Rising Stars

Intellectual property in Costa Rica

Arias

Coordinating with seven offices in six countries across Central America, the team at Arias employs regional strength to manage and safeguard the intellectual property of major global corporates (including Bayer). Bolstered by the July 2021 arrival of regulatory compliance expert and new practice co-head María Del Pilar López from Zürcher IP (where she held the same position), along with senior associate María José Campos (a specialist in the fashion, food chains and tech sectors) and associate Desirée Barahona (who brings expertise in personal data protection matters), the group’s comprehensive service covers litigation and enforcement, brand management, licensing and the development of registration strategies for copyrights, trade marks, trade names, slogans and patents. The team is co-headed by veteran patent prosecutor Simón Valverde and biotech patent authority Luis Diego Castro, with support from senior associate Ariana Lizano, who develops market entry strategies for food and consumer products industry clients, and associate Valeria Grant, who focuses on patent registration procedures.

Les références

‘The team at Arias are extremely professional. Advice is always prompt and accurate, questions are answered comprehensively, and helpful suggestions or guidance are offered when relevant.’

‘Simón Valverde in particular has always been extremely helpful and professional. I trust his advice and always know that he will respond quickly and comprehensively.’

‘Arias is one of the associated firms that we use in Costa Rica for our practice in the Latin American region. The recent incorporation of María del Pilar Lopez is great news. The team is complete and response times are adequate.’

Principaux clients

Lanotec (Laboratorio Nacional de Biotecnología)

Bayer

Principaux dossiers

  • Acting for a global pharmaceutical company in achieving the issuance of a precautionary measure preventing a biosimilar pharmaceutical from being sold in Costa Rica, until a final judicial decision is issued on whether there is an actual patent infringement.
  • Advised CENIBIOT – Centro Nacional de Innovaciones Biotecnológicas in the negotiation phase for a licensing agreement with a research centre located in California, where the client would be participating in the early stages of a new development.

BLP

With offices in San José, Puntarenas and Guanacaste, and six other locations across Latin America and Europe, the powerhouse intellectual property group at BLP remains a market leader, leveraging the bench strength of its network and the experience of its team to advise major global corporates such as Microsoft, Sony and Netflix on the management, licensing and enforcement of their international portfolios. Led by Giselle Reuben (an expert in copyright, trade mark and anti-counterfeiting litigation), the group’s full service extends to complex patent prosecutions, cross-border registration reports, the seizure of counterfeit goods, third-party infringements and the assignment of rights. Uri Weinstok and senior associate León Weinstok bring expertise in data protection matters, representing clients in breaches and assisting with assessment and compliance programmes. Key support is provided by associate Anel Aguilar, a specialist in trade mark filing strategies. With a client base spanning such industries as pharmaceuticals, tech and food, the practice has seen a recent rise in activity in the cannabis sector.

Responsables de la pratique:

Giselle Reuben

Les références

‘Excellent communication and response times. Very good-quality opinions and legal work.’

‘Leon and Uri Weinstock are two outstanding professionals. Responsible and ethical, with a real commitment to service.’

‘What I like most about working with BLP is that it really feels like working with a single firm that is capable of serving all countries with the same quality and attention. They coordinate all the countries very well and the service is always timely and friendly.’

Principaux clients

The Inter-American Development Bank (IDB)

Microsoft Corporation

Edwards Lifesciences Corporation

EARTH University

Diageo

Bayer

Sony

Aliaxis

WeWork

Netflix

Principaux dossiers

  • Advising the Inter-American Development Bank on the protection of its trade marks IDB Invest and BID Invest in 23 countries and advising on the registration of trade marks.
  • Advised EARTH University on several licensing contracts and assignment and tech transfer policies.
  • Handled the national phase of the application for a utility model for Bayer Intellectual Property in Costa Rica, which included the revision of documentation and further filing at the Costa Rican patent office.

Eproint

Co-ordinating with its offices in Central America and the Caribbean, the experienced team at IP boutique Eproint provides a comprehensive service to major global brands including Aston Martin and Procter and Gamble, developing strategies for portfolio management, regional expansion, patent protection, complex registrations and IP litigation. Led by founding partner Aaron Montero, who serves as the ambassador of intellectual property of the International Chamber of Commerce (ICC), and anti-piracy and counterfeiting specialist Gabriela Bodden, the practice remains active in the entertainment, pharmaceuticals, cannabis, tobacco and food, and automotive sectors.

Responsables de la pratique:

Aaron Montero; Gabriela Bodden

Principaux clients

Cafe Velis Nolis

Opticas OPV

Corporacion Habanos

World’s Brands

Crystal Lagoons Technologies

Aston Martin Lagonda

The Procter and Gamble Company

Ferplast

Apjusto

Keto Mom CR

Principaux dossiers

  • Acted successfully for Cafe Velis Nolis in achieving the registration of the trade mark BUENA VIDA following notification that it was not considered distinctive due to previous registered trade marks SOY VIDA and CAFE VIDA.
  • Successfully acted for Corporation Habanos in an appeal after its application for trade marks using the name HABANOS was rejected.
  • Assisted World’s Brands with the successful registration of the trade mark LA NENA after a provisional refusal.

Consortium Legal

Consortium Legal employs the deep bench strength of offices in Costa Rica, Guatemala, Honduras, El Salvador, and Nicaragua to manage and protect the intellectual property of major corporations and financial institutions in the national, regional and global markets. Headed by senior associate Fabiola Saenz (a specialist in the food and beverages, finance and cosmetics sectors), the team utilises market surveillance and monitoring to provide comprehensive copyright and trade mark infringement assessments. With a full service that extends to complex filings, renewals, and copyright, patent and trade mark prosecution and regulatory matters, the practice maintains an active client base across the telecoms, health, tobacco and packaging sectors.

Responsables de la pratique:

Fabiola Sáenz

Les références

‘The intellectual property team, led by Fabiola Saenz, has extensive knowledge on the subject, providing exceptional service.’

‘Fabiola Saenz is a great support to her clients, due to her immense knowledge of regulations and new trends in intellectual property. Her best qualities are her knowledge, communication skills and innovation.’

Principaux clients

Grupo Bac Credomatic

Mayca Food Service (a Sysco company)

Cemex Innovation Holding

CMI IP Holdings

Productos Alimenticios Centroamericanos

Hardell Investments

Banco Lafise

Clinica Hospital Santa Catalina

Rappi

Asociación Nacional de Fabricantes de Alcoholes y Licores (ANFAL)

Empaques de Costa Rica

Arabela

Republic Technologies (NA)

Principaux dossiers

  • Assisted Mayca Food Service in a dispute with third parties using similar trade marks related to food businesses.
  • Provided a legal assessment for Grupo Bac Credomatic on software contracts, licence of use contracts and IP clauses in financial contracts.
  • Assisted CMI IP Holding with the management of its trade mark portfolio and representation in disputes with third parties using identical or similar trade marks.

ECIJA

With offices across Costa Rica and in Central America, Europe and Asia, the intellectual property group at ECIJA employs deep bench strength and its Virtual ECIJA meeting platform to manage and safeguard the trade marks, copyrights and patents of its national and multinational clients. Led by senior associate Monserrat Soto Roig, the team provides a full service, from managing day-to-day contractual matters (including image rights, work-for-hire agreements, and trade mark and software licences) to advising on regulatory compliance, conflict resolution, sponsorships, advertising and privacy protection. The group maintains a client base of household names spanning such industries as pharmaceuticals, fashion, consumer goods and software.

Responsables de la pratique:

Monserrat Soto Roig

Les références

‘The use of technology and its proper management have allowed them to connect people from different corners of the planet. Together with their extensive knowledge of the subject and ability to communicate, this allows ECIJA to stand out. It is a pleasure working with them.’

‘The warmth and openness of the professionals of this firm has been exceptional.

‘The treatment of the client is excellent, as is their attention to the issues, and they show great empathy.’

Principaux clients

Costa Rica Fashion Week

Principaux dossiers

  • Continues to provide intellectual property workshops and conferences in relation to Costa Rica Fashion Week.

EY Law Central America

The intellectual property group at regional firm EY Law Central America coordinates with eight offices in seven countries (including the March 2022 opening of a Pacific coast office in the Guanacaste province) to manage the portfolios of local and international corporates and protect their IP rights, advising on administrative procedures and trade mark protection strategies and handling infringement disputes and anti-counterfeiting litigation. Department head Roxana Cordero Pereira is the key contact.

Facio & Cañas

Faycamark, the intellectual property division of Facio & Cañas, advises multinational corporates on a diverse spectrum of matters related to copyright, patents, trade marks, trade secrets and regulatory law. Led by managing partner and IP authority Milagro Chaves and newly promoted senior associate and life sciences specialist Laura Valverde, the team’s services include strategic portfolio management, due diligence, anti-counterfeiting strategy and complex infringement litigation. In addition, the practice provides support to domestic and international franchisers and distributors on licensing and merchandising ventures. A go-to firm for global brands including Jack Daniel’s, the team maintains strength in the cosmetics, apparel, tech, and food and beverages sectors, while developing its practice in pharmaceuticals, biotech and medical devices.

Responsables de la pratique:

Milagro Chaves; Laura Valverde

Principaux clients

Felice Bisleri & C

Jack Daniel’s Properties

Gad’s International

Coopervision

Circle K Stores

Principaux dossiers

  • Advising Felice Bisleri & C on the protection of its Bisleri Ferro-China brand.
  • Acting for Jack Daniel’s Properties in anti-infringement actions to protect its trade dress and trade mark for sauces.
  • Advising Gad’s International on seeking an annulment of the trade mark TOP ORAL based on prior use and bad faith.

Lexincorp

The experienced team at Lexincorp advises on administrative, criminal, civil and precautionary measures to protect the intellectual property portfolios of major multinationals in the telecoms, consumer products and pharmaceutical industries. The firm’s comprehensive service includes registrations and renewals, cancellations, oppositions and nullity actions. IP director Gabriela Miranda is the key contact. Founding partner Arnoldo André Tinoco is currently serving in the cabinet of newly elected president Rodrigo Chaves as Minister of Foreign Affairs and Worship.

MMonivation

The team at boutique firm MMonivation is experienced in advising multinationals, regional companies and start-ups on the protection and management of their trade marks, patents, copyrights and sanitary registrations. Led by Ana Catalina Monge, an expert in the IP aspects of cross-border transactions and a former head of the Patent of Invention Government Office, the practice’s full service includes contracts, registration procedures, cancellations and refusals, assignments, litigation and due diligence. With support from senior associate and former Trademark Registry examiner Andrés Hernandez, who brings over 30 years' experience in the practice area to the team, the group coordinates with agent firms in Central America, South America and the Caribbean to assist clients in the automotive, pharmaceuticals, cosmetics, and food and beverages industries.

Responsables de la pratique:

Ana Catalina Monge

Les références

‘Ana Catalina Monge has full knowledge of how the process works with the Intellectual Property Office and how to keep the client duly informed. She is a person who cares a lot about always being well-informed about the procedures and thus letting her clients know about them.’

‘The team stands out for its involvement, speed and close follow-up on all queries and requests for advice.’

Principaux clients

Kao USA

Arabela

Industrias Sintéticas de Centroamérica

Samyork

Caribbean Trademarks Services (George CJ Moore)

CSG Attorneys at Law

Basalan Patent & Trademark

Guangdong Jily Intellectual Property Office

ENTRA IP/Rojas Gaona & Bandres

Hola Compras Digital

Principaux dossiers

  • Managed the sanitary registrations portfolio for cosmetics company Kao USA, which owns the trade marks for Jergens and John Frieda.
  • Managing the trade mark portfolio of Mexican company Sanfer Farma, covering Central America, Caribbean and South American countries.
  • Filled several trade marks applications for alcoholic beverages company Samyork in Costa Rica, Panama, Mexico, the US, Canada, Colombia, El Salvador and the Dominican Republic.

Nassar Abogados

The seasoned group at Nassar Abogados manages and safeguards the IP portfolios for national and multinational household names including Delta Air Lines and Pernod Ricard (which owns the Absolut, Chivas Regal, Havana Club and Jameson brands). Led by Tomás Nassar J. and Guillermo Rodríguez, an IP enforcement specialist, the practice provides comprehensive support in patent and trade mark infringement litigation and contract and regulatory matters. Supported by María Lupita Quintero, who leads on the IP aspects of multi-jurisdictional transactions, the team has strength in the manufacturing, automotive, aviation and pharmaceutical sectors.

Responsables de la pratique:

Guillermo Rodríguez; Tomás Nassar J.

Les références

‘It is a one-stop shop for Central America. We use Nassar for our clients’ needs in different jurisdictions and we are doing very well.’

Principaux clients

Pernod Ricard Group

Sandoz

Abbvie

Delta Air Lines

Servicios Nutresa de Costa Rica

Asofarma

Suspensión y Dirección (México)

Agrovet Market Animal Health

Balder IP

Montoya, Kociecki y Asociados

Principaux dossiers

  • Advised Sandoz on patent infringement and the scope of patent protection regarding biological medicines in Costa Rica and Honduras.
  • Advised Delta Airlines on a strategy to register foreign trade mark agreements in Costa Rica.
  • Advised Asofarma on patent infringement and the scope of protection of patents as well as trade mark searches and prosecution in the region.

Tactic Estudio Legal

Formed by former COLBS Estudio Legal partner Javier Escalante after he and Sebastián Jiménez split their practices in September 2021, Tactic Estudio Legal offers a comprehensive service for the management and protection of the intellectual property of major multinationals. Led by Escalante, a veteran trade negotiator who has served as both Consul General of Costa Rica in Singapore and Ambassador of Costa Rica in Qatar, the team assists with cross-border sanitary registrations and trade mark matters, trade mark surveillance and regulatory compliance. Supported by experienced associate Karla Villalobos, who joined the firm with Escalante, the group’s clients include key players in the mining, construction, beauty, healthcare, tech, agriculture, and food and beverages sectors. In addition, the firm advises on such emerging areas as data protection, cannabis and blockchain.

Responsables de la pratique:

Javier Escalante

Les références

‘We appreciate its level of confidence and specialisation.’

‘TACTIC is truly a spectacular firm. More than simply a law firm, I see them as an absolutely strategic ally.’

‘In my case, I have worked with Karla Villalobos and Javier Escalante. Javier is a very professional person and although he does an impressive amount of work, he is always a phone call away in case of an emergency. Karla is a very hard-working person with a very important specialisation that makes her work really competitive.’

Principaux clients

Redwood International Capital

Farmagro

IICA

Asociación Horizonte Positivo

Cosecha Dorada

Principaux dossiers

  • Handling the trade mark and sanitary registrations for all of Redwood International Capital’s products, both in Central America and in the Caribbean.
  • Assisting Farmagro with the trade mark and sanitary registration of a set of new products for agricultural production.
  • Providing trade mark services to Horizonte Positivo, a non-profit apolitical association.

Zürcher IP

Boutique firm Zürcher IP employs state-of-the-art tech tools (such as trade mark surveillance systems) and the experience of its team to advise global brands on the protection and management of their international intellectual property portfolios. Headed by director and partner Marco Lopez  (who was promoted in July 2021) and coordinator and senior attorney Kristel Faith  (who joined the team in August 2021 from BDO CO), the group’s service covers high-stakes litigation, anti-counterfeiting actions, sanitary registrations, consumer protection and advertising issues, antitrust matters and franchising, as well as cybersecurity and data protection. In addition to the hospitality and tourism sectors, where senior partner Harry Zürcher provides expertise, the firm’s clients span the finance, tech, food, consumer products, life sciences and entertainment industries.

Responsables de la pratique:

Marco Lopez; Kristel Faith