Romero Pineda & Asociados

Meet the team

Romero Pineda

San Salvador, El Salvador

+5032505-5555

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Deals

Client: Brandstock (Now Questel) / Main owners involved during this period: CPS Technology Holdings LLC, Subway IP LLC, GAP Inc., BASF, Reckitt Benckiser, 3M COMPANY, Kraft Heinz Foods Company, Strellson AG, Hormel Foods Corporation, Emilio Pucci

Case Summary:

Questel is one of the world’s largest intellectual property software and service providers, which signed an agreement to acquire a majority stake in Brandstock, an international player in IP Services as part of their ongoing strategy to build a one-stop-shop offering in the areas of IP and innovation.

Management portfolio actions: Brandstock (Now Questel) continues entrusting our firm with several projects. In 2022 we proceeded with the recordal of the new address of Subway IP LLC against their trademark portfolio in El Salvador. The project consisted in the review of the wrapper files at the IP Registry, advise preparing the necessary documents and filing the change of address applications.

We have also filed renewal procedures for around 180 trademarks of different owners managed by Brandstock such as GAP Inc., BASF, Reckitt Benckiser, 3M COMPANY, Kraft Heinz Foods Company, etc., along with other recordal projects of acquisitions, change of name and/or domicile for titleholders such as Strellson AG, Hormel Foods Corporation, Emilio Pucci, etc.

Regarding IP rejections: CPS is a world-leader in developing advanced materials solutions for transportation, energy, aviation, defence, and oil and gas industries. We filed an application for mark OPTIMA and design in classes 9, but this application was preliminary rejected by the Trademark Office, since according to the Examining Attorney the mark OPTIMA means “Extraordinary, good or better”, which is a term describing a characteristic of the products to be protected in class 09.We recommend to answer to the office action, arguing that the mark OPTIMA, is not describing the characteristic of the mark, since is a mark created by CPS Technology Holdings LLC., and that the mark should be analysed as a whole and not only for the word OPTIMA. Due to our arguments, we successfully obtained the admittance of the new application for the mark Optima and design for goods in class 09.

Team: José Roberto Romero, Elsy Elena Durán and Nadya León

Area: Intellectual Property

Client: Productos Alimenticios Bocadeli, S.A. de C.V.

Case summary:

Bocadeli is a regional company leader in the production of salty snacks and sweets, cereals, and wafer cookies. Among the markets in which Bocadeli is present, we can mention El Salvador, Honduras, Costa Rica, Guatemala, Belize, Nicaragua, Dominican Republic, and United States of America.

With more than twenty years of experience, Bocadeli is a giant in the food industry. Its principles and values have been determining factors for business development in El Salvador. In 2022 we customized an educational program for this company, especially for the creative and marketing group to provide IP criteria and knowledge to strength marketing and publicity and increase the IP assets for this company. We have recently assisted to this company for implementing confidential agreements and Assignment of Copyrights between employees and company to protect the IP rights created during normal operation.

Bocadeli filed an application for marks GUSTITOS SUPERCHURRO and GUSTITOS SUPERCHURRO Y DISEÑO in class 30 in the United States of America by another agent. The applications were opposed by J&J Snack Foods Corp, based on its mark SUPERCHURRO. We advised our client a new strategy to answer to the opposition and to continue with a negotiation with the opponent for the coexistence of both marks. The coexistence agreement was signed, and the marks will be registered in the next months. We succeeded in settling this case and to have the coexistence of the marks.

We have become Bocadeli’s responsible for all trademark searches, new filings, prosecution, renewals, and IP strategies in El Salvador, Guatemala, Honduras, Costa Rica, Nicaragua, Panama, Belize, Dominican Republic, Peru, and the United States of America. We advise the company with thorough legal marketing strategies when conducting availability searches, filings, and renewals.

We also conduct a regional trademark watch service to protect our client’s assets and advise our client in our IP related matters. We have also protected their industrial designs and copyrights to protect their IP assets.

Team: José Roberto Romero, Carlos Castillo, Elsy Elena Durán, Nadya León and Susana Navarro.

Area: Intellectual Property

Client: Belcorp, S.A. de C.V.

Case summary:

BELCORP is a corporation with more than 45 years of experience in the beauty sector. Its brands L’Bel, Esika and Cyzone reach millions of clients in 15 countries of Latin America.

We are promoting an executive process against an employee of the company who improperly appropriated the amount of US$46,092.35.

We are currently locating the defendant to make the legal notification of the lawsuit and then carry on the legal process and reach the payment of the debt.

The location proceedings consist of the judge requesting information from different State offices that collect information from their users, such as: Ministry of Finance, Registry of Natural Persons and Property.

Team: Francisco Martínez y Feridee Alabi

Area: Dispute and Resolution

Client: Polycolor International Sociedad Anónima

Case summary:

Polycolor Internacional Sociedad Anónima, is a Guatemalan Company dedicated to manufacturing and commercialization of masterbatches and additives. Our client was notified that a third party registered an identical mark POLYCOLOR with the same design. We advised our client on the best strategy to protect its mark and design before filing a judicial cancellation against the infringing mark. We filed a cancellation action against the mark Polycolor registered by the third party and after arguments from the Judges the action was finally admitted. In the first hearing we negotiated with the counterparty, and she accepted the voluntary cancellation of the mark, and our client filed the withdrawal of the judicial action. We succeeded in settling this case to protect the mark of our client and POLYCOLOR will be registered in the next months in the name of our client.

Team: Carlos Castillo y Nadya León

Area: Dispute and Resolution

Client: Acajutla Project/ OPIC(DFC), IFC, FINNVERA, BID, BID Invest, KFW

Case summary:

ACAJUTLA PROJECT is an investment project for the construction of a natural gas generator for 355 MW, jointly ventured by INVENERGY and Energía del Pacífico (EDP) to sell energy in the local and regional markets.

Our firm was appointed as local counsel by a group of well-known Senior Lenders including International Finance Corporation (IFC) former Overseas Private Investment Corporation (OPIC), FINNVERA (the Official Export Credit Agency for Finland through FEC- Finnish Export Credit Ltd), Inter-American Development Bank (IDB) and Kreditanstalt Fur Wiederaufbau (KFW).

This transaction implies the construction of the largest private clean energy generator in El Salvador and one of the biggest projects in El Salvador’s history with more than 1,000 direct jobs in the construction phase and will allow the promotion of the use of natural gas as a new source of energy and its many applications in the commercial and industrial sector; all of which will produce a positive environmental impact country-wide and social and investment impact in the port city of Acajutla.

We are currently working with senior lenders to verify compliance of conditions established in the finance agreement, among which it includes to execute and update securities during beginning of operation of the project, Project Operation started on May 1^st, 2022

Team: José Roberto Romero, Francisco Martínez, Antonio Méndez, Camila Villafuerte and Irene Arrieta.

Area: Corporate and M&A

Client: Inversiones B.O.S.H., S.A. de C.V.

Case summary:

We have advised our client in the real state development of a corporate office building and shopping mall in construction in one of the most exclusive locations in San Salvador.

Our advice has included:

Assessment and obtaining of feasibility and construction permits
Negotiation and execution of service providers contracts for the construction phase.
Planning, drafting, negotiation and execution of promises for lease agreements, promises for purchase agreement for locations under construction, leases, and sales of locations and
Drafting, negotiation execution of vertical real state regimen and condominium rules of administration and its authorization before the authorities
Relationships with local Banks that finance the project and managing of securities for each of the construction phases.

Currently, we are on the commercial phase of the project of office spaces and commercial spaces, we had also assessed the company in the drafting on the regulations of use of common spaces and the administration of the entire building.

Team: José Roberto Romero and Gabriel Lara

Area: Corporate and M&A

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Team Services

Romero Pineda provides a full range of legal services to international, regional and local businesses. Founded in 1978 by Dr Roberto Romero Pineda, the firm is organised in four primary departments, banking, corporate, intellectual property and litigation, which work collaboratively to assure a comprehensive perspective and specialised expertise. Superior legal knowledge, excellent skills and responsive client service have always been absolute priorities of the firm. Romero Pineda is the exclusive Salvadoran member in the world’s leading legal and business network: Lex Mundi which has stringent performance standards and provides the firm access to legal experts around the world. The firm has continually been granted the top ranked category by Chambers and Partners Latin America and its lawyers have been catalogued as Leading Lawyers by IFLR 1000. The firm has been awarded as ‘IP Law Firm of the year’ and all its practices are highly ranked.

Main Areas of Practice:

Intellectual Property:
The firm’s lP department helps clients identify, secure, assert and defend all aspects of their intellectual property rights in trademarks, copyright, patents, domain names and trade secrets. In addition to IP administration, Romero Pineda’s lawyers have been recognised for their transactional experience involving IP, such as acquisitions, sales, technology transfers, e-commerce, and licenses and franchising.
The intellectual property team identifies, secures, upholds and protects clients’ inventions and creations. Clients, in turn, trust the firm to protect their innovations, literary and artistic works, symbols, brands, business names, domain names and trade secrets they use in the global market.
The group also prosecutes the health/sanitary registrations required for health, personal care and food products. With the litigation department, the firm has unequalled capability in IP conflicts, disputes and enforcement.

Corporate:
The firm advises domestic, regional and multinational entities on the establishment, diversification and expansion of commercial operations, including business structure, mergers and acquisitions, contracts, free trade zone projects, due diligence, labour relations, immigration and foreign investment registration.

Banking & Finance:
Romero Pineda’s banking department provides highly specialised legal services to domestic and international banking and financial institutions regarding the establishment and development of operations in El Salvador and Central America. The firm is experienced in handling matters such as incorporation of new banks; secured, unsecured transactions and collateral; syndicated loans; acquisition of local banks; cross-border loan transactions; and due diligence investigations.

Litigation:
The litigation department is experienced in all types of commercial disputes and equipped to handle complex cases involving multinational parties. The firm has a demonstrated record of success at the trial and appellate levels, and is also experienced in negotiating settlements. Several of the firm’s lawyers are certified mediators and arbitrators.

Antipiracy:
The firm’s specialised anti-counterfeiting team works with clients to manage and implement their strategies and enforcement programs, including monitoring procedures, border enforcement measures and litigation.

Franchising & Licensing:
Romero Pineda assists clients in expanding their businesses through licensing, franchising and distribution arrangements. The firm has helped international franchisors to conform their agreements and operations to local requirements.

Labour:
The firm’s expertise in labour law is key to helping the clients to comply with their labour obligations and receive appropriate support for the management of their work forces.

Tax:
Romero Pineda’s tax specialists advise on general and industry-specific issues, including the creation of structures to minimise tax liability; tax effects of financing by international lenders; taxes on mergers, acquisitions and joint ventures involving local and international companies; and tax implications of insurance policy sales.

Mergers & Acquisitions:
Romero Pineda’s corporate lawyers counsel public and private companies on options for amalgamations, joint ventures, strategic alliances and substantial equity investments. The lawyers also facilitate negotiations and prepare documents.

Aviation:
The firm has specific industry experience assisting both passenger and cargo airlines in the business and regulatory aspects of operations, ranging from the acquisition of operating permits to authorisation for changes in schedules and new routes.

IT, Data Protection & Privacy Division:
The firm has an interdisciplinary team with extensive litigation, regulatory, technology and compliance experience. Its lawyers develop and implement regulatory strategies and provide valuable advice across multiple practice areas: data protection compliance and enforcement issues, disputes resolution, related intellectual property issues, e-commerce infringement issues, electronic direct marketing rules (online deceptive advertising), access to information, including via freedom of information, cybercrime/cybersecurity.

International Work:
40 years of experience have allowed the firm to be known for its expertise working with a wide range of industries that increasingly attain greater growth in the world. Romero Pineda has a wide range of international and multinational clients. It represents clients from industries and sectors including retail and consumer goods; hospitality; technology; telecommunications and entertainment; banks, financial institutions and insurance; lifescience and health; food and beverages, fashion.

Languages:
English, Spanish, French and Italian.

Romero Pineda is a market-leading lawfirm with a sizeable team of 4 partners and 20 lawyers.
Romero Pineda is one of the oldest and most recognized law firms in El Salvador, with a loyal clientele, some of which have been using its services for more than 44 years despite mergers and financial crisis.
Romero Pineda stands out for its high-quality service. The team is one of the most responsive in the market, never leaving a client query unanswered for more than 24 hours.
Romero Pineda is widely recognized for its thorough and comprehensive advice on disputes. The firm is a prominent advisor on matters ranging from strategic counselling to procedural work.
Romero Pineda is frequently involved in high profile and highly complex cases in the legal area in El Salvador.
Romero Pineda has the resources and technical knowledge to handle litigation cases before all levels of the courts, but the team is also highly appreciated for its advanced skills at the negotiation table, often avoiding long and costly litigation procedures for its clients.
Romero Pineda is highly recommended by IP firms around the world.

Testimonials

“Their customer service is excellent. Since we have been working with Romero Pineda & Asociados, the company’s assets have been properly protected. Particularly, they stand out for their client service and the constant follow-ups they give to our projects.“

“Their customer service is fast, clear and efficient. They are very straightforward when responding to enquiries and therefore help us make decisions quickly.“

“José Roberto Romero Mena and the law firm give great IP services, as he has a long track record in the industrial property sector in El Salvador.”

“Carlos Castillo is a knowledgable lawyer who is very active in the market.” Another peer highlights: “He is well known for his IP litigation specialisation.“

“Our company trusts that no matter how complex the case is, with the help of Romero Pineda & Asociados in the end the expected result will be achieved.“

Meet the team