Next Generation Partners

Intellectual property in Nicaragua

Guy José Bendaña-Guerrero & Asociados

The powerhouse intellectual property team at boutique firm Guy José Bendaña-Guerrero & Asociados remains a market leader, with expertise in the management and protection of the copyright, trade mark, patent and industrial design portfolios of global brands including Microsoft, Pfizer, Chanel and General Electric. The team's client base spans the pharmaceuticals, automotive, software, consumer goods, and food and beverages sectors. Headed by the highly experienced Guy Bendaña-Guerrero, IP enforcement and anti-counterfeiting specialist Julián Bendaña-Aragón and Blanca De Bendaña, the group provides a comprehensive service which extends to complex registrations, IP monetisation strategies, advertising matters, oppositions and high-stakes infringement litigation. The practice is supported by experienced senior associate Ana Jeanssy Fornos.

Key clients

Abbott Laboratories

Acer

Authentic Brands Group

Cargill

Chanel

General Electric

Hanesbrands

Les Laboratoires Servier

Mars

Microsoft Corporation

Payless Shoesource Worldwide

Pfizer

PriceSmart

SC Johnson & Son

Zoetis

Work highlights

  • Filed an opposition for Diageo Ireland against a trade mark in the name of IRISH PUB COMPANY, and obtained a favourable decision.
  • Advised Cargill  on a competitor’s use of a similar slogan, sent a cease and desist letter, and successfully negotiated the matter with the infringing party.
  • Filed a successful opposition against the trade mark PETER PAN in the name of DRIMYS ASSETS FINANCE based on the prior use in Nicaragua of PETER PAN by ConAgra Grocery Products Company.

Alvarado y Asociados

With an experienced team, Alvarado y Asociados remains a go-to firm for the protection and management of the intellectual property portfolios of global brands including Major League Baseball, Coors, Gap and the NBA. Led by the respected Gloria Maria De Alvarado and experienced IP strategist Zayda Cubas, the group offers a full service ranging from copyright, trade mark and patent registrations and administrative procedures to oppositions and high-stakes infringement actions. Sectors of expertise include food and beverages, sports, retail and building materials. Senior associate Francisco Alvarado is also noted.

Testimonials

‘At all times they have maintained fluid communication and have promptly attended to clients’ requirements.’

‘The quality that makes them stand out is the almost immediate response time.’

Key clients

Grupo Bimbo

NBA

Major League Baseball

Coors Brewing Company

SCA Hygiene Products

Cemex

Gap Enterprise Holdings

Hydrologica

Arias

The experienced team at Arias assists worldwide brands like Philip Morris, AB InBev and Walmart with the management and protection of their intellectual property rights. Spearheaded by IP expert Gustavo-Adolfo Vargas, the group advises on a diverse spectrum of matters including IP rights protection and enforcement, IP-related due diligence, anti-counterfeiting measures, technology transfers, and the registration of trade marks, patents and copyrights. Its client base spans the pharmaceuticals, tobacco, food and beverages, apparel and retail sectors. Associate Carlos Úbeda, who brings experience in administrative and judicial IP processes, provides key support.

Practice head(s):

Gustavo-Adolfo Vargas

Testimonials

‘They have a good knowledge of the IP area in Nicaragua and handle our files reliably.’

‘The Arias intellectual property group has been very efficient. The lawyers respond to our requests with kindness, knowledge of the subject matter, speed and sincerity.’

‘The team’s knowledge of the applicable law in Nicaragua is evident and they explain it clearly.’

Key clients

Roble International Company

Jordache

Société Anonyme de Bains de Mer à Monaco

Procter & Gamble

Cafe Soluble

Anheuser-Busch InBev

Royalty World

Philip Morris

Herbalife

Walmart

Ceva

Industria de Diseño Textil (Inditex)

Natura/Avon

Alcon

Bendaña & Bendaña

The intellectual property practice at boutique firm Bendaña & Bendaña provides a comprehensive service to major multinational corporations, advising on trade mark registration and renewal, design rights, the IP aspects of NDAs, franchise and licensing agreements, and in high-stakes infringement litigation. Veteran patent litigator Ricardo Bendaña-Guerrero and María-José Bendaña-Guerrero are key contacts.

Testimonials

‘The team at Bendaña & Bendaña is always willing to help solve our ​​IP problems, and its geographical coverage is essential to providing a full legal service, especially for those clients who have legal matters throughout Latin America. and the Caribbean.’

‘The fact that specific personnel are assigned to attend to client matters by geographic location instead of a single person is important as then there is continuity of knowledge of the case and facts.’

BLP

The experienced intellectual property group at BLP harnesses the bench strength of its offices in Nicaragua, Honduras, Costa Rica and Guatemala to advise national and multinational corporations on the protection and management of their global IP portfolios. Led by Orlando Cardoza, a specialist in sanitary registrations, the team’s comprehensive services range from trade mark searches, registrations and renewals to anti-counterfeiting measures, patent prosecution, and administrative and judicial proceedings. The group’s active client roster spans the tech, tobacco, retail, consumer products, hospitality, and food and beverages industries.

Practice head(s):

Orlando Cardoza

Testimonials

‘Orlando Cardoza stands out for his diligence and follow-up on matters. He is always punctual and attentive to our company’s IP requirements.’

Key clients

Joya de Nicaragua

Cipriani

Pricesmart

Chr Hansen

BIOCAD

Troncoso y Cáceres

Westerberg & Partners Advokatbyrå

Blend Hub

Chambliss Bahner & Stophel

Equipo de Consultores de MCG de México

Work highlights

  • Managing the IP portfolio of Joya de Nicaragua and coordinating strategies for the defence of its trade marks.
  • Advising on the legal strategy to defend the Cipriani brand in the current phase of a long-running global dispute.
  • Assisting Pricesmart with the registration and renewal of personal and home care products and the sanitary permits of OTC drugs and home and personal care products in Nicaragua.

Dentons Muñoz

Coordinating with its offices across Central America, Dentons Muñoz leverages its regional strength to advise major multinationals on the registration, protection and enforcement of their trade marks, patents, designs, copyrights and trade secrets. Headed by director Mayra Navarrete, an experienced trade mark strategist who has experience in consumer law, regulatory and advertisement matters, the full-service practice covers the IP aspects of cross-border transactions, IP litigation and complex administrative opposition procedures, in addition to data security, regulatory and licensing issues. The team’s client base spans the food and beverages, pharmaceuticals, automotive, tech, construction, hospitality and energy sectors. The team is backed by senior associate Ana Ruth Rodriguez, who draws on her background in the public sector.

Practice head(s):

Mayra Navarrete Crovetto

Key clients

Puma Energy Bahamas/Puma Energy Nicaragua

Papelera Internacional

Ferreteria de la Construcción

Cemix (Pegamorteros de Guatemala)

Aqua Ocean Front Resort

Work highlights

  • Advising JeanCenter Corporation on brand protection matters, investigations and prosecution actions in the local market.

Estudio Caldera, S.A.

With entire departments devoted to registrations, litigation and the digital tracking of trade marks, boutique firm Estudio Caldera, S.A. remains a one-stop shop for the management and protection of the intellectual property portfolios of household-name brands in sectors including food, entertainment, pharmaceuticals, consumer products and hospitality. Led by Martha Lorena Zelaya, trade mark specialist Karla Mejia and Isabel Artola, the group covers trade mark oppositions, IP-related due diligence processes, and complex patent and copyright infringement litigation, in addition to matters involving domain names, commercial names, satellite signals and sanitary registrations. The team is supported by Betania Bojorge, who has additional strength in mediation.

Testimonials

‘A proactive team which runs the necessary checks and provides clear-cut answers.’

‘They have in-depth knowledge of the IP issues they assist us with.’

‘Martha Lorena Zelaya and Karla Mejía provide immediate assistance and responses based on their experience of IP matters in Nicaragua. They achieve favourable resolutions in proceedings before the IP office.’

Key clients

Uhthoff, Gomez, Vega

Arochi Marroquin & Lindner

ReedSmith

Brandstock Legal

Knobbe Martens

Advance Legal

García & Bodán

Drawing on the bench strength of offices across Central America, the team at García & Bodán manages the intellectual property portfolios and health registrations of global brands including PepsiCo, Univision and Novo Nordisk, and provides protection through administrative and judicial proceedings. 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 regional IP director Julio Vargas, who is based in El Salvador, the practice’s full service covers the surveillance of trade marks, patents, industrial designs and utility models, as well as support with due diligence procedures, licensing and franchising matters. The team’s active client base spans the pharmaceuticals, automotive, food and beverages, energy, telecoms, retail and entertainment sectors.

Testimonials

‘García & Bodán provides clients with clear, direct and transparent communication, offering an excellent service.’

‘Lía Incer stands out for her ability to solve problems quickly and efficiently.’

‘Julio Vargas has extensive experience in managing brand portfolios for local and international clients, anticipates our needs as clients and provides us with a broad vision of possible solutions for our cases.

Lia Incer is always quick and precise in her answers to our questions.’

‘The García & Bodán team stands out for its mastery of IP issues. The team provides exceptional follow-up on the matters entrusted to it and provides useful and valuable information that allows clients to make decisions not only on day-to-day matters, but also those that are more sensitive and unusual.’

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

‘The team is very responsible, committed and punctual in its responses.’

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

  • Advising Yara Costa Rica on the health registration of its fertiliser products  in Nicaragua and El Salvador, as well as its registration as an authorised manufacturer of fertilisers for agricultural use.
  • Assisting PepsiCo with the procurement and maintenance of all required Nicaraguan health registrations and licences for its cereals and snacks product lines.
  • Advising Juul Labs on the protection of its trade mark portfolio and copyright issues relating to its accessories designs.

CENTRAL LAW Nicaragua

Supported by offices throughout the region, the intellectual property team at CENTRAL LAW Nicaragua advises local and international clients on matters including IP litigation, the IP aspects of franchise and confidentiality agreements, regulatory affairs, licences, and the management of patent, copyright, trade mark and domain name portfolios. Its client base spans the consumer goods, pharmaceuticals, education, banking and automotive sectors. Department head María De Los Angeles Marín and Álvaro Molina are the key contacts.

Consortium Legal

Acting alongside its offices in El Salvador, Costa Rica, Guatemala and Honduras, the experienced team at Consortium Legal advises regional and global brands on the management and protection of their intellectual property portfolios. Led by Darliss Gordon, an expert in IP and competition law, the group assists with matters involving patents, industrial designs, domain names, sanitary registrations, renewals, and trade mark and copyright surveillance, in addition to advising on opposition actions and licensing agreements. The team has an active client roster across such sectors as food and beverages, tech and financial services, with recent growth in the pharmaceutical industry.

Practice head(s):

Darliss Gordon

Testimonials

‘Good local management of intellectual property issues.’

‘Darliss Gordon stands out for her excellent client service and knowledge, and good handling of IP procedures.’

‘They are very rapid and precise in their advice on trade mark registrations and investigations.’

‘The team stand out for their attitude and sense of urgency in responding to our requests.’

Key clients

The Canadian Bank Note

Unipharm

Arabela

Laboratorios Químico-Farmacéuticos Lancasco

Genomma Lab Internacional

Work highlights

  • Advising CMI in the protection and management of its IP portfolio.
  • Assisted WeWork with the filing and protection of trade marks in Nicaragua.
  • Advised Hijos de Rivera on the filing and protection of its trade marks in Nicaragua.

LatinAlliance Nicaragua

Coordinating with its offices throughout Latin America, the experienced team at LatinAlliance Nicaragua specialises in advising regional pharmaceutical companies on the development and protection of their intellectual property portfolios. Led from the Salvadoran office by regional IP director Fabiola Torres, an expert in trade mark registrations, copyright, patents and licensing issues, the group provides services ranging from trade mark oppositions and appeals, coexistence and licensing agreements, and trade mark portfolio management to cease and desist letters and trade mark litigation. Brand expert Ana Carolina Barquero heads the department in Nicaragua.

Practice head(s):

Fabiola Torres

Testimonials

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

Key clients

Altian Pharma

Central Americana de Distribución

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

Laboratorios Medikem

Refacciones Neumaticas La Paz

Work highlights

  • Defended Central Americana de Distribución (CADISA) against a request to cancel its trade mark for alleged non-use.
  • Filed an opposition for Laboratorios Medikem against the registration of the PHARMANATURAL trade mark in class 5, requested by US company Pharma Natural.
  • Assisted Altian Pharma with the marketing of a pharmaceutical product to treat respiratory complications named COVIFAB, including making submissions to the IP offices of the Central America region, Panama and the Dominican Republic.