapt in order to stay current in the legal market, which we consider to be its main strength.’

‘It is a very competent team. We would like to highlight their professionalism and extensive knowledge of legal issues, both in Guatemala and internationally.’

Key clients

Autopartes

Aseguro

Flormar

Trademarkhost

Grupo Meme

Asociacion Alterna

Novabox

Laboratorios Drogavet

Lenzing Aktiengesellschaft

Procter & Gamble

Gillette

Grupo Disagro

Otis McAllister

PriceSmart

Cooperativa de Productores de Leche Dos Pinos

Suzuki Motor Corporation

GlaxoSmithKlein (GSK)

La Casa de Produccion

Siemens Medical Instruments

Controladora Vuela Compañía de Aviación (Volaris Airline)

Universidad del Valle de Guatemala

Grupo Autocar

Lululemon Athletica Canada

Work highlights

  • Advised Flormar on obtaining health approvals for its make-up products.
  • Assisted Planta Industrial de Guatemala with an action to confiscate counterfeit products using the client’s “Magia Blanca” trade mark.
  • Advising Universidad del Valle de Guatemala on updating its intellectual property policy to obtain approval from the World Intellectual Property Organisation.

Arias

Arias regularly advises on the filing of trade marks and patents in Guatemala and Central America, often assisted by its offices throughout the region. The team has additional experience in contentious IP matters, including anti-counterfeiting claims, as well as in domain name, geographical indication and copyright issues, advertising and software licensing. Clients include major international names from the pharmaceutical, automotive, cosmetics and consumer product manufacturing sectors. Senior associate Ivón Hernández leads the practice, with experience in IP litigation, IP-related due diligence and the coordination of clients’ trade mark and patent portfolios outside Guatemala. Head of dispute resolution Mario René Archila brings additional litigation expertise to the team. Since publication, Hernández has been promoted to senior counsel - effective as of March 2022.

Practice head(s):

Ivón Hernández

Key clients

Procter & Gamble

Sanofi

Bayer

AstraZeneca

US Dairy Export Council

Inditex

Philip Morris Products

Lorenzetti S/A Industrias Brasileiras Electrometalúrgicas

KPMG

Boehringer Ingelheim International

Work highlights

  • Representing the US Dairy Export Council in the defence of a claim brought by the European Union, challenging a resolution of the Ministry of the Economy which grants protection to the appellation of origin “Parmigiano-Reggiano” but declares the name “Parmesan” to be generic.
  • Acting for Industrias Sol in a dispute with a trade mark squatter which tried to register the trade mark “Sol”.
  • Defending Argentina wine producer Federación de Cooperativas Vitivinícolas Argentinas (Fecovita) against an opposition to its registration of the trade mark “Bodega Toro Centenario”, filed by Spanish company Miguel Torres based on the trade mark “Sangre de Toro”.

CENTRAL LAW Guatemala

Always available with clear and assertive suggestions‘, Central Law Guatemala has wide-ranging experience in IP matters, with a practice spanning the filing and protection of trade marks, patents, copyrights, trade secrets, and health registrations for food, pharmaceutical, cosmetic and veterinary products. Anti-counterfeiting actions are also a key area of strength for the team, which handles claims for a number of major multinational clients. With offices across Central America, the team is also able to provide regional protection for clients’ IP rights. At the helm of the practice is the ‘proactive and smartGustavo Noyola, who was promoted to partner in June 2020. Since publication, Noyola has left the firm to join IDeas trademarks & patents – effective as of May 2022.

Testimonials

‘Great team, always available with clear and assertive suggestions.’

‘Gustavo Noyola is proactive and smart in solving complex issues regarding trade mark prosecutions and litigation, helping us in other jurisdictions also. We use Gustavo as a go-to when it comes to trade mark issues in Central America, not just in Guatemala.’

‘The service is excellent. Their commitment, speed of responses and design of strategy stand out.’

‘Gustavo Noyola is always available to assist his clients and offers efficient alternatives to resolve clients’ difficulties. He almost always finds a solution, even in the most complex cases.’

‘Attention to details and the analysis of additional topics and issues that could be of interest to the client are the firm’s main strengths.’

‘Personalised and direct client service. Lawyers are always available, with fast and efficient answers to any query. Gustavo Noyola stands out.’

‘The intellectual property team always assists with questions and emails and keeps clients informed about the progress of their cases.’

‘Gustavo Noyola delivers excellent client service. His advice is personalised and he is always ready to go the extra mile for his clients.’

Key clients

Apple

UL, LLC

Linkedin Corporation

Bytendance (Tik Tok)

Aje Group Equifax

APM Terminals

Nissan Motor

Work highlights

  • Assisted Apple against counterfeits in Guatemala.
  • Assisted UL against counterfeits in Guatemala.
  • Assisted LinkedIn Corporation in obtaining recognition of its trademark IN and square device.

Legalsa

Legalsa‘s ‘very experienced‘ team advises clients on the management of their IP portfolios throughout Central America, acting for regional and international companies from the energy, sport, technology, financial services and aviation sectors, among others. As well as advising on oppositions and renewals, the team assists with the IP aspects of M&A and is skilled in IP litigation, particularly cases involving trade mark infringements by third parties on social media. The full-service firm also has a specialist pro bono practice for start-ups, led by associate José Bassilla, and a newly launched e-commerce programme, both of which offer advice on IP issues (among others). The ‘excellentKarina Calderón leads the team, supported by associate Oscar Herrera. Alejandro Penados also assists with contentious matters.

Practice head(s):

Karina Calderón

Testimonials

‘Our experience with Legalsa has been very good. Communication, both internally and with clients, is smooth and on time. Likewise, both partners and associates work together on our matters, which as a client is appreciated. Knowing the team gives us peace of mind that their advice has the support and foundation that we require, which has been reflected in the cases we have had together.’

‘The quality that makes Legalsa stand out over other firms is the clarity in the answers and information they provide, which is also delivered in a timely manner. We would like to highlight Karina Calderon and Oscar Herrera.’

‘The team are very experienced in their field and always respond promptly and diligently. Their advice is accurate and comprehensive.’

‘Karina Calderón stands out for her kindness, availability and promptness in answering our questions.’

‘The work of the entire Legalsa team is highly personalised. You receive continuous advice, always in detail, and the lawyers’ doors are always open to clients.’

‘The firm is widely known in Guatemala and one of the best in the field of IP. The team is young and knowledgeable, with excellent service and extensive mastery of the subject matter. Karina Calderón and Oscar Herrera are excellent. Their expertise in this area gives clients confidence.’

‘Excellent, personalised client service.’

Work highlights

  • Advising the owner of a major Guatemalan rum brand on the management of its large portfolio of distinctive signs and on trade mark infringements on social media.
  • Advising a major technology company on challenging the unauthorised use of its registered trade marks by the Guatemalan transportation company Yo Cargo.
  • Advising an educational organisation on the protection of its brand across Central America, including managing several applications in different countries.

Palacios & Asociados/Sercomi

IP boutique Palacios & Asociados/Sercomi advises on the management of trade mark and patent portfolios in Central America and the Dominican Republic. The practice led by Marco Antonio Palacios is noted for its strength in IP enforcement.

Practice head(s):

Marco Antonio Palacios

Alta QIL+4 Abogados

Alta QIL+4 Abogados frequently handles trade mark, patent and copyright registrations, and is also experienced in IP litigation, drawing on the strength of its leading dispute resolution practice. In addition, the firm advises on regional strategies for the protection of clients' IP across Central America. Key sectors of strength include the automotive, financial services, construction, food and beverages, pharmaceutical, real estate and technology industries. The practice is jointly led by Marcos Ibargüen, who is particularly experienced in contentious matters, and senior associate Alejandro del Valle.

Practice head(s):

Marcos Ibarguen; Alejandro Del Valle

Key clients

Shiseido (Ladas & Parry)

PPG Industries USA (Ladas & Parry)

Campbells’

Grupo Onyx

Alltech

ASKO Appliances

Sonora Dinamita

Cadejo Brewing Company

Work highlights

  • Acting for Marimba Chapinlandia in an ongoing dispute with Comercial Genuine and the State of Guatemala over the infringement of the client’s music authorship rights.

BUFELCO Bufete López Cordero

A strong local practice, Bufelco Bufete López Cordero is experienced in contentious and non-contentious matters concerning trade marks, patents, copyright, and industrial designs and models. The team advises on the IP portfolios of local and international clients, particularly from the technology, pharmaceutical and retail sectors. Managing partner Guillermo López Davis is the name to note.

Practice head(s):

Guillermo López Davis

Carrillo & Asociados

Carrillo & Asociados handles a high volume of trade mark registrations, both in Guatemala and internationally, as well as advising on patents, utility models and industrial designs. The team is skilled in contentious IP matters, most notably anti-counterfeiting litigation, where practice heads Luis Mazariegos and Rodrigo Callejas are particularly active. The cosmetics, pharmaceutical, fashion, food and beverage, and communications sectors are areas of particular strength. Associates Alfaro López, who focuses on the management of clients' IP portfolios in Guatemala, and Carlos Meza, who also advises on health registrations, are also key contacts.

Practice head(s):

Luis Mazariegos; Rodrigo Callejas

Key clients

Moeller IP

Alcon Laboratories

Fundación George Lucas

Work highlights

  • Acted for Fundación George Lucas in an infringement case relating to its “Edutopia” trade mark.

Lexincorp

As a regional firm, Lexincorp is well placed to advise both domestic and international clients on the management of their IP portfolios across Central America. The team is highly experienced in the registration and renewal of trade marks, industrial designs and patents, and also handles contentious matters. At the head of the practice, the 'excellent' and 'very attentive' Gonzalo Menéndez González advises on trade mark and patent prosecutions, revocations and contentious-administrative proceedings, while Ovidio Parra has longstanding experience in IP litigation.

Practice head(s):

Gonzalo Menéndez González; Ovidio Parra

Testimonials

‘Friendliness and good service.’

‘Gonzalo Menendez is an excellent lawyer and a great person. He is very attentive to all clients’ requests.’

Key clients

Bajaj Auto

Warner Media

MDC A CPA Global Company

Anaqua Services

Millicom International Celullar

Hewlett Packard Enterprise Company

Laboratorios Productos Industriales (Laprin)/Eurofarma Guatemala

Phibro Animal Health

Marriott Worldwide

Les Laboratoires Servier

Work highlights

  • Advising Millicom International Celullar on the registration and defence all of its IP in Guatemala.
  • Advising Warner Media on the registration and defence all of its IP in Guatemala.
  • Advising Marriott Worldwide on the registration and defence all of its IP in Guatemala.

Novales Abogados

Novales Abogados has notable expertise in copyright matters, as well as advising on the registration and renewal of patents, trade marks, industrial designs and distinctive signs, with experience in the regional management of IP portfolios throughout Central America. The team also handles IP litigation, including unfair competition and anti-counterfeiting actions. Pharmaceutical companies make up a large part of the client base, in addition to food, transport, fashion and financial services companies. Javier Novales Schlesinger leads the team with associate María Cristina Esteban, who has particular experience in trade mark matters.

Practice head(s):

Javier Novales; María Cristina Esteban

Key clients

Laboratorio y Droguería Donovan Werke

Global Farma

Muñoz Abogados

Cal y Mayor y Asociados

Industrias VSG

Tampa Armature

My Kyoung Kim/Cielo

Droguería y Laboratorio Pharmalat

Samayoa Hermanos/VPHARMA

Laboratorios y Droguería Pharmadel

Work highlights

  • Advising Spey Medical on its expansion into the Guatemalan market and the registration of its trade marks.
  • Assisting Colombian firm Muñoz Abogados with providing advice to pharmaceutical laboratory Procaps on the management of its IP portfolio in Guatemala.
  • Advising Guatemalan microbrewery Industrias VSG on the management of its IP portfolio, including an ongoing dispute with Cervecería Centroamericana, a leading company in the Guatemalan beer market, which filed an opposition to the registration of client’s “Antigua Cerveza” trade mark.

Bermejo & Bermejo

The 'client-focused, proactive and dedicated' team at Bermejo & Bermejo is experienced in trade mark and patent registrations and renewals in Guatemala, and also advises on the management of clients' IP portfolios across Central America and in other Latin American countries. The team acts for a number of large multinational and multilatina clients from the pharmaceutical, agrochemicals and paint industries. 'Excellent' practice head Luis Fernando Bermejo also handles contentious matters.

Practice head(s):

Luis Fernando Bermejo

Testimonials

‘They do not see you as just another client: they put themselves in your company’s shoes and provide excellent client service and follow-up.’

‘They provide good support and do not just let the time pass. They provide advice and a good client service throughout the process.’

‘The team is highly client-focused, proactive and dedicated.’

‘Luis Fernando Bermejo is totally committed to his clients. He is always available, and through any medium. He is proactive and always tries to find solutions to clients’ problems.’

‘Bermejo & Bermejo offers excellent prices, quick responses, detailed solutions to complex problems, and the ability to warn of any eventuality in the trade mark registration process to avoid complications.’

‘Luis Fernando Bermejo has outstanding legal knowledge and ability.’

‘Prompt responses, comprehensive advice and expertise in the subject matter, friendly approach.’

‘Luis Fernando Bermejo is excellent. He is quick to respond and knowledgeable about the case.’

Key clients

Grupo Solid (Guatemala)/Lapco Corporation and affiliates

Novartis

Rainbow Agrosciences

Kimberly-Clark Worldwide

Tropic Air

Pollo Brujo de Centroamérica

Empremax

Agrocentro and affiliates (Brandmaster)

Kellogg Company and affiliates

Carso Group (Servicios Condumex and Servicios Swecomex)

Exeltis Global Group (Altian Pharma and Altian Pharma Gruppe de Centroamérica)

Work highlights

  • Advising Mexican conglomerate Grupo Carso on the strategy for the clearing and registration of its trade marks “Grupo Carso”, “Carso Infraestructura y Construcción”, “CICSA” and “Nacel” in Central America (Guatemala to Panama), Colombia, Ecuador, Peru and the Dominican Republic.
  • Assisted Pollo Brujo with obtaining recognition of a trade mark as a “notorious mark” in an opposition case against a competing mark.
  • Defending Empremax in several administrative cases arising from   oppositions to the registration of its trade mark “Naturissimo” by several competing corporations.

Dentons Munoz

The team at Dentons Muñoz frequently works with the global firm's other offices in Central America to advise on the protection and enforcement of trade marks, patents, copyright, industrial designs and other IP rights throughout the region. It has a strong client base of regional companies, with niche expertise in advising clients in Guatemala's film and entertainment industry. IP director Gabriela Gándara Ulloa, who is experienced in contentious and non-contentious matters, leads the team with managing partner Luis Abundio Maldonado.

Practice head(s):

Gabriela Gándara; Luis Abundio Maldonado

Testimonials

‘The team is extremely collaborative. Its service level and speed of response has also been very positive.’

‘Their advice has been very focused on giving us solutions and alternatives to meet the needs of our business.’

Key clients

La Danta Films/ El Cadejo Blanco

Alimentos Ideal

Ferretería de la Construcción

CEMIX (Pegamorteros de Guatemala y Cemix)

Alimentos Prosalud

Super de Alimentos

Intercorp Conectivity

Plantaciones Nahualate

Work highlights

  • Advising Guatemalan film production company La Danta Films on the related legal issues which arose during the production of the film “El Cadejo Blanco”.
  • Advised Plantaciones Nahualate on a strategy to protect its IP assets, particularly trade marks, during the expansion of the business and export of goods to Central America, the US, the EU, Russia and Belarus.
  • Advising CEMIX on managing its trade mark portfolio in Central America (including Panama) and other Latin American countries.

Eproint

Originally launched in Costa Rica, Eproint now has offices throughout Central America and the Caribbean, and opened its Guatemalan practice in 2018. The firm focuses on trade mark and patent prosecutions, in addition to advising on copyright matters. It has a strong international client base, with a particular emphasis on acting for pharmaceutical companies, as well as an increasing number of clients from the automotive and chemical industries. The 'hardworking and experienced' Vanessa Castro leads the practice.

Practice head(s):

Vanessa Castro

Testimonials

‘What makes Eproint Guatemala’s practice unique is the years of experience behind its head IP attorney, Vanessa Castro, who has a vast knowledge not only of IP but of IP in Guatemala and Guatemalan institutions. Fast response times and sound advice make us feel like the most important client.’

‘Vanessa Castro is very hardworking and experienced. She is always willing to help and provide information when requested with a lot of attention to detail. She is also very easy to work with, providing high-quality work.’

‘Great client service.’

EY Law Central America

The management of clients’ IP portfolios both locally and regionally is a key part of the practice of EY Law Central America, which is experienced in the filing and defence of trade marks and patents, and also has growing expertise in IP issues relating to the digital economy. Its key sectors of strength are consumer products, food and beverages, pharmaceuticals, banking, hospitality and technology. Following the departure of Ruby Asturias in July 2021, Costa Rica-based Hernán Pacheco, the managing partner of EY Law Latam North, and managers Mirla Tubac and Fernando Rosales Gramajo are the key contacts.

Practice head(s):

Hernán Pacheco

Testimonials

‘A good team.’

‘They provide a good service.’

Key clients

Florida Bebidas/FIFCO

Industrias Alimenticias Kern’s

Zaimella ZMLTP

Leo Pharma

Gazprom Neft

Ducasse Industrial

Activa

Inteligencia Kinética Artificial

Prosegur Compañía de Seguridad

Grupo Remm

Asesores del Caribe

Iluminación Continental

Work highlights

  • Advising Florida Bebidas on the protection of its IP portfolio.
  • Advising Industrias Alimenticias Kern’s on the protection of its IP portfolio.
  • Advised Inteligencia Kinética Artificial on the patentability of an artificial intelligence device.

García & Bodán

Central American firm García & Bodán frequently works with its other offices to advise clients on the management of their IP portfolios and health registrations in the region (including in Belize and Panama). The team also has experience in judicial and administrative IP litigation and enforcement. El Salvador-based Julio Vargas is the regional head of IP, while senior associate Elizabeth Flores leads the practice in Guatemala and is experienced in the registration of trade marks, patents, industrial designs and utilities models.

Practice head(s):

Elizabeth Flores

Key clients

Grupo Lala de México

Kraft Heinz Foods Company

LACA LACA

Novo Nordisk

Work highlights

  • Advising Grupo Lala de México, Crisa Libbey de México and Libbey Glass, Advance Magazine Publishers (Condé Nast) and Laboratorios Magnachem on the management of their trade mark portfolios in Central America.
  • Acting for restaurant Lala Laca in administrative actions challenging the infringement of its brand in Central America, Colombia and the EU.

LatinAlliance Guatemala

LatinAlliance Guatemala is particularly experienced in advising clients from the pharmaceutical and healthcare sectors, as well as food and beverages and retail companies, ranging from large multinationals to entrepreneurs and small businesses. The team advises on the management of trade mark and patent portfolios, as well as licensing agreements and transfer contracts, and offers a software system, Latin Files, to assist clients with the management of their trade mark portfolios in Central America, the Dominican Republic, Mexico and Colombia. El Salvador-based Fabiola Torres leads the team with Ruth Olivares, who is experienced in both contentious and non-contentious IP matters.

Practice head(s):

Fabiola Torres

Key clients

Altian Pharma (InsudPharma Group)

Chemo Group

Creativa Consultores

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

Laboratorios Medikem

Alimentos Ideal

Profil

Yobel Supply Chain Management

Industria La Popular

Grupo HMM

Caribbean Probiotics

Work highlights

  • Advising Altian Pharma on the management of its entire trade mark portfolio for countries in Central America, and the Dominican Republic.
  • Assisted Colombian firm Buriticá Abogados with advising Conair Corporation on the registration of an industrial design.
  • Assisted Chemo Group with six patent searches before the Intellectual Property Office for new product releases.

Sfera Legal

Sfera Legal expanded its IP offering through a strategic alliance formed with IP enforcement boutique IPE Americas in September 2020, bringing in the experienced Virginia Servent Palmieri, who specialises in anti-piracy matters, to lead the IP department alongside managing partner Ignacio Andrade Aycinena. The team regularly advises on trade mark filings and oppositions, and also handles infringement and anti-counterfeiting actions, particularly in the entertainment and media sector. It also advises telecoms, food and beverages, healthcare and technology clients, often working with its other Central American offices to provide a regional service.

Practice head(s):

Virginia Servent Palmieri; Ignacio Andrade Aycinena

Testimonials

‘Sfera has a high level of specialisation in piracy issues. It is an excellent team with great technical capacity.’

‘Virginia Servent is one of the best lawyers in Latin America for anti-piracy issues, especially when it comes to television issues. She has experience both in business and in private practice, which gives her a good perspective.’

Key clients

Comunicaciones Celulares

Uber Technologies

The JM Smuckers

Ivoclar Vivadent

Made in Japan

Trade Corporation

Marindustrias

Laboratorios Senosiain

Grupo Rotoplas

Qualcomm

Cisco Technology

Universidad del Valle de Guatemala

Work highlights

  • Provided pro bono advice to the Universidad del Valle de Guatemala on a study of freedom of operation for mechanical ventilators developed by university students.