Celebrating its 70th anniversary in 2021, BKM | Berkemeyer continues to hold intellectual property law as one of its core services, remaining the leading name in the market among both boutique and full-service firms. A client list that includes multinationals and industry leaders such as Coca-Cola, Bayer and Disney instructs the team on the gamut of IP matters, with the practice having an appointed specialist helming each sub-department. Marta Berkemeyer is an IP enforcement expert and oversees the practice as a whole. Associates Irene Angulo and Cristobal Gonzalez are the primary contacts for trade marks and patents, respectively, while Bárbara Dollstadt is in charge of IP litigation and comes highly recommended by peers. International matters are coordinated by associates Jaqueline Querciola, who focuses on disputes, and trade marks expert Valeria Carron.
Intellectual property in Paraguay
Marta Berkemeyer; Irene Angulo; Bárbara Dollstadt; Cristobal Gonzalez; Jaqueline Querciola; Valeria Carron
‘The most unique thing about Berkemeyer is the people. I find their customer service to be among the highest I have ever experienced. The staff is incredibly diligent and thorough. They handle each and every aspect of every matter and even let me know about things that might otherwise have slipped through the cracks. Their analysis is correct and complete.’
‘I would highlight Valeria Carron.’
The Coca-Cola Company
Abercrombie & Fitch
- Represented Grupo Bimbo in an unfair competition action against a local manufacturer of baked goods regarding the use of the name “Bimbi” as it conflicted with the name “Bimbo”, which constitutes the brand and commercial name of Grupo Bimbo.
- Assisting Hugo Boss in all its ongoing contentious and advisory IP issues.
- Acting for Mastercard Worldwide in all its IP matters.
Boutique firm Abente Stewart provides comprehensive IP law services to a roster of both international and domestic companies that are active across an eclectic range of sectors. Acting in all matters related to the acquisition, protection, management and commercial exploitation of intangible assets, the practice is headed jointly by managing partner Victor Abente Stewart, who focuses on trade marks, administrative litigation, advertising and unfair competition; and junior partner Cecilia Abente Stewart, who works most frequently on trade marks, copyright and data privacy issues.
Cervieri Monsuárez is an IP specialist firm whose Asunción office coordinates with the firm’s base in Montevideo, as well as a further offshoot in La Paz, to offer comprehensive IP services across the region to its international clients. 2020 saw the ‘very complete' and ‘client oriented' team handling a number of counterfeit goods cases for Adidas, Gucci and Harley Davidson, among others; this sub-group is managed by practice co-head Diego Pérez. Fellow department head Marcela Cárdenas also acted for Guccio Gucci in a Supreme Court of Justice appeal against a rival trade mark filing from a Brazilian clothing company. At the associate level, Giovana Milessi supports on the anti-counterfeit matters, while Miriam Colman specialises in trade mark issues.
Diego Pérez Bernal; Marcela Cárdenas
‘They are a very complete team, very client oriented, with a level of professionalism that stands out without any doubt above other Paraguayan studios. They have extensive knowledge and a strength thanks to having an office in several countries. The service they provide is creative and complete.‘
‘They are committed to the causes of our clients and to be 100% available in urgent cases, offering creative solutions to problems that arise.‘
‘Closeness to customers; boutique approach is tremendously valuable. The personalised treatment makes it stand out.‘
Chapter 4 Corp / DBA Supreme
The Polo/Lauren Company
Tommy Hilfiger Licensing
Sony Interactive Entertainment
- Acted for Guccio Gucci in an appeal before the Supreme Court of Justice of a trade mark office decision regarding the “NAGUCHI” mark filed by Brazilian clothing company Valparaiso Industria e Comercio de Confeccoes.
- Assisted H-D USA in several counterfeit goods cases.
- Represented Sony in 3D trade mark registration requests and subsequent appeals regarding its Dualshock 4 game controller.
As with many of its practices, Ferrere‘s intellectual property and regulatory affairs department has a strong focus on international clients, in addition to advising domestic companies from key industries such as agribusiness. Contentious matters are the team’s standout strength, with 2020’s highlights including a number of high-profile trade mark nullity actions. These were led by practice co-head Néstor Loizaga, whose presence in the team offers strong coordination with the corporate law and dispute resolution departments. ‘One of the most prepared lawyers in this area in the local market‘, senior associate Montserrat Puente is a highly regarded IP expert and the central day-to-day contact, co-leading with Loizaga. Fellow senior associate Miguel Saguier is also a name to note, with strength in IP disputes.
Néstor Loizaga; Montserrat Puente
‘The team is dynamic and they always provide us with prompt responses and good care in matters that we have had the opportunity to work together. Their treatment is extremely friendly which makes it a pleasure to have them as allies in Paraguay for intellectual property.‘
‘The IP team is made up of professionals with vast experience in the field. Montserrat Puente, team leader, is one of the most prepared lawyers in this area in the local market, and this differential is noticeable when receiving her opinions on issues that significantly impact our business.‘
‘When Ferrere began offering IP-related services, they made sure to recruit the best professionals in the market specialised in that area. The level of response and the speed with which they are issued speak perfectly to the level of pressure we handle in our businesses. Paraguay is a market in which trademark matters take on special importance due to the existence of illicit practices that violate these rights, so it is essential to have the support of good professionals and with indisputable ethics, and the firm has them.‘
‘Montserrat Puente is a great professional, who always stands out with her specialised treatment and who attends to all our needs personally, which is very important to us.‘
Association A Todo Pulmón
Rádio e televisão Bandeirantes
Vet Plus Tangerine Group UK
GBC – Global Business Consulting
- Acted for UPL in a nullity action filed against “SELECTIVE 24%” trade mark registration in class 5; the action was based on the previous registrations of the well-known trade mark “SELECT” in class 5.
- Assisted Rigo Trading with the prosecution of the registration for its Haribo gummy bears trade mark, both as figurative and three-dimensional trade marks.
- Assisted Gloria with the filings of cancellation actions for non-use against all “ECOLAC” trade mark registrations in classes 30 and 29, in parallel to answering oppositions.
Intellectual property is one of the foremost practices at full-service firm Mersán Abogados. An impressive client roster of household-name multinationals, as well as domestic companies, instruct the team across the full scope of matters. The broad categories of trade marks, patents and copyrights are all covered, with specific areas of expertise including advertising law and rights of vegetable varieties, and prosecuting the illegitimate re-transmission of copyright-protected work. Leadership of the department is divided between five lawyers: Lorena Mersán, promoted to partner in January 2021; senior partner Hugo Mersán, who has broad expertise across the practice area, with contentious matters and plant-breeder’s rights being particular fortes; and senior associates Melissa Stimson, Liliana Nolan and Maria de los Angeles Barrios.
Hugo Mersan; Lorena Mersan; Melissa Stimson; Liliana Nolan; Maria de los Angeles Barrios
‘We must highlight the effectiveness of the entire team. They always attend quickly and efficiently, informing in detail about the matter or procedure in question.‘
‘The proximity, the good work and of course the extensive knowledge.‘
‘They are responsible and trustworthy.‘
‘They have been known for years and their service is stable over time.‘
‘One of the best qualities that the lawyers who work in this study have is that they are very clear and synthesize the information. They go straight to the point with the recommendation to follow without dwelling on other topics, always giving complete information.‘
‘Lorena Mersán and Liliana Nolan are my contact persons. They are very professional and diligent.‘
‘Lorena Mersán, Hugo Mersán make a great team. Their professionalism and quality of people is unique in this country.‘
‘Very good team. Very solid, dedicated and with fast and effective responses that help to better understand the different topics.‘
British American Tobacco
The Goodyear Tire & Rubber Company
Millicom International Cellular
International Olympic Committee
B. Braun Melsungen
Granja Avícola la Granja
Sony Interactive Entertainment
Vouga Abogados' IP department continues to develop year-on-year, with several new clients instructing the team in 2020, including Nexleaf Solutions, a cannabis extraction company. Patents is a recent area of focus and development, with practice co-head Laura Lezcano having particular experience in the field, and two new cases as well as patent portfolios being entrusted to the firm by clients in recent years. Siegfried Vouga co-leads the department alongside Lezcano; Vouga draws on over 25 years' experience in the field, and maintains a strong focus on IP. Rodrigo Fernández is another key contact, particularly in IP cases with a strong corporate law component, and associate Manuel Acevedo has international IP experience, particularly in patent cases.
Siegfried Vouga; Laura Lezcano
‘Attorneys available 24/7, with an exceptionally high degree of involvement in the case.‘
‘Friendly approach to resolve disputes, clear presentation of the situation to the client, absolute availability to inform and help make decisions.‘
‘I have been working with Laura Lezcano for many years. Laura has a deep and solid knowledge in trademark law and is also very responsive. Also, her correspondence is always clear, objective and provides complete information, which saves us time and facilitates our work together.‘
‘In my opinion, the firm’s responsiveness and precision in providing answers and solutions is what makes it unique.‘
‘It is a firm that responds quickly, in a practical way and with flexibility in its approach.‘
‘Laura Lezcano is always waiting for any questions and making the appropriate clarifications when they are needed.‘
Banco Do Brasil
Continental Grain Company
Union Industrial Paraguaya (UIP)
Estee Lauder Paraguay
Vivo Mobile Communication
Oshia Bergman Watanabe & Burton
- Representing Mastercard and McCann Erickson as defendants in two IP-related lawsuits filed by a former employee of a Paraguayan advertising company who alleges having created a slogan used by Mastercard.
- Acted for Nexleaf Solutions in filing two patent applications.
- Assisted Paracel with trade mark filings as part of its creation of a cellulose production plant.
Zacarias & Fernández
Zacarias & Fernández is one of the foremost boutique firms in Paraguayan IP law, established with that focus and expanding into related corporate and disputes matters too. Its client list includes a host of multinationals across various sectors and the team handles all types of copyright, trade mark and patent work. Founding partner Wilfrido Fernández is the primary contact, while Ana Palacios is noted for contentious IP issues.
Bareiro Modica & Asociados
Bareiro Modica & Asociados is a specialist boutique focused on IP protection, covering the registration of trade marks, copyrights and patents; administrative procedures; and criminal proceedings against counterfeiting and other IP offences. The firm is approaching 30 years of existence in the field and the practice is led by Carmelo Modica, with Denise Modica, Fabrizio Modica and Enzo Modica other names to note.
The IP practice at Olmedo Abogados continues to grow, with an increasing number of companies looking to the team for trade mark filings. The department has also claimed a significant share of the country's burgeoning patent filing market, particularly in pharmaceuticals. Associate Julia Schmidt is the primary IP expert in the team; with 15 years' experience, she focuses on patents, utility models, industrial models and copyright, and co-leads the department alongside Sebastian Olmedo, who adds broad experience in various sectors.
Julia Schmidt; Sebastian Olmedo
Entertainment One UK
Astley Baker Davies
Compañía Cervecera Asunción
Comercial Franca Pisani
Shandong Weifang Rainbow Chemical
Compañia Administradora de Riesgos (Carsa)
- Advising Amandau on its licenses, use of a trade mark, and an international audit of its assets.
- Assisted Puma Energy with the renewal of the trade marks of its subsidiary Ultrapar.
- Assisting Chilean clothing company Comercial Franca Pisani with its trade mark registrations, as well as litigation against an infringer.
Peroni Sosa Tellechea Burt & Narvaja has a particularly active practice in the filing of trade marks and patents in Paraguay, where it acts for a mix of domestic and international companies, and assists foreign law firms on behalf of their clients. The team also advises on concessions and licensing of brand name products, as well as distribution, representation and agency rights contracts. A recent highlight saw practice co-heads Elba Britez de Ortiz and Juan Ortiz Britez representing a household name company in an anti-counterfeiting matter, where illegitimate items were seized and destroyed. Mariana Peroni completes the trio heading the team and has significant expertise in patents and industrial/utility models.
Elba Britez de Ortiz; Juan Ortiz Britez; Mariana Peroni
‘It is an excellent team. They respond immediately with smart solutions.‘
‘Always personalised attention from members. Immediate response. Pristine attention to detail in all matters. The best correspondent we have had in the country in years. It is a pleasure to collaborate with them and a peace of mind to have them in our corner.‘
‘The team responds quickly and efficiently to what is consulted.‘
‘Juan Ortiz has an excellent disposition and speed to answer questions.‘
‘Knowledge and prestige in the market. Family firm with high moral values and enviable work ethic.‘
‘The professionalism they have, the attention they provide, the quick responses. Juan Ortiz is one of the key people in the firm, together with Elba Britez.‘
‘Juan Ortiz, a professional with a lot of experience and knowledge in intellectual property. Respected by all his colleagues in Paraguay.‘
‘It is a specialised firm trained in resolving controversies in IP and as it is a general practice firm, it can cover any required area.‘
Starbucks Coffee Company
Genomma Lab International
Bagó del Paraguay
- Assisting Toy Cantando with the filing, protection and surveillance of its trade marks.
- Assisting grain handler Viterra Canada with the filing, surveillance, management and protection of its trade marks.
- Acting for Starbucks in monitoring its marks and logo in Paraguay in case of possible infringement, and sending cease and desists where necessary.