Intellectual property in Peru

Barreda Moller

A powerhouse in the IP arena, Barreda Moller sets the benchmark in the market. The largest IP-dedicated boutique in the country, it fields a specialist team of 18 lawyers, including five partners, led by stalwarts of the field Alfredo Barreda (trade mark and patent prosecution) and Fernando Barreda (trade mark prosecution and litigation). Consequently, the firm attracts a raft of prestigious brands and global companies as clients and boasts an impressive track-record in contentious IP enforcement and protection actions, succeeding recently on behalf of Spotify, Nike and toy manufacturer MGA Entertainment. Other integral members of the team include: Carlos Auza, a trade mark and copyright lawyer; trade mark and general commercial specialist Micaela Mujica; and Marcela Escobar, who works across all areas of trade mark, patents and copyright.

Practice head(s):

Alfredo Barreda; Fernando Barreda

Key clients

Spotify AB

Orkam South America Trademark

Union des Associations Européennes de Football (UEFA)

All Star

Nike Innovate

Hyundai Motor Company

MGA Entertainment

Electrolux Home Products

Colgate-Palmolive

prAna Living

Target Brands

Uber Technologies

The Children’s Place

Beiersdorf

Fila Luxembourg

Viacom International

Akzo Nobel

Work highlights

  • Successfully represented Spotify in opposing the trade mark “Spotmusic”, as well as successfully preventing a third party from entering the market with a service bearing a similar trade mark.  
  • Successfully acted for Nike Innovate in filing an opposition against an application by Calzados Decco Garnelo for a similar-looking ‘swoosh symbol’ trade mark; the opposition was which was sustained and the registration rejected.  
  • Reaching a favourable settlement on behalf of MGA Entertainment in an expedited infringement action against an importer of counterfeit dolls bearing the trade mark “L.O.L. Surprise!”, resulting in all the infringing goods being destroyed.

Estudio Echecopar member firm of Baker McKenzie International

Luis Alonso Garcia has built a superb reputation and practice at Estudio Echecopar member firm of Baker McKenzie International, earning the firm an expanding client base of leading domestic and global companies from heavily IP-dependent industries, including pharma, media and manufacturing. In addition to its comprehensive IP portfolio management service, the team handles both local and international litigation, anti-counterfeiting and anti-piracy enforcement that includes customs interception, and commercial and transactional support such as technology transfer, non-disclosure, data protection, IP due diligence and franchise agreements. The six-strong team also includes partners Manlio Bassino, who specialise in brand management and enforcement, and copyright expert Alvaro Gutiérrez, who -notably- has life sciences expertise. Associate Andrea Jimenez has been particularly active during the past year on key matters.

Practice head(s):

Luis Alonso Garcia

Key clients

Gloria

Abbott Laboratories

Bodega San Isidro/Barsol

British American Tobacco

Banco Santander

Cavelier Abogados / Comite Interprofessionnel du Vin de Champagne

Quala Incorporated

Ajeper

Softys / CMPC

3M

Work highlights

  • Representing Compania Latinoamericana De Radiodifusion (Latina) in a copyright infringement action involving an audiovisual work in Peru.
  • Acting for Bodega San Isidro/Barsol (a manufacturer and global exporter of Pisco) in a preliminary investigation conducted by the Trade Mark Office.
  • Advising a range of clients from the personal care, agriculture and beverages sector with regard to the registration of trade marks for Covid-19 personal protective equipment (PPE) manufactured by them.

Muñiz, Olaya, Meléndez, Castro, Ono & Herrera Abogados

Muñiz, Olaya, Meléndez, Castro, Ono & Herrera Abogados showcases its expertise in this field with a vast client roster of household-name brands and emblematic companies, including Facebook (a recent gain), Volkswagen and Amazon, plus a raft of pharmaceuticals. Its team of nine lawyers is wholly dedicated to this area of practice: partners Piero Calderon-Oliva and Bruno Merchor-Valderrama lead on anti-counterfeiting/piracy and patents work, respectively. Notably, Calderon-Olivia has led the anti-piracy campaign for Microsoft and the Business Software Alliance in Peru for over 15 years. Overall head of the practice, Marta Fernández-Pepper leads on all trade mark matters and is a well-known industry figure. Six associates, including the experienced Johana Calderon-Valencia, complete the legal team, which has additional support from two in-house pharmaceutical chemists and an industrial engineer.

Practice head(s):

Marta Fernandez-Pepper

Testimonials

Responsible, serious and stable.’

Johana Calderón Valencia provides very careful and comprehensive advice.’

Bruno’s team is extraordinary; they have extensive knowledge of intellectual property issues and have handled our cases with 100% effectiveness and remain constantly friendly and willing to resolve our concerns.’

The work we do is with Bruno Melchor, who always gives us the assurance that we are in excellent hands with good advice. We haven’t really worked with other competitors, we haven’t had the need.’

The follow-up and relevance that they provide to their customers stands out.

Marta Fernandez is always available with a big smile and the best disposition to serve clients; regardless of hours or days, she gives herself a space to find the best solution for her clients with a great commitment.’

Highly specialised and personalised advice. For us, it is the personalised attention.’

Despite not being a boutique specialised in IP, they have a great knowledge of the various IP matters and are very quick in their response. Would recommend Marta Fernandez and Johanna Calderon.’

Key clients

Cervecerías Peruanas

Backus y Johnston (Peruvian subsidiary of AB InBev)

Business Software Alliance

Microsoft Corporation

Cisco Systems

Bristol Myers Squibb Company

Rappi Inc.

Novartis Pharma

Banco Bilbao Vizcaya Argentaria

Tiendas por Departamento Ripley

Sandoz

Damper Trujillo

Cerámica Lima

Corporación Cerámica

Eurofarma Perú

Volkswagen

Amazon

Betfair

Uppay

Facebook

Work highlights

  • Represented Volkswagen in the application for registration of a sound trade mark to identify vehicles and means of transport; grouping, on behalf of third parties of automobiles, parts, and vehicle accessories: and transport services; this non-traditional trade mark was successfully registered in favour of the client.
  • Successfully opposed an application for trade mark registration on behalf of Tianneng Battery Group based on copyright of the design and bad faith of the applicant.
  • Acted for Interconexion Electrica in successful opposition against the registration of the trade mark ISA filed for Ismael Coco Chujica Flores based on noterietory recognition of the trade mark.

Rodrigo, Elías & Medrano – Abogados

Rodrigo, Elías & Medrano – Abogados provides considerable muscle in this area, its team comprising two market-leading individuals in María del Carmen Alvarado and Héctor Álvarez supported by a band of five capable associates. Both lead partners are noted for their very hands-on approach, leading matters both large and small. The practice excels as both a stand-alone operation handling all facets of IP protection, and a corporate support team, advising on some of the most demanding transactions in the country. An illustrious client list includes PepsiCo, Panasonic and Mars, while Microsoft is perhaps the practice's star client, which it recently successfully advised on the defence of its 'Onedrive' trade mark in Peru. Among associates of note are seniors Ricardo De Vettor, who assisted on the Microsoft case; and Ximena Aramburu, whose practice includes domain names.

Practice head(s):

Hector Alvarez; María del Carmen Alvarado

Testimonials

‘It is the leading firm in the provision of services in Peru. High availability of the partners and good lawyers with high expertise.’

They have provided us with good support in litigation matters, handling them satisfactorily and obtaining positive results for clients. Outstanding partner is Hector Alvarez.’

Quality and client-oriented, with a service attitude. They are a true business partner.

Maria del Carmen Alvarado should be highlighted. She knows and understands very well our business and industry. She is an excellent business partner and is always seeking the best cost effective and efficient solution to clients’ needs.’

Maria del Carmen Alvarado and Hector Alvarez are a formidable team advising on all types of trade mark protection and enforcement. They are responsive, pragmatically creative in solutions and will go the extra mile to reach a solution.  I don’t use any other team in Peru.’

They are lawyers with great experience and knowledge in intellectual property; they have solid resources to exercise an adequate defence in the cases entrusted and to give strong legal opinions.’

Hector Alvarez is the predominant figure in the area of ​​intellectual property and his national and international recognition, coupled with his knowledge, experience and respect is what, in my view, makes this firm stand out. It should be noted that Hector coordinates very well with his team of lawyers to provide first class services.’

Hector never fails to provide commercial, well considered and practical advice – and promptly.’

Key clients

PepsiCo

Inditex (Zara)

Microsoft Corporation

Panasonic Corporation

Mars

Colombina

Abercrombie & Fitch Europe

Reckitt Benckiser

Goodyear Tire & Rubber Company

Assa Abloy Group

Discovery Communications

Tessenderlo Kerley

Kawasaki Kabushiki Kaisha

NV Bekaert

Immunotec

The Singer Company

American Airlines

MJN US Holdings

Purecircle USA

McCaffee

Work highlights

  • Successfully defended Microsoft Corporation in a trade mark cancellation action brought by Nidec Control Techniques, seeking to cancel the trade mark “Onedrive” which was an obstacle to the registering of its own “Unidrive” trade mark.
  • Succcessfully defended Mars, Inc. in a trade mark cancellation action brought by Corporacion TDN, seeking to cancel the trade mark “Celebrations” which was an obstacle to the registering of its own “Celebraciones de Todinno” trade mark.
  • Represented Total in a successful appeal to INDECOPI following the refusal to register a Total trade mark.

Allende & García Abogados

An impressive caseload at IP boutique Allende & García Abogados demonstrates its strength across all core disciplines of IP work: trade marks, patents and copyright, with stand-out capability in trade mark litigation. The firm's three partners comprise trade mark experts Jorge Allende and Magali García, and patent and copyright specialist  Dafne Ramos, who is leading advice to media company Empressa Editora El Comercio in its infringement dispute with La Liga, winning at the first instance. The dynamic team attracts clients from an eclectic mix of sectors and include Visa International, FIFA, Red Bull and Novartis.

Practice head(s):

Jorge Allende; Magali Garcia; Dafne Ramos

Key clients

Red Bull

FIFA

Novartis

VIisa International

Empresa Editora El Comercio

Grupo Cencosud

Colgate Palmolive Corporation

Corporación Stewart

Compass Minerals America do Sul Industria e Comercio

Laboratorios Pisa

Weir Group

Aceros Arequipa

Nextleaf Solutions

Questel

GIA Design Lab

Work highlights

  • Regular advice to Novartis with regard to multiple patent prosecution applications before the Peruvian Patent Office.
  • Defending the trade marks of Red Bull in eight separate prosecution and litigation cases; and in a separate matter, the negotiation of a  coexistence agreement with Backus & Johnston.
  • Successful first instance defence of media company Empressa Editora El Comercio in a copyright infringement action brought by La Liga following the use of links belonging to La Liga used on the client’s website; the case has been referred to the tribunal at INDECOPI.

BARLAW – Barrera & Asociados S. Civil de R.L.

Best-known for its anti-counterfeit expertise, BARLAW – Barrera & Asociados S. Civil de R.L. is a progressive and flourishing boutique, led by 'the queen of anti-counterfeit work in Peru' Adriana Barrera. A hefty team of 17 lawyers have capability across all aspects of IP; it includes partners María Inés Herrera and the recently -January 2021- promoted Medalith Albarracín. A plethora of household-name global brands and companies instruct the firm, including Honda, which the team successfully represented in actions against three companies that copied the essential features of its motorcycle industrial designs. Huawei, Mifarma and New Image Global are recently-gained clients.

Practice head(s):

Adriana Barrera

Testimonials

BARLAW’s brand protection is unique because it has the expertise in all areas –  customs, raids/seizures, online enforcement and investigations, market surveys and offline/online connections. They are proactive in identifying key targets and making connections in the market and online necessary to successfully remove the bad actors from the marketplace.

The individuals I work with at BARLAW are proactive, efficient and collaborative.  They care and make themselves an extension of our company’s family.’

The BARLAW team provides excellent, cost-effective advice. They are quite successful at obtaining positive results in oppositions and cancellations. They provide solid advice as to which infringements to pursue and which to leave alone. They are extremely responsive.  Their communications are easy to read and digest, and they provide concise advise.’

Andrea Chunga, Adriana Barrera and Maria Ines Herrera are all extremely knowledgeable, responsive and easy to work with. They provide practical advice, and achieve excellent results. I am extremely satisfied with the work they are doing for us.’

The BARLAW team is extremely dedicated and pro-active. They learned quickly about the client’s needs and preferences, and are very pro-active.’

Adriana Barrera, Maria Ines Herrera, Medalith Albarracin and Andrea Chunga are part of the all-female team assisting our clients in prosecution and infringement matters in Peru. Skilled in legal advice as well as in negotiations.’

Very professional and dedicated team, leaders in protection and defence of brands. Excellent network of contacts that allows you to perform many actions.’

Very accessible and available.’

Key clients

adidas Group

Amazon Technologies

Biofarma – Les Laboratories Servier

Burberry Limited

Cervieri Monsuárez & Asociados

Chanel

Colgate-Palmolive Company

Crocs

Epson America

Guccio Gucci

Hewlett-Parkard

Honda Motor Company

Huawei Technolgies

LEGO Juris

Nike Innovate

Philip Morris International

Sony Interactive Entertainment

Vans

Work highlights

  • Successfully represented Honda Motor Company in actions before the Peruvian Patent Office against three companies regarding the commercialisation of motorcycles that copied the essential features of Honda’s industrial designs.
  • Representing Nautilus Energy Holding/Inkia Energy in the global strategy for the protection of the trade marks Inkia, Inkia Energy and others across Latin America, in the name of Nautilus Energy Holding, the global IP holder.
  • Acting for Seiko Epson Corporation in a counterfeit seizure of goods similar to the trade dress of the Epson inks and in the subsequent criminal investigation.

Estudio Colmenares

Estudio Colmenares enjoys a long-standing reputation in the market for its IP expertise. While the boutique firm advises across the full suite of IP work, both contentious and non-contentious, it is particularly strong in patent and design matters, as well as all trade mark issues. An extensive client roster of domestic and international companies from a range of industries, including agrochemical, pharmaceutical, automotive and machinery, and fashion instruct the firm for ongoing portfolio management and one-off high-stakes matters. Managing partner Luis Gayoso Frayssinet is a well-known market figure, and co-leads the practice alongside the very experienced María Del Carmen Arana, who is noted for her patent litigation capability.

Durand Abogados

An impressive client portfolio at Durand Abogados comprises a raft of multinational and Fortune 500 companies, demonstrative of the high-calibre practice at the firm. It is largely, though not exclusively, of German focus, its lead lawyers of German origin with first-class language skills able to service German companies doing business across Latin America; they include BioNTech, developer of the Pfizer Covid-19 vaccine, which the firm is advising on its trade mark portfolio in Peru. The fully-comprehensive offering advises on trade marks, patents, copyright and entertainment law for example, and is particularly in demand for trade mark litigation. Head of practice Juan Carlos Durand Grahammer is relationship partner to Sony Electronics, Universal Music and Warner among others, while Christian Durand Grahammer and Armando Pastor Vera are also key advisers.

Practice head(s):

Juan Carlos Durand Grahammer

Key clients

Sony Electronics

Lenovo

Hitachi

Oracle

Thyssenkrupp

Biontech

Lidl Stiftung & Co

Le Mans-Automobile Club De L ́ouest

Department of Health and Human Services of the United States of America

Yara International

Opel Automobile

Andreas Stihl

Ferrarelle

Carolina Lemke

Laboratoires Théa

Juniper Networks

Fenix International

Automation Anywhere

Figs, Incorporated

Universal

Assa Abloy

Warner

Starwood

Next Group

Work highlights

  • Representing Megatrax Production Music in a copyright dispute related to the unauthorised use of its music catalogues on TV channels in Peru.
  • Advising Echnopartner Rastreamento Eireli Me, a Brazilian company in the electronic security systems trade, on the patent application for its ‘system and method for tracking mobile assets, initial loss warnings, tracking device and corresponding computer programs’, in Peru.
  • Acting for Norway’s Yara International in several oppositions to protect its extensive rights to their marks ‘YARA’ and ‘ACTYVA’.

DS Casahierro Abogados

DS Casahierro Abogados advises on all areas of IP work, but its core focus is anti-counterfeiting and brand protection work, where the firm acts for some global giants of the entertainment and electronics industries. The team also handles the trade mark and patent portfolios of companies from other sectors, particularly pharmaceuticals and agrochemicals. Head of the practice Javier Duany has over 25 years' experience in protecting national and foreign trade mark and patent portfolios and leads a team of four associates, including the experienced Jessica Ortiz, who has a focus on life sciences.

Practice head(s):

Javier Duany

Testimonials

It is a very strong practice in anti-piracy issues.’

Their knowledge of anti-piracy issues stands out.’

Great knowledge of the business, in addition to the practice area to which they are dedicated. They have business vision and ability to integrate legal solutions to business interests. Great adaptability to changes in internal processes of our company and specific needs.’

I should especially highlight the role of Javier Duany and Jessica Ortiz, who remain very involved in the care of our company, providing follow-up and close communication, openness and interest in permanently improving the service. Total availability. The team has extensive experience in the area of ​​intellectual property, and they have provided effective solutions to problems that we have raised in a practical and correct way. The team is characterised by having a really close relationship with the client, on a day-to-day basis, which greatly facilitates communication and interactions in general.’

It is an integral and very professional team. In DS Casahierro, they were first class since there was always a completely transparent communication. We consider it to be the beginning of a long-term relationship.’

Without a doubt I would emphasise two points specifically: their personalised attention and their vast knowledge in the specific topics that we have instructed them on. The brand itself speaks volumes and is recognised in the market and that is synonymous with a very good job for years and the long-term vision that is valuable in today’s business.

Key clients

Faes Farma

Montana

Tecnología de Materiales

Sociedad Química Alemana

Apotex

React Latin American

Servicios y Formulaciones Industriales (SERFI)

Tiendas Superpet

CV of America

QSI Peru

CorralRosales Cia.

Laboratorios Pisa

BKIP

Citikold del Perú

Novo Nordisk

ADM Inca

Anita Food

Frutarom Perú

Jauregui y Del Valle

Química Suiza

Huinco Group

Mi Farma

Panamericana de Patentes y Marcas

Fabara & Cia Abogados

Mascotas Latinas

Quimica Sagal

Yuasa and Hara

Mónica Montenegro

Fitpass México

Programa de Apoyo Nutricional basado en Soya

Work highlights

  • Acted for QSI Peru in opposing various trade mark registrations, and in the defence of trade marks, all related to packaging, on the grounds of confusion between the packaging of the products.
  • Advised CorralRosales in filing a cancellation action against the ‘Bizcolato’ trade mark registered by Denisse Peralta, infringing the well-known “Biscolato” trade mark owned by Solen Cikolata Gida Sanayi ve Ticaret Anonim Sirketi.
  • Advised Fitpass México on the filing of a nullity action against the “Fitpass” trade mark by Fitness Pass for bad faith registration, based on the Fitpass trade mark registered in Mexico, according to Washington Convention.

Espinosa Bellido Abogados

Espinosa Bellido Abogados has been established for many decades, earning a sterling reputation and loyal client base of domestic and international companies, as well as foreign law firm seeking Peruvian counsel. The IP boutique and family business is led by Francisco Espinosa Reboa, formerly of INDECOPI, who advises across a variety of IP work, both contentious and non-contentious. The team acts on all aspects of IP work, as well as domain name issues, advertising and consumer law, and is highly active in both prosecution and litigation. Attorneys Ana Cecilia Sotelo Aguilar and Carolina Martinez Hoepelman lead the litigation and patents departments at the firm, respectively.

Practice head(s):

Francisco Espinosa Reboa

Key clients

Canon

Hitachi

Toyota

Mitsui Chemicals

Group Falabella

Miró Quesada Family

Estudio Olaechea

A solid practice at Estudio Olaechea handles some high-stakes matters for market leaders through to fledgling enterprises: it is advising Telefónica subsidiary Tuenti Technologies in long-running litigation against Entel regarding similar trade marks in Peru, and steering Indian pharmaceutical start-up Troikaa Pharmaceuticals through its patent and trade mark filings. Partner and practice lead Mónica Germany has over 25 years' experience and is well-known amongst IP professionals. She leads a team of two associates that includes experienced Cristina Fernandez, who advises on patent and trade mark prosecution, copyright and related disputes. Grifith Food International and Little Caesar Enterprises are recent client gains.

Practice head(s):

Mónica Germany

Key clients

Tuenti Technologies

The Clorox Company

Off White

Universidad del Pacifico

Troikaa Pharmaceuticals

AIDS Healthcare Foundation

Larenon Healthcare PVT

Mayo Foundation for Medical Education and Research

Megacell Telecomunicaciones

Vigo Remittance

Alliance Tire Americas

TUMI Contratista Mineros

Braskem

OCI South America Holdings

Honda Motor Company

Diospi Suyana

Grifith Food International

Little Caesar Enterprises

Senior Connection

Work highlights

  • Advising Universidad del Pacífico regarding the registering and protection of its brand portfolio in Peru, including litigation before the Peruvian Trademark Office.
  • Representing Tuenti Technologies, part of Telefónica Group, in litigation concerning its opposition to the trade mark application filed by Empresa Nacional de Telecomunicaciones (Entel).
  • Acting for Indian pharmaceutical start-up Troikaa Phamaceuticals in the filing of different patent applications before the Peruvian Invention Office, and in the registration of trade marks in Peru.

Osterling Abogados

At Osterling Abogados, senior partner Arturo Tello has built an effective IP practice that encompasses the full spectrum of IP needs, from trade mark, patent and copyright protection and enforcement through to the IP aspects of M&A. Of note is the growth in anti-counterfeiting work at the firm, which includes acting for well-known apparel brands Dr Martens and Fila in this regard. A broad industry client base is advised by the practice but the pharmaceuticals, beauty and fashion industries, as well as the hotel and restaurant sectors, are particularly well represented by the team. Associate Jean-Carlo Costa shines for his integral role in the practice.

Practice head(s):

Arturo Tello

Testimonials

They are very fast in their responses and the quality of the work is worth its price. Additionally, I feel very secure, knowing that Arturo Tello himself is always handling and/or overlooking our matters in Peru.’

Their response times are impeccable.’

Key clients

Sanofi

GlaxoSmithKline

L’Oreal

Rimac Seguros y Reaseguros

Frida Kahlo (Heirs)

Maxam Holdings

Harley Davidson

Dr Martens International Trading / Dr Maertens Marketing

REACT (network grouping luxury companies for anti-counterfeiting matters)

Prosegur Group

Work highlights

  • Acting for Dr Martens International Trading and Dr Maertens Marketing in several successful oppositions against third parties’ applications for similar trade marks, and in the investigation of possible counterfeiting acts.
  • Advising Fila Luxembourg in respect of anti-counterfeiting measures, including actively participating with Customs in several infringement actions during the last year.
  • Representing the UK’s Ascot Racecourse in the protection of its trade marks in Peru, including the successful opposition to a trade mark filing on the grounds of bad faith.

BRDA Abogados

BRDA Abogados' team of three partners enjoy a strong pedigree, being the younger generation and spin-off of top tier firm Barreda MollerJose Barreda, Gonzalo Barreda and Gisella Barreda have created a solid practice, servicing a growing list of domestic and international companies on all their IP legal needs, with a particular focus on the pharmaceutical, biotech and manufacturing industries. Gisella Barreda is particularly strong in patent registration and litigation, while her fellow partners advise on all IP areas.

Practice head(s):

Jose Barreda; Gonzalo Barreda; Gisella Barreda

Testimonials

Very fast, accurate and a good price for the service.’

Very quick and thorough in their responses.’

Clarity in their legal opinions, which offer the client a complete vision on the matters under consultation.

The accuracy with which they attend to clients’ inquiries, and the discipline in keeping the client duly informed about each advance within the process, stand out.’

They have outstanding technical knowledge. Gonzalo Barreda not only has outstanding technical knowledge, but also has a great capacity to develop very effective strategies.’

Key clients

Acava

Bodegas Don Luis

Corporación Rey

Comercializadora Cobertura Negusa

Sector Negocio

Treca

Destileria Espiritu Andino

Corporación ADC

Servicios Pulser

Marco Peruana

Work highlights

  • Represented Marco Peruana in reversing a first instance resolution that annulled all its trade mark registrations in Peru.
  • Defended Donosti on infringement matters.
  • Representing ACAVA in several cases as part of a strategy to gain exclusive rights over the trade marks ‘Think Big’ and the Spanish translation ‘Piensa Grande’.

ClarkeModet Peru

ClarkeModet Peru is well-known in the market for its IP capability, the office forming part of a Spanish-headquartered, international IP boutique network. A change of general manager in Lima in September 2020 has rejuvenated the profile of the practice, with Silvana López assuming the reigns following a period in-house. Alongside fellow partner Jimena Ugarte, the pair lead a well-resourced team of 11 legal and non-legal personnel, including chemical, engineering and microbiology professionals. The team advises on all aspects of IP work for a largely international client base. Consultant José Marquis is a key adviser.

Practice head(s):

Silvana López; Jimena Ugarte

Work highlights

  • Represented a client in the entertainment and sports industry in the prosecution, successful appeal to overcome denial, and successful drafting and negotiation of a trade mark coexistence agreement.
  • Acting for a foreign food and beverage company in a trade mark dispute with a well-known competitor concerning a high-profile food brand.
  • Successfully defending a client in the pharma / cannabis sector in a trade mark opposition dispute, and subsequently securing registration of the trade marks.

Fernández-Dávila Abogados

Fernández-Dávila Abogados is a thriving IP and life sciences boutique that opened its doors following a 2019 split from the legacy firm Fernández-Dávila & Bueno Abogados. Founding partner Carlos Fernández-Dávila Winkler is widely respected for his expertise in the defence and protection of patents and trade marks, particularly for the pharmaceutical and agrochemical sectors. He heads the practice alongside fellow partner Ivette Luque Cárdenas, a specialist in life sciences regulation and IP law. The team's impressive client roster includes multiple pharmaceutical giants (Pfzier, Merck, Bayer, Novartis), Diageo and Procter & Gamble.

Practice head(s):

Carlos Fernández-Dávila Winkler; Ivette Luque Cárdenas

Testimonials

I have been working primarily with Carlos Fernández-Dávila Winkler on threatened patent infringement matters in Peru.  Carlos is extremely knowledgeable about the relevant patent and regulatory law.  He is able to explain matters in a clear and concise way. For example, in one matter, he was able to clearly explain aspects of Peruvian law that are different from the law in other countries that I have cases in and provide excellent advice on what steps we should take in various matters.  He has been successful in negotiating with adverse parties on my company’s behalf.  He is also a pleasure to work with. Ivette Luque has worked on some of the above-mentioned matters with Carlos and she also seemed excellent.  I am extremely pleased with their work.’

Key clients

Diageo

Croplife Latin America

Pfizer Inc (and its subsidiary in Peru)

E I du Pont de Nemours and Company

Novartis Pharma and Novartis

Boehringer Ingelheim

Merck

Bayer

Syngenta

FMC Colombia / FMC Corporation

APG Division / FMC Latinoamerica sucursal

Laboratorio Ballerina

EISAI R&D Management

Productos Sancela del Perú and Productos Familia del Perú

Kimitec Group

Procter & Gamble Perú

Sanulac Nutricion Perú

Merck Sharp & Dohme Perú

Work highlights

  • Successfully represented a chemicals company in a trade mark infringement dispute.
  • Advising a food and beverage company on a trade mark oppostion action which was successful at the first instance and is now under appeal.
  • Representing a global pharmaceutical company in a patent infringement action, including an invalidation action filed by the opposing party as a defensive measure.

Hernández & Cía. Abogados

Hernández & Cía. Abogados offers clients a comprehensive intangible-assets protection service that combines all areas of IP work with competition, advertising, data protection, consumer and technology law under one umbrella, and led by IP and competition partner Enrique Cavero. On the pure IP side, the team typically advises on high-stakes litigation or more complex trade mark issues as opposed to high-volume filing work; it is currently acting for Consorcio Fútbol Peru with regard to the IP aspects of its broadcasting, image and publicity rights.

Practice head(s):

Enrique Cavero

Key clients

Procter & Gamble

Viettel Telecom – Bitel

Haribo Holding (Rigo Trading)

Japisale

Sartorius

Hudbay Minerals Peru

Accenture

Sun IP

Gandules Incorporated

Zinpro Corporation

JP Partners Strategic Intelligence

Puma

Incapack

Universidad San Ignacio de Loyola

Polinplast

Consorcio Futbol Perú (CFP)

Work highlights

  • Providing 360-degree legal advice to technology startup Japisale, which supplies technology platform services for e-commerce businesses of all sizes; the work includes the protection of all its IP.
  • Representing MG Concepto – Enfokate in a $1.6m copyright lawsuit against The Coca-Cola Company for unauthorised use of an Enfokate proprietary design in an advertising campaign; the case is now before the higher courts.
  • Acting for Consorcio Fútbol Peru (CFP), a joint venture bewteen Movistar (Telefonica) and GolPeru (Gol TV), owners of the broadcasting rights of the Peruvian Football Championship, in respect of IP management of broadcasting rights (TV and internet) as well as related IP rights, such as trade marks, image and publicity rights.