Intellectual property in Peru
A stellar client list at IP boutique Barreda Moller is the result of many years at the pinnacle of the intellectual property legal services industry in Peru. The firm has one of the largest practices in the market, both in terms of number of lawyers and patent agents and volume of instructions, handling all aspects of IP work: patent, trade mark, copyright and related fields, as well as IP litigation and procurement of IP rights. Alfredo Barreda is widely recognised as a leading professional and heads the trade mark and patent prosecution side of the practice, while the very experienced Fernando Barreda co-leads the trade mark prosecution practice and well as wider litigation matters. Other partners of note are Carlos Auza, Micaela Mujica and Marcela Escobar.
Hyundai Motor Company
Hard Rock Limited
Retail Royalty Company
Orkam South America Trademark
- Acted for Hyundai Motor Company in a successful non-use cancellation action against trademark ‘Electri City’ and associated logo, enabling the client to obtain registration of trade mark ‘Eleccity’.
- Successfully represented Spotify in an opposition application against Telefonica regarding the service mark ‘Spotwifi’ and associated logo, preventing the telecoms company from entering the market with a service with a confusingly similar trademark.
- Acted for MGA Entertainment in a successful counterfeit action regarding its LOL Surprise! dolls against an individual importer.
- Successfully represented Disney Enterprises in a copyright infringment concerning Pixar’s Cars 3.
- Acted for NBA Properties in the successful non-use cancellation action against trade mark ‘Cavalier C’.
Estudio Echecopar member firm of Baker McKenzie International
Estudio Echecopar member firm of Baker McKenzie International is one of only three full-service law firms in Peru with a top-tier IP practice, led by much-revered practitioner Luis Alonso Garcia. The team's strength is undoubtedly high-stakes IP litigation on behalf of well-known multinationals, but it is also in demand for large-scale trade mark and patent management programmes, anti-counterfeiting and anti-piracy matters, corporate support and general advisory work for local and foreign clients. The ten-strong team includes partners Manlio Bassino Pinasco, who advises on trade marks and brand planning, and Alvaro Gutiérrez, who focuses on prosecution and litigation of patents, industrial designs and copyright. Clients include a leading technology multinational and a global consumer group.
Bodega San Isidro/Barsol
Compañía Latinoamericana de Radiodifusión (Latina)
Cavelier Abogados/Comite Interprofessionnel du Vin de Champagne
- Acted for Weir Minerals Australia and WHW Group in a successful patent infringement case against Chinese company Naipu regarding a water pump used in the mining industry.
- Defending Compañía Latinoamericana de Radiodifusión in a copyright infringement case regarding an audiovisual work filed by Grupo Rio, which has appealed the decisions of both the Copyright Office and INDECOPI which ruled no infringement had taken place.
- Advising Bodega San Isidro in an appellation-of-origin preliminary investigation by the Trade Mark Office, concerning the alcoholic beverage Pisco and the client’s relationship with the Cuzqueño Sour product.
- Acting for a US-based multinational healthcare company in trade mark litigation against a European-based multinational.
- Handling the anit-counterfeit programme of a well-known tech company.
Marta Fernández-Pepper at Muñiz, Olaya, Meléndez, Castro, Ono & Herrera Abogados 'leads a magnificent group of professionals who stand out for their knowledge, responsibility and permanent availability.' The firm handles an extensive caseload of advisory, enforcement and defence matters for a plethora of household-name companies and brands, including Microsoft, Novartis and Volkswagen. The firm was successful on behalf of Umbro in defending the design rights to the official kit worn by the Peruvian soccer team at the 2018 Russia World Cup, against the Peruvian Football Federation. Notably, the team includes two in-house pharmacists and an industrial engineer. Partner Piero Calderon-Oliva heads the anti-counterfeit and anti-piracy practice, while Bruno Merchor-Valderrama, former head of the Peruvian Patent Office, focuses on patents. Experienced senior associate Johana Calderon-Valencia was rehired in March 2019 after several years at the Peruvian Trademark Office of INDECOPI.
‘Muñiz, Olaya, Meléndez, Castro, Ono & Herrera Abogados has a very solid team, which is reflected in the fact that more than one lawyer is always aware of the cases and can give an immediate response to a client’s need. They are also very proactive and anticipate customer requirements, which is perfect.’
‘Marta Fernández-Pepper is an excellent professional, with deep knowledge of the subject who knows clients’ cases. She also designs appropriate strategies for each case. Juliana del Aguila-Iñapi is extremely fast and proactive, very meticulous and with solid knowledge.’
‘Their strong points are: experience, knowledge, tradition, timely responses and appropriate rates. Also, the experience of Marta Fernández-Pepper and Piero Calderon-Oliva. They lead a magnificent group of professionals who stand out for their knowledge, responsibility and permanent availability.’
‘We have many years working with this firm and it has always satisfied us. The surveillance service of our brands that they provide is of great value to us, as it allows adequate protection.’
‘Very specialised and updated advice. The fashion law they have been promoting is a demonstration of their leadership in this sector. In this type of work, it is important to be updated on what the criteria of the agencies in each country are.‘
‘It is a very professional team, with immediate attention to the requirements that we demand as a client.’
‘Their closeness to the client and professionalism undoubtedly make the difference. They are specialists in their area and they demonstrate this clearly in the answers to questions that we usually ask.’
Cervecerías Peruanas Backus y Johnston (AB InBev)
Business Software Alliance
Bristol Myers Squibb Company
Banco Bilbao Vizcaya Argentaria
Tiendas por Departamento Ripley
Cerámica Lima / Corporación Cerámica
- Acting for Microsoft Corporation with regard to 56 raids undertaken in conjunction with the INDECOPI Copyright Office against various companies to monitor the proper use of the client’s software.
- Acting for Umbro (KS Depor as the local exclusive licencee) in its successful appeal of a decision by the Peruvian Patent Office regarding the rights of the industrial design of the official jersey used by the Peruvian soccer team in the World Cup in Russia 2018, designed by Umbro but claimed by the Peruvian Football Federation.
- Successfully advised Pro Nutrition Peru in defence of a nullity action regarding its use of the trade mark ‘Pro Nutrition’, which was already in existance, on the grounds that it was found to be a descriptive expression for goods.
- Representing the Business Software Alliance (BSA) with regard to 70 raids conducted in conjunction with the INDECOPI Copyright Office to monitor the proper use of the software of its partners Microsoft, Adobe and Autodesk.
- Advised Interconexion Electrica, owner of the trade mark ‘Isa’, and associated logo, in its successful nullity action filed against the trade mark ‘Grupo Iza’ and logo.
Market frontrunner Rodrigo, Elías & Medrano – Abogados provides a fully comprehensive IP service to a multitude of elite global brands, including Prada, Microsoft, Pepsi Cola and The Goodyear Tire & Rubber Company, a list which demonstrates the diverse sector spread of the practice. The firm has been very active in the past year defending technology-related trade marks in judicial proceedings on behalf of some of the world's largest companies. The team boasts two market-leading individuals in co-practice heads Héctor Álvarez, who has steered the group for almost 40 years, and the high-profile María del Carmen Alvarado. Maritza Reategui heads the life sciences practice at the firm, while a modest-sized pool of associates includes the experienced Ricardo De Vettor and Ximena Aramburu.
Frito-Lay North America
Abercrombie & Fitch (Europe)
The Goodyear Tire & Rubber Company
Assa Abloy Group
Beijing Deepcool Schi-Tech Co
- Acted for Microsoft in successfully defending an application by Softdynamic to register the trade mark ‘Soft Dynamic’, which was held to be similar to the client’s ‘Microsoft Dynamic’.
- Advised South Beach Beverage Company on the successful defence of its trade mark ‘LIFEWTRr’ following an application to register the trade mark ‘LIFWTR Water is Life’, winning the case in the first instance and then on appeal.
- Filed a successful nullity action on grounds of bad faith on behalf of Abercrombie & Fitch Europe following the registration of the trade mark ANF 92; a subsequent judicial action was also successful.
- Successfully opposed mulitple attempted trade mark applications on behalf of PespsiCo.
- Successfully defended Prada, and its trade markes ‘Prada’ and ‘Prada Milano’, against an applicaton to register the trade mark ‘Praga’.
Allende & García Abogados
Another sterling year for the ambitious IP boutique Allende & García Abogados saw it gain some impressive new clients, including the South American Football Confederation (CONMEBOL) and a household-name media services provider/producer. Indeed, the firm has a growing following among sports bodies and has acted for FIFA for some years. Partners Jorge Allende and Magali García 'lead a wonderful, human group, who are talented and experienced’, says a client, while another highlights the firm's 'excellent knowledge of the law’ and 'practical approach.' Third partner Dafne Ramos is also praised; the trio lead a team of 12 associates.
‘Their strong points are their knowledge, experience and the functionality of the firm. Also, adequate rates and immediate responses and always within the required time.’
‘They replied pretty fast to any queries and have a practical approach. Great knowledge of local legislation.’
CONMEBOL (South American Football Confederation)
Panda Restaurant Group
Grupo El Comercio
- Acting for Visa on two trade mark enforcement actions in Paraguay (advising on the IP side, a local firm is leading the litigation), as well as a separate trade mark opposition in Peru.
- Representing PepsiCo in an investigation into counterfeit goods and in a subsequent application for seizure.
- Represented South American Football Confederation CONMEBOL in conducting enforcement actions during the final of the Copa Libertadores in Lima in November 2019, resulting in the seizure of a large volume of fake goods and tickets.
- Continuing to represent FIFA in infringement actions relating to the misuse of its ‘FIFA’ trade mark during the 2018 football World Cup.
IP boutique BARLAW – Barrera & Asociados S. Civil de R.L. continues to expand both its client base and team, with three hires at associate level during 2019. New clients of the practice impressively include LEGO, Amazon, Under Amour and Kipling Apparel Corporation. Clients highlight the 'to-the-point and business-orientated advice’, 'personalised attention’ and the close relationship with the authorities of the firm's two partners Maria Ines Herrera and Adriana Barrera. They lead a team of 15 associates including seniors Medalith Albarracín, who handles trade mark and patent prosecutions, and Andrea Chunga, who is experienced in litigation, both at an administrative and judicial level.
‘They have great knowledge of IP law; very good networking with authorities; compliance with relevant standards. The highlights are their networking, personalised attention and corporate-standard service.’
‘I like working with a small practice of dedicated professionals and appreciate their great attention to handling industrial design filings on behalf of my clients in Peru.’
‘Excellent management capacity with authorities and they are responsive.’
‘The firm provides short and effective answers, with smooth and fast communication. They are always available. I would highlight the involvement of Maria Ines Herrera and Adriana Barrera as they are aware of our affairs and are always available.’
‘Finally we have found a local firm providing efficient and timely advice in this difficult jurisdition. Maria Ines Herrera and Adriana Barrera understand the client’s needs, and provide sound, business-oriented IP advice in a timely manner. They are also bilingual, which is very appreciated by us and our clients.’
‘I appreciate the pragmatic approach by BARLAW – Barrera & Asociados S. Civil de R.L. and value the to-the-point and business-orientated advice.’
‘Their strength is that they are proactive and strategic in every process or assignment they have. Definitely, it is a tier-one firm, not only for their expertise but also because they are involved in the business, with the ability to respond in a timely manner. Adriana Barrera, Andrea Chunga and Medalith Albarracín are extraordinary lawyers in the topics they lead.’
‘The law firm has a corporate vision, bringing practical solutions according to the client’s reality. Besides that, their personnel are well qualified and skilled. They are always professional and send the advice adding the corresponding action plans, making the decision process easier for us. Adriana Barrera and Maria Ines Herrera represent the proper way to deal with us.’
Amazon Technologies (Fenwick & West)
Kipling Apparel Corp
Honda Motor Co
Procter & Gamble
TEVA Perú / Teva Pharmaceutical Industries
PVH Group – Tommy Hilfiger
- Advising Corporación Peruana de Productos Químicos (CPPQ) on a global strategy for the protection of their trade marks in Peru and other LatAm countries.
- Acting for Lego Group on its trade mark enforcement strategy in Peru including filings for trade mark and copyright infringement actions.
- Representing Amazon Technologies in the filing of new applications for the trade mark ‘Amazon’ and associated smile logo, part of the global strategy for the launching of Amazon Go, a new store featuring advanced shopping technology.
- Acted for Procter & Gamble in two raids against laboratories of counterfeit consumer goods.
Long established in the market, Estudio Colmenares is an expert IP boutique focused on protection, advice, surveillance and litigation of all intellectual property, with a particular focus on trade marks and patents. It acts for well-known domestic and international companies from a range of industries, including pharmaceuticals, fashion design and retail, agro-chemicals, lubricants, automotive, machinery and food and liquor. Managing partner Luis Gayoso Frayssinet is vice president of the Peruvian IP Association and heads the firm alongside María Del Carmen Arana. The team includes eight trade mark lawyers, three patent lawyers and a number of biologists.
Durand Abogados is a well-resourced IP boutique with an extensive international client base of well-known companies and brands, including giants Sony, Lenovo Group, Warner Bros Entertainment and ThyssenKrupp. Of note is the firm's expertise in entertainment law and trade mark portfolio acquisition, alongside a busy caseload of the usual trade mark, patent and copyright issues. Four partners and 11 associates are led by the experienced Juan Carlos Durand Grahammer, with Christian Durand Grahammer head of the firm's German and European desk.
‘It is an orderly and organised firm, with very timely attention to requirements, clear in its communications. The service is very competitive and they stand out from the teams in other law firms.’
‘The plus is the personalised attention and the availability to attend to the requirements. They are responsible, responsive and there is transparency in invoicing. Juan Carlos Durand Grahammer and Armando Pastor Vera are the people with whom we have had contact and are exceptional.’
‘The provide complete and alternative answers for complicated customer cases.’
‘Punctual work and clear communications.’
Lidl Stiftung & Co
Automobile Club de l’Ouest (Le Mans)
Warner Bros. Entertainment
- Representing Soundreef Media Service in their administration of publishing rights (copyright and composition rights) and master recording rights (related and neighbouring rights) for background music used by businesses in Peru.
- Acting for ThyssenKrupp in non-use cancellation proceedings initiated against their ‘Thyssen’ and ‘Thyssenkrupp’ trade marks in Peru.
- Acting for Sinclair Pharmaceuticals in an opposition case to defend the client’s extensive rights to the ‘Perfectha’ trade mark.
Francisco Espinosa Bellido Abogados
Francisco Espinosa Bellido Abogados is a family-run, traditional IP boutique with a strong following among Latin American and European (especially Spanish) law firms requiring Peruvian IP advice. It reports a busy year of trade mark and patent prosecution and litigation cases, and is gaining traction in counterfeit and customs work, including some high-value matters. Experienced figure, Francisco Espinosa Reboa, heads the practice, with Carolina Martinez Hoepelman leading the patents department, while Ana Cecilia Sotelo Aguilar focuses on litigation. The firm has grown its work for leading Chilean retailer Falabella over the past year so as to now represent the entire group.
- Acting for FC Barcelona on the enforcement and protection of its trade marks.
- Advising major Chilean retail group Falabella on its trade mark portfolio.
- Representing Mexican baking group Bimbo on its trade mark protection and enforcement.
Estudio Olaechea is recommended for its 'experience and vast knowledge of intellectual property issues’; the practice is led by Mónica Germany, who 'provides fast, creative and timely solutions.' Despite a small team (she directs two associates) the practice nevertheless handles some business-critical IP work for well-known companies - such as acting for Telefónica subsidiary Tuenti Technologies in trade mark litigation against Entel. Associate Cristina Fernandez habitually advises on key mandates and has a broad practice.
‘Estudio Olaechea has the experience and professionalism that we require for the monitoring and care of our intellectual property. Their strengths are that they clearly set out the necessary solution alternatives; I could go so far as to say that the services provided are among the best professional services that we have had.’
‘The plus that makes the lawyers of Estudio Olaechea stand out is the experience and vast knowledge of intellectual property issues, in addition to being a general practice firm, the legal advice is comprehensive. Mónica Germany is the partner in charge of the IP area. She is a very professional lawyer and provides fast, creative and timely solutions for cases she handles. Furthermore, it is worth noting the availability and participation of other lawyers of the firm when required.’
‘They are lawyers with excellent knowledge of the matter, and very quick to respond.’
‘Mónica Germany is an excellent professional and knowledgeable on the subject. Always attends with kindness and courtesy.’
Tuenti Technologies (Telefónica)
The Clorox Company
Ewtech Investigation e Innovacion / Proter
Universidad del Pacifico
AIDS Healthcare Foundation
LA Renon Healthcare
Mayo Foundation for Medical Education and Research
Alliance Tire Americas
Tumi Contratistas Mineros
OCI South America Holdings
Honda Motor Company
- Advising Tuenti Technologies (part of Telefónica Group) on the filing of opposition against a trade mark application filed by Empresa Nacional de Telecomunicaciones (Entel), succeeding in the first instance but now being heard in a civil court action.
- Advising The Clorox Company on the protection of its brand portfolio in Peru, including litigation before the Peruvian Trademark Office (PTO).
- Representing two Chilean companies, Ewtech Investigation e Innovacion and Proter, on their applications (related to energy efficiency) to the Peruvian Invention Office, before introducing their products to the Peruvian market.
Osterling Abogados acts for a broad array of domestic and international clients but is particularly experienced in the pharmaceutical, beauty and fashion industries, as well as hospitality, for example hotels and restaurants. Clients highlight the efficient and effective service provided by practice head Arturo Tello and his three-strong specialist team. It includes fellow partner Ximena Souza-Ferreira, who combines her practice with competition work, including a substantial volume of advertising matters. The firm has had a number of cases in the appeal courts during the past year defending clients' trade marks.
‘They are a team with immediate response capacity, excellent legal concepts and a great willingness to serve their clients. I have never before worked in Peru with such an efficient office.’
‘Best features are the response times, quality in concepts, willingness and good customer service. Arturo Tello is recommended.’
‘They are quick and give effective responses.’
‘They offer us confidence in the matters that we entrust to them. They handle issues well depending on the matter they are charged with, for example, trade marks and some patents.’
Rimac Seguros y Reaseguros
Frida Kahlo (heirs)
Harley-Davidson Motor Company
- Advised Aventisub, part of Sanofi group, and owner of the trade mark ‘Maalox’, on its opposition proceedings against Pharmaris Peru’s attempt to register the trade mark ‘Curmalox’; won in the first instance and now awaiting the appeal decision.
- Represented Fuxion Biotech, owner of the trade mark ‘BioProtein Active’ in its opposition to the filing by Granatec Peru of the trade mark ‘Bioactiva’, winning in both the first instance and on appeal.
- Acted for Asociación de Representantes Automotrices del Perú, owner of the trade marks ‘Motor Show’ and logo, and ‘Motorshow’, in its opposition application to the registering of the trade mark ‘Motors Show’, winning the case on appeal.
BRDA Abogados is a spin-off of top-tier firm Barreda Moller, where all three partners trained. Jose Barreda and Gonzalo Barreda are experienced professionals who focus on the broader aspects of IP, with Gisella Barreda leading on patents. Principal areas of focus include patent, trade mark and copyright registration matters, unfair competition and data protection; the practice also evidences a strong emphasis on IP litigation. A client gain from the past year is celebrity Peruvian chef Mitsuharu Tsumura, who the firm is advising on trade mark issues related to his famous Maido restaurant in Lima.
‘In addition to the expertise of the partners and the quality of their service, the promptness with which they attend to the requests made is a pleasure.‘
‘Always available, willing and attentive. Sensitive to customer needs.’
‘Good office. Young professionals, always available, quick responses, prices adjusted to the market. Recommend Gonzalo Barreda.’
Bodegas Don Luis
ASB & Motors
Machu Picchu Foods
Destileria Espiritu Andino
Mitsuharu Mike Tsumura Noda
- Defended Donosti on infringement of its patented design and other matters.
- Representing Peruvian celebrity chef Mitsuharu Tsumura in defending the trade mark of his world-renowned restuarant Maido, following an attempt by a third party to register the trade mark in Chile.
Javier Duany at DS Casahierro Abogados has a busy practice, particularly with regard to anti-counterfeiting and brand protection. The firm conducts investigations, customs enforcements, market raids and online enforcement for a large roster of clients, particularly from the entertainment industry. It acted for a global film and entertainment company in this regard during 2019 which involved the seizure of over one million products. The firm merged with French-headquartered international firm DS Avocats in January 2020, which augments the international platform of the practice. Duany leads a team of five associates.
- Representing dairy products manufacturer Helatony’s in infringement proceedings against Nestlé concerning use of the colours’ characteristic of the client’s ‘Donofrio’ trade mark.
- Acting for a global entertainment company in preventive and repressive anti-counterfeiting actions amounting to $1.5m-worth of goods in 2019 alone.
Full-service firm Hernández & Cía. Abogados has noteworthy expertise in this arena, handling trade mark and copyright infringement litigation before regulatory bodies and the courts, as well as day-to-day portfolio management. The firm is particularly in demand from clients in the entertainment and media, retail, banking and telecommunications industries; its practice is part of a wider offering that includes licensing, advertising, publicity rights, freedom of speech and TMT. Experienced IP and competition partner Enrique Cavero Safra heads a small team of three associates, with input from the wider firm where needed.
‘Their concern and information provided during the process is appreciated.’
‘The professional team offers options, alternatives and listens to understand specific needs.’
Procter & Gamble
Viettel Peru – Bitel
Haribo Holding (Rigo Trading)
Gol TV Peru
MG Conceptos – Enfokate
JP Partners Strategic Inteligence
Hudbay Minerals Peru
- Advising Bitel, a subsidiary of Vietnam Telecom (Viettel), on the protection of its trade mark and copyright (software) portfolios.
- Acting for MG Conceptos – Enfokate in its $1.5m litigation against the Coca-Cola Company for copyright infringement following the unauthorised use, for a major advertising campaign, of a proprietary photo booth design by Enfokate. The case was won before INDECOPI; Coca-Cola has launched a judicial appeal.