Intellectual property in Nicaragua

Guy José Bendaña-Guerrero & Asociados

The powerhouse intellectual property group at boutique firm Guy José Bendaña-Guerrero & Asociados remains a market leader, providing a full service to international clients which covers all matters related to patents, trade marks, industrial designs and copyright. The group is headed by respected IP authority Guy José Bendaña-Guerrero, trade mark expert Julián Bendaña-Aragón and Blanca de Bendaña, with support from senior associate Ana Jeanssy Fornos. The team’s client roster includes household names such as Microsoft, Chanel, Pfizer and Toyota, across the pharmaceuticals, software, automotive, apparel, food and energy sectors.

Practice head(s):

Guy José Bendaña-Guerrero; Blanca de Bendaña; Julián Bendaña-Aragón

Key clients

Abbott Laboratories

Acer

Authentic Brands Group

Cargill

Chanel

General Electric Company

Hanesbrands

Louis Vuitton Malletier

Mars

Microsoft Corporation

Payless Shoesource Worldwide

Pfizer

PriceSmart

S.C. Johnson & Son

Toyota Motor Corporation

Unilever

Zoetis

Work highlights

  • Represented Official Pillowtex in a nullity action against the company Cannon Pillows to cancel its trade mark registration for CANNON AND DESIGN in class 20.
  • Represented Ugly in preventing a local food and drink establishment from using its well-known trade mark COYOTE UGLY.
  • Advised PriceSmart on an extrajudicial action to halt the infringement and non-authorised use of the trade mark PRICEMARK in several establishments located in various cities in Nicaragua.

Alvarado y Asociados

The intellectual property team at Alvarado y Asociados advises a wide range of multinational clients on copyright, trade mark and patent related matters. The group provides a full service, handling issues from registrations and searches to oppositions and infringement actions. The team is led by the respected Gloria María de Alvarado and IP strategy expert Zayda Cubas, and backed by senior associate Francisco José Alvarado. The group’s client portfolio includes numerous international companies - among them, NBA Properties, Major League Baseball and the Coors Brewing Company - and spans such sectors as food and beverages, sports, financial services, retail, building materials and consumer goods.

Practice head(s):

Gloria María de Alvarado; Zayda Cubas

Key clients

Grupo Bimbo

NBA Properties

Major League Baseball

Coors Brewing Company

SCA Hygiene Products

Cemex Research Group

Gap

Enterprise Holdings

Hydrologica

Aids Health Care Foundation

Bendaña & Bendaña

The intellectual property practice at boutique firm Bendaña & Bendaña advises high-profile international clients on a comprehensive range of issues. These include trade mark registration and renewal, design rights, the IP aspects of NDAs, franchise and licensing agreements, and infringement actions. The group is led by veteran patent litigator Ricardo Bendaña-Guerrero and IP regulatory authority María-José Bendaña-Guerrero, and supported by María-José Jirón-Bendaña, an expert in cross-jurisdictional applications and opposition matters,  and Margie González, who focuses on trade mark registrations and renewals. The team’s portfolio features such high-profile client names as Costco, Bayer, Energizer and ExxonMobil, and spans the retail, pharmaceuticals, energy, tobacco, automotive and tech sectors.

Practice head(s):

Ricardo J. Bendaña Guerrero; María José Bendaña Guerrero

Key clients

Bayer Intellectual Property

Exxon Mobil Corporation

Allergan

CPA Global

JT International

Ford/Brooks Kushman

Energizer Brands

Kilpatrick Townsend & Stockton

NovoNordisk/Global Business Services

Work highlights

  • Represented Price Costco International in an infringement action that involved the unlawful use of its registered trade dress by a local clothing retailer.
  • Represented Academia Eleganza in an infringement action that involved the unlawful use of its registered trade mark by a local beauty academy.

Estudio Caldera, S.A.

Boutique firm Estudio Caldera, S.A. remains a one-stop shop for intellectual property services, providing local and international clients with advice on a diverse range of matters. These include trade mark litigation, patent infringement, copyright protection, and due diligence procedures for IP investments. The team is spearheaded by Martha Lorena Zelaya, trade mark specialist Karla Mejia and Isabel Artola. Associates Oscar Gomez and Alvaro Caldera also provide support. The group acts for clients from the hospitality, food, entertainment, pharmaceuticals, apparel, agriculture, energy and automotive industries.

Practice head(s):

Martha Lorena Zelaya; Karla Mejia; Isabel Artola

Testimonials

‘The lawyers have an in-depth knowledge of the issues they assist us with in Nicaragua.’

‘Martha Lorena Zelaya, Karla Mejia and Oscar Gomez provide immediate assistance and advice based on their experience in IP matters in Nicaragua. They achieve favourable results in matters before the Trademark Office.’

Key clients

Uhthoff, Gomez, Vega

Arochi Marroquin & Lindner

Reed Smith

Brandstock Legal

Knobbe Martens

Advance Legal

Arias

The intellectual property department at Arias advises multinational clients on safeguarding their high-value IP portfolios. The group advises on a diverse range of matters, including IP rights protection and enforcement, due diligence, anti-counterfeiting measures, technology transfers, and the registration of trade marks, patents and copyrights. IP expert Gustavo-Adolfo Vargas leads the team following the departure of former practice head María de los Angeles Marín. The team’s client roster features international clients such as Procter & Gamble, Herbalife and Phillip Morris, across such sectors as pharmaceuticals, tobacco, health, manufacturing, apparel, telecoms and retail.

Practice head(s):

Gustavo-Adolfo Vargas

Key clients

Café Soluble

Procter & Gamble

Herbalife

Latex Centroamericana

Inditex

ADOC

Phillip Morris

Grupo Roble

Union Comercial de Nicaragua (La Curacao)

Cuckra Industrial

BLP

The intellectual property group at BLP assists local and international clients with matters ranging from portfolio management and trade mark searches, renewals and registrations, to patent prosecutions, administrative and judicial litigation, and anti-counterfeiting measures. The group is headed by trade mark and patent prosecution expert Orlando Cardoza and supported by associate Alejandra Sánchez, who has experience in contentious IP matters. The team’s client roster spans the tech, tobacco, retail, consumer products, apparel, banking, agroindustrial, hospitality and biosciences sectors.

Practice head(s):

Orlando Cardoza

Testimonials

‘Orlando Cardoza stands out for his diligent monitoring of cases, and attentive and timely responses to our company’s enquiries about intellectual property matters.’

Key clients

Unilever de Centro América

Joya de Nicaragua

Pricesmart

Klaris Law

Omoto International

Dennemey

Ricci Propiedade Intelectual

CHR Hansen

Grupo Agroindustrial Numar

Hemoforma

Work highlights

  • Advising a biotechnology company on the management of its entire patent portfolio in the country.
  • Managing Joya de Nicaragua’s global trade mark portfolio.
  • Assisting Pricesmart with the registration and renewal of personal and home care products and sanitary permits of OTC drugs and home and personal care products in Nicaragua.

CENTRAL LAW Nicaragua

The intellectual property team at CENTRAL LAW Nicaragua advises local and international clients on such matters as IP litigation, the IP aspects of franchise and confidentiality agreements, regulatory affairs, licences, and the management of patent, copyright, trade marks and domain name portfolios. Its client base covers the consumer goods, pharmaceuticals, education, banking and automotive sectors. The team recently received a boost with the arrival of new department head María de los Angeles Marín from AriasÁlvaro Molina is also a key contact.

Dentons Muñoz

The intellectual property and technology department at Dentons Muñoz co-ordinates with its regional offices to advise local and international clients on a broad spectrum of issues, from IP portfolio management, data protection and health registrations, to IP enforcement, anti-piracy measures and marketing authorisations. The team is headed by senior associate Mayra Navarrete, and acts for a client portfolio which covers the beverages, pharmaceuticals, manufacturing, retail, tech, investment, e-commerce and energy sectors.

Practice head(s):

Mayra Navarrete Crovetto

Key clients

Augusto Silva

Raúl Marín

García & Bodán

The team at García & Bodán provides its multinational and global clients with a one-stop shop for intellectual property services. The group advises on a broad range of matters, including due diligence procedures, health registrations, trade mark surveillance, IP litigation and franchises. The team is led by senior associate Lía Incer Flores, a former director of copyright and related rights at the General Directorate of the Intellectual Property Registry, and El Salvador-based managing partner Julio Vargas. The group’s client roster includes household names such as the Kraft Heinz Company, Bayer and PepsiCo, across sectors including pharmaceuticals, automotive, food and beverages, tech, sports, energy, telecoms, chemicals and retail.

Practice head(s):

Lía Incer; Julio Vargas

Testimonials

‘The García & Bodán team stands out for its mastery of all aspects of the IP sector. Its members provide exceptional follow-up on the matters we entrust to them and offer useful and valuable advice that allows clients to make decisions, not only in relation to ordinary IP matters but also sensitive and less known ones.’

‘Lía Incer stands out for her helpful, immediate and courteous responses.’

‘In general, the team is very responsible, committed and punctual in its responses.’

‘Lia Incer provides immediate responses and is attentive.’

Key clients

PepsiCo

Grupo Televisa

Laboratorios La Santé

Grupo América Móvil/Claro

Excel Automotriz

Novo Nordisk

Bagó Group

Alltech

Yara Costa Rica

Univision Communications

Work highlights

  • Managing the health registration of Yara Costa Rica’s fertilizer products in Nicaragua and in El Salvador.
  • Assisting PepsiCo with the procurement and maintenance of all required Nicaraguan health registrations and licences for its cereals and snacks product lines.
  • Advising global manufacturer of smoking accessories Juul Labs on the protection of its intellectual property.

Consortium Legal

The intellectual property group at Consortium Legal assists local and international clients with such issues as registration processes, opposition actions, licensing agreements, sanitary registrations and trade mark and copyright surveillance. The team is headed by IP and competition law authority Darliss Gordon. The group acts for clients from the pharmaceuticals, digital marketing, agro-industrial, restaurants and cosmetics sectors.

Practice head(s):

Darliss Gordon

Testimonials

‘Regarding the registration and investigation of trade marks, they are very precise and fast with their procedures. They make a difference by proposing the additional categories where the brand should be registered.’

‘The firm stands out for its attitude and sense of urgency towards the requests we make.’

‘Competitive prices. Knowledge of the subject. Skilled in the process.’

‘Darliss Gordon provides excellent knowledge and client service.’

Key clients

Unipharm

Laboratorios Químico Farmaceutico Lancasco

Productos Alimenticios Diana

GenommaLab Internacional

Intergeo

Corporación Multi Inversiones (CMI)

Work highlights

  • Assisted Canadian Bank Note with the registration of its trade mark portfolio, and protected its intellectual property rights with respect to over 50 trade marks concerning its electronic lottery activity and games.
  • Assisted White Shark Media  with the registration of its trade mark portfolio, and the protection of its intellectual property rights.
  • Advised on the management of Arabela’s trade mark portfolio.

LatinAlliance Nicaragua

The intellectual property team at LatinAlliance Nicaragua specialises in managing and safeguarding the IP portfolios of multinational pharmaceutical companies. The group offers a comprehensive service, not limited to oppositions, appeals, judicial and extrajudicial actions, product branding, registrations, renewals and the development of licensing programmes. The team is headed by experienced IP negotiator Fabiola Torres from the Salvadoran office and backed locally by opposition litigation specialist Ana Carolina Barquero. The group’s client roster also includes companies from the mining, consumer products, textiles and automotive sectors.

Practice head(s):

Fabiola Torres

Testimonials

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

Key clients

Altian Pharma (part of InsudPharma Group)

Central Americana de Distribución

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

Laboratorios Medikem

Work highlights

  • Advising Altian Pharma on its entire trade mark portfolio for El Salvador, Honduras, Guatemala, Nicaragua, Costa Rica, Panama and the Dominican Republic.
  • Assisted Central Americana de Distribución with opposition litigation regarding the cancellation of a trade mark for non-use.
  • Advised Colombian law firm Buriticá Abogados on the registration of Conair’s industrial design.