Seven decades on from its inception as an intellectual property law boutique, BKM | Berkemeyer remains synonymous with this area of practice in Paraguay. Its client base includes a comprehensive list of major multinational and domestic players in various markets, the food and beverage industry being a particularly strong area for the team, where it counts Coca-Cola and Grupo Bimbo among its clients. The highly specialised department has team leaders for particular disciplines within IP, with seasoned veteran and market reference Marta Berkemeyer overseeing the department as a whole. The trade mark group is led by associate Irene Angulo, and Cristobal Gonzalez heads the patent division, while also having expertise in copyright. Bárbara Dollstadt is highly regarded in the market and is the name to note for IP disputes, and senior figure Hugo Berkemeyer is a further key contact, leading across the full range of matters. An international department is coordinated by associates Jaqueline Querciola, whose focus is on contentious matters, and Valeria Carron, another trade mark expert.
Intellectual property in Paraguay
BKM | Berkemeyer
‘BKM is our partner in Paraguay for patent issues. In our experience they have the strongest patent practice in that market.’
‘Cristobal Gonzalez is our key contact on patent issues. Cristobal is proactive and always available for urgent inquiries.’
The Coca-Cola Company
Marriott Worldwide Corporation
SC Johnson & Son
- Advising Grupo Bimbo on all its trade mark-related matters.
- Assisting Chacomer with all IP-related matters, including trade marks, litigation and renewals.
- Advising ECB Holding on all its ongoing IP issues.
Abente Stewart is one of the best-known intellectual property law boutiques in Paraguay and its team draws on years of practical experience acting in the full spectrum of cases, as well as its practitioners’ academic specialisation in the IP field. The firm fields a sizeable team of lawyers dedicated to IP, including senior partner Victor Abente Brun, a standout figure in the recent history of Paraguay’s IP market who has previously held the position of Director of Industrial Property, under the Ministry of Industry and Commerce. Managing partner Victor Abente Stewart can be considered a go-to contact for local and international clients on IP contracts and regulatory matters, as well as administrative and judicial IP cases, while Cecilia Abente Stewart‘s broad practice covers trade marks, copyright and data privacy issues, among other areas. Associate Patricia Brun stands out for her experience in administrative and civil litigation regarding IP matters; she also handles advertising-related matters for foreign companies.
Victor Abente Brun; Victor Abente Stewart; Cecilia Abente Stewart; Patricia Brun; Claudia Bagnoli; Jazmín Alderete
‘The Abente Stewart team is our go-to firm in Paraguay. I have worked with them for many years. They provide clear, concise advice, on a cost-efficient basis. They always respond to inquiries in a prompt manner. They are excellent in all areas of TM prosecution practice (including oppositions).’
‘Victor Abente Stewart is an excellent TM attorney, extremely experienced. Very easy to work with. Quite knowledgeable about all aspects of Paraguay TM law.’
‘The Abente Stewart team provides skilled and forward thinking advice on how to solve trade mark and brand management problems.’
Johnson & Johnson
Boehringer Ingelheim International
Marval, O’Farrell & Mairal
Sargent & Krahn
Teva Pharmaceutical Industries
K & L Gates
Beijing Janlea Trademark Agency
Kisa Patent & Trademark Firm
United Jawee Intellectual Property Agency (Beijing)
- Advised Inbody on obtaining urgent injunctions to suspend the effects of marks registered by an individual that conflict with previous well-known trade mark registrations of the client.
- Represented Johnson & Johnson in all its IP matters, including the defence of a trade mark application.
- Represented Xiaomi in administrative litigation proceedings preventing a third party’s attempt to register its trade mark REDMI.
Uruguay-headquartered multijurisdictional IP specialist Cervieri Monsuárez operates an Asunción office offering comprehensive IP services to its primarily international client roster. Counterfeit seizure actions and trade mark oppositions are particularly busy areas for the practice; the former being the focus of Diego Pérez, the latter handled by Marcela Cárdenas. Together the pair co-lead the department, with associate-level support coming from Giovanna Milessi on the anti-counterfeit side, and Miriam Colmán in relation to trade marks. The six-strong local team can also call on the firm's resources in both Bolivia and Uruguay with regard to matters concerning IP strategy and litigation, patents and copyright, along with corporate matters, commercial agreements and regulatory affairs.
Diego Pérez; Marcela Cárdenas
The Polo/Lauren Company
Tommy Hilfiger Licensing
Warner Bros. Entertainment
Chapter 4 Corp DBA Supreme
Monster Energy Company
The North Face Apparel
The Smiley Company
- Represented The Smiley Company in an appeal before the General Director of Industrial Property against a decision by the Trade Mark Office to reject two applications.
- Advised Volkswagen on filing a three-dimensional trade mark in Paraguay.
- Acted for several multinational sports apparel brands in a counterfeit goods seizure and prosecution.
Ferrere‘s client base of major Paraguayan and international clients turn to the firm for assistance in a wide range of IP and regulatory matters, from trade mark, patent, design and domain name registry to oppositions and litigation. The firm’s presence in Bolivia and Uruguay is ‘an attractive quality‘ for multinational clients in particular, providing a smoother service in terms of managing IP portfolios across Latin America. Senior associate Montserrat Puente is the standout IP-focused practitioner in the team, ‘leading the area with great expertise‘. Alongside her as practice co-head is corporate partner Néstor Loizaga, while associate Cynthia Sanabria has considerable experience in managing IP portfolios, and senior associate Miguel Saguier assists with IP disputes.
Néstor Loizaga; Montserrat Puente
‘Montserrat Puente of the intellectual property practice is a highlight of the team, leading the area with great expertise of the law and a service-oriented approach. We are always confident in trusting her knowledge and criteria to ensure the protection of our trade marks, considering her opinion as the most relevant in the field. Montserrat and her team are very responsive with practical solutions for all inquiries.’
‘Very good advice from the legal team. They fully complied with what was stipulated. Professionalism and efficiency at the height of a first class office. They always kept us up to date on the stages of the procedures.’
‘I think the plus is that they work with other offices with headquarters in different countries, which facilitates the procedures; in our case above all that we request trademark registrations abroad.’
‘Ferrere stands out due to its fast turnaround in the response to all questions and doubts, always providing practical solutions keeping in mind the best monetary and timing outcomes for its clients.’
‘Montserrat Puente is exceptional. She is very attentive to all the questions that we send to her attention, and always gives us a prompt and complete response.’
‘Comparing the firm to other local firms, it is worth noting the level of organization and structure they provide in all their reports, which facilitates our posterior analysis. Furthermore, the fact that the firm is part of an international group sets a high standard and a perspective focused on the big picture, an attractive quality for our multinational company used to global processes.’
‘The Ferrere team in Paraguay is exceptional in terms of response times, personalised attention and process efficiency. We chose them to work on some cases where we have complexities about specific IP knowledge and a need for prompt attention to the case.’
Association A Todo Pulmón
Rádio e televisão Bandeirantes
Vet Plus Tangerine Group UK
GBC – Global Business Consulting
Sociedad Anónima Damm
Grupo Solid (Guatemala)
British American Tobacco PY
- Represented AkzoNobel in a claim against a former licensee based on a contractual clause that establishes the obligation of the licensee to transfer back the trade marks registered during the life of the license contract.
- Advising Disney on establishing its streaming service Disney+ in Paraguay.
- Assisted UPL with obtaining the trade mark BLOOM AI in classes 9, 35, 36, 42, 44.
Mersán Abogados has a notable history in IP law and maintains a broad practice in both contentious and advisory capacities. A host of clients, both domestic and international and spanning an array of industries, look to the practice for IP advice, and its client base continues to grow year on year. Senior partner Hugo Mersán is an elder statesman of the Paraguayan IP law scene, and he oversees the practice with several other lawyers with considerable IP practices: Lorena Mersán, an up-and-coming expert in the field; trade mark-focused senior associate Melissa Stimson; Liliana Nolan, who has particular strength in patents, plant breeder’s rights, agribusiness and criminal law; and Maria de los Angeles Barrios, who has an IP litigation focus.
Hugo Mersan; Lorena Mersan; Melissa Stimson; Liliana Nolan; Maria de los Angeles Barrios
British American Tobacco
The Goodyear Tire & Rubber Company
Millicom International Cellular
International Olympic Committee
B. Braun Melsungen
Granja Avícola la Granja
Sony Interactive Entertainment
Patent matters for international clients are a recent area of growth for Vouga Abogados‘ IP department, which goes from strength to strength. Co-leader of the practice Laura Lezcano has particular renown in the patent field, which is furthered by associate Manuel Acevedo‘s extensive experience in cross-border patent matters. The team covers a range of other IP matters as it is well integrated with the firm’s corporate group, and other related practices. Siegfried Vouga leads the practice with Lezcano and is the primary contact for a number of key clients looking for support in the management and defence of their IP. Rodrigo Fernández is especially strong in matters that have an overlap with corporate law, while associate Grecia Florentin supports the practice heads across all issues.
Siegfried Vouga; Laura Lezcano
‘The team is constantly updated and they have a very good client service.’
‘I recommend Laura Lezcano and her firm in view of the excellent work they have done for several years. Laura has played – and still plays – an important role in protecting our client’s marks in Paraguay. She is very responsive and her deep knowledge and wide experience has enabled our clients to obtain the best possible trade mark protection in Paraguay. She always provides us with enlightening advice regarding the best strategy.’
‘The team is very responsive, helpful in their advice to allow clients to make the best decision forward with their IP, and are reasonable in fees.’
‘They work professionally when it comes to IP.’
‘They respond quickly and efficiently.’
‘I have the most contact with Laura Lezcano. She has been a very helpful resource for getting our client’s marks registered in Paraguay and offers great advice on how best to tackle certain IP issues.’
‘Credibility and confidence in their actions.’
Banco Do Brasil
Continental Grain Company
Union Industrial Paraguaya – UIP
Estee Lauder Paraguay
Norton Rose Fulbright
Vivo Mobile Communication
Osha Bergman Watanabe & Burton
- Assisting Barenbrug with the registration of two plant varieties.
- Advising Fundación Saraki on filing a certification mark.
- Advising Paracel on bulk trade mark filing for its pulp mill project in Paraguay.
Zacarias & Fernández
Zacarias & Fernández is one of the standout IP boutiques in Paraguay and it maintains that focus, while also acting in related corporate matters and disputes. Its client base includes a number of multinationals, and the team handles all types of copyright, trade mark and patent work. Founding partner Wilfrido Fernández is the primary contact.
Olmedo Abogados is the firm of choice for a range of domestic and international companies looking for assistance in filing trade marks and managing their IP portfolios. The practice is also called upon by a number of international law firms whose clients need IP advice on trade mark and patent registration in Paraguay. Sebastián Olmedo, who has broad experience in various practice areas and a focus on contentious IP matters, co-leads the department with IP-dedicated associate Julia Schmidt, who is strong in patents, utility models, industrial models and copyright.
Julia Schmidt; Sebastián Olmedo
Shandong Weifang Rainbow Chemical
Energy Marketing Sociedad Anónima
Entertainment One UK
Compañia Administradora de Riesgos (Carsa)
- Provides ongoing advice to Unicentro on IP-related matters, including trade mark registrations.
- Advising Puma Energy on its IP property assets and the renewal of trade marks of its subsidiary Ultrapar.
- Assisting Procaps in searches, filing new trademark applications and litigious matters.
Peroni Sosa Tellechea Burt & Narvaja
A mix of domestic and international companies, as well as foreign law firms needing advice in Paraguay, look to Peroni Sosa Tellechea Burt & Narvaja for the filing of trade marks and patents in Paraguay. The team also assists with concessions and the licensing of brand name products, as well as distribution, representation and agency rights contracts. IP experts Elba Britez de Ortiz, Mariana Peroni and Juan Ortiz Britez jointly lead the department.
Elba Britez de Ortiz; Juan Ortiz Britez; Mariana Peroni
‘Immediate response. Immaculate legal advice.’
‘Traditional firm, with many years of practice, experience. Working with them is to feel the comfort and security that your affairs are treated by professionals with impeccable careers and professional ethics.’
‘Juan Ortiz, a professional who is always attentive to attend to any type of trade mark matter. An excellent person, with a lot of knowledge and management at the level of trade mark procedures.’
‘PSTBN is a firm with an extensive list of Paraguayan clients who trust the firm for IP matters. We have had a large number of requests and timely, fast, reliable and secure responses. The cost has been in line with the work, the experience was great.’
‘Juan Ortiz, one of the key people in the firm, his great experience and ease of contact, make PSTBN a unique experience.’
‘We have worked as Peroni, Sosa, Tellechea Burt & Narvaja for many years, and they have always provided us with excellent service.’
‘I have worked directly with Juan Ortiz, and he has always responded to all the requirements, no matter how demanding it may have been.’
‘We have worked for many years with Peroni Sosa Tellechea Burt & Narvaja on intellectual property matters and we are extremely satisfied with their work. They are very efficient, answer emails the same day and offer reasonable costs.’
Genomma Lab Internacional
Embajada del Perú en representación de la Asociación Nacional de Productores de Pisco de Perú
Productos Farmacéuticos (Chinoin)
Escobar & Escobar
Jones & Cia
Palacios & Asociados
- Acted for Gap in its successful trade mark cancellation lawsuit regarding trade mark ATHLETA in international classes 25 and 28.
- Acting for Hearst Holdings in the surveillance, management and protection of its trade marks.
- Acted for the Peruvian Embassy in Paraguay in the filing of its appellation of origin for the trade mark PISCO in class 33.