Hall Of Fame

Firms To Watch: Intellectual property

Bolstered by the October 2022 arrival of Fátima Espinal from Mayora IP as the new head of intellectual property, the team at Torres Legal has strength in advising multinational and domestic corporations from an array of sectors, including beverages, retail, hospitality, and tech and software, on the safeguarding and management of their international IP portfolios.

Intellectual property in El Salvador

Romero Pineda

The powerhouse IP team at Romero Pineda remains a market leader, assisting such household-name multinationals as Disney, Kraft-Heinz and Pfizer with the maintenance and defence of their global IP portfolios. The team is led by managing partner José Roberto Romero, an authority in the IP field whose expertise spans a broad range of industries, including telecoms, real estate, entertainment, pharmaceuticals, and food and beverages, and litigation practice director Carlos Castillo, who brings over 30 years' experience to his handling of IP enforcement and anti-counterfeiting disputes. The team was bolstered at senior level in March 2023 by the elevation to the partnership of Elsy Duran, the founder of the firm’s foreign IP matters division, who advises clients on searches, new filings, assignments, mergers and prosecution. Capable support is provided by associates Nadya León, who has notable strength in opposition actions, objections and refusals, as well as extra-judicial negotiations related to the protection and enforcement of trade marks, and Susana Navarro, who assists clients with the registration of their industrial designs, patents, utility models and domain names.

Responsables de la pratique:

José Roberto Romero; Carlos Castillo


Les références

Elsy Durán is excellent – she has knowledge of the subject matter and provides essential follow-up on the processes entrusted to her.

The team stands out for its ability to analyse and solve problems, as well as the personalised client service.

Romero Pineda is a leader in intellectual property and the legal management of brands in El Salvador. There is no other law firm that compares to the service, quality, knowledge, support and commitment that each member of its team possesses.

Principaux clients

Brandstock (now Questel)


Productos Alimenticios Bocadeli


Brinker International


Proyecciones y Administración Empresarial


PAE Global


Arch Resources Group


Grupo Bimbo


Ferrari


Studio Torta


Pfizer


Camelier Advogados Associados


Becerril, Coca & Becerril


Janssen Sciences Ireland


Godiva Belgium


The Walt Disney Company


Grupo Hilasal (Inversiones Hilasal, Textiles San Andrés, Exportadora TSA, Fundación Sagrera Palomo)


Principaux dossiers


  • Providing portfolio management services for IP provider Brandstock, including renewal procedures for around 180 trade marks of different owners such as GAP, BASF, Reckitt Benckiser, 3M and the Kraft Heinz Company.
  • Handling all of Productos Alimenticios Bocadeli’s trade mark searches, new filings, prosecution, renewals, and IP strategies in El Salvador, Guatemala, Honduras, Costa Rica, Nicaragua, Panama, Belize, Dominican Republic, Peru, and the US.
  • Advising Proyecciones y Administración Empresarial, PAE Global and Arch Resources Group on registering its trade marks across Central America, according to the IP Offices’ different criteria.

Arias

The experienced team at Arias leverages the bench strength of seven offices throughout the region to advise prominent multinationals such as Procter & Gamble, Philip Morris and Chevron on the safeguarding and management of their international IP portfolios. With a client base spanning the food and beverages, pharmaceuticals, retail, tech, and manufacturing sectors, the group assists with the full spectrum of trade mark and patent matters, including high-stakes infringement actions, registrations, renewals and post-registration changes. In addition, the team has notable expertise in handling the IP due diligence for major M&A transactions. Morena Zavaleta, who brings 25 years' experience in the IP space to the group and serves as the firm’s regional director of IP and life sciences, steers the team. She is supported by senior associate Marcela Canjura, whose skill set extends to cover clearance searches, trade mark registration proceedings, oppositions, trade mark assignments, licensing agreements and voluntary cancellations.

Responsables de la pratique:

Morena Zavaleta


Les références

What sets Arias’ attorneys apart from their competitors is their hard work and great sense of loyalty and commitment.

Arias is a regional firm, which allows for the standardised management of processes in different countries. This translates into a competitive advantage.

Morena Zavaleta has extensive experience in the intellectual property area, which makes it easier for her to provide practical and efficient solutions to her clients.

Principaux clients

Procter & Gamble


Philip Morris


Inditex


Chevron


Rolex


H. Lundbeck


Natura & Co (Avon, The Body Shop, Aesop)


Sanofi


AB InBev


BASF


Principaux dossiers


  • Filed an opposition on behalf of Colombina against the trade mark application for Arcor Natural Break, based on the client’s trade mark Break.
  • Filed changes of address for the entire trade mark portfolio of Tommy Hilfiger in El Salvador.
  • Filed an opposition for retailer Rocco Donna Holding against the trade mark application for Rocco Donna Professional.

Espino Nieto & Asociados

The intellectual property group at Espino Nieto & Asociados provides a comprehensive service to clients, advising on trade mark searches and audits, filings, renewals, changes of name, patent prosecution and the IP aspects of franchise agreements, in addition to handling IP litigation. Danilo Rodríguez is the key contact.

García & Bodán

The intellectual property group at García & Bodán maintains a strong regional presence, coordinating with the firm's other offices in Guatemala, Honduras, Nicaragua and Costa Rica to advise global brands such as PepsiCo, Mattel and Kraft Heinz on the safeguarding and management of their international trade mark, copyright and patent portfolios. The practice’s broad spread of sector specialisms ranges from food and beverages, aviation and telecoms to fashion, hospitality, pharmaceuticals and apparel. In addition to providing a comprehensive service in administrative and judicial IP litigation and enforcement strategies, the practice handles patent matters for entities engaged in scientific research and development, including advising the Ministry of Education, Science and Technology, through the Direction of Educational Technology and the National Centre for Scientific Research of El Salvador (CICES). Experienced litigator Julio Vargas heads the team; he also has expertise in health registrations and domain names matters. Other key figures include senior associate Fermina Bolaños Meardi, who brings to the table strength in patent and trade mark management and regulatory issues related to chemical, veterinary and hygienic products, and associate Rodrigo Benítez Nassar, who manages complex data protection issues.

Responsables de la pratique:

Julio Vargas


Les références

Julio Vargas is very diligent and always sends reminders regarding trade marks that are about to expire. When requesting their advice on the registration of brands, his analyses are concise and realistic. For all these reasons, we trust him with our affairs in the jurisdiction.

Principaux clients

PepsiCo


The Kraft Heinz Foods Company


Grupo Televisa de México


Grupo Lala de México


Crocs


Sky/DirecTV


Converse/All Star


Mattel


PedidosYa (Delivery Hero)


Hurley


Principaux dossiers


  • Advised Mattel on anti-piracy measures to enforce its IP rights against imports from China that infringe its copyright over the Barbie doll and its trade mark over the Uno game.
  • Advised PedidosYa on the registration of its trade mark portfolio in El Salvador and defending the brand against infringement through oppositions proceedings against similar trade marks.
  • Representing Sky International in administrative trade mark litigation in defence of its Sky trade mark.

Consortium Legal

The experienced team at Consortium Legal works closely with the firm’s other regional offices in Costa Rica, Guatemala, Honduras and Nicaragua to manage and safeguard the intellectual property of domestic, regional and multinational corporations across such sectors as pharmaceuticals, banking, healthcare, food and beverages, and cosmetics. The firm’s comprehensive service extends to matters involving copyright, patents and trade marks, sanitary and pharmaceutical registrations, and litigation. The practice is headed by Suzane De Tablas, who has over 22 years’ experience in the practice area, advising on border actions, trade mark nullification and cancellation for non-use, copyright infringement, licensing, franchise contracts and IP due diligence on corporate transactions. The team is supported by senior associate Francisco Medrano, who specialises in trade mark proceedings before the Trademark Department of the Intellectual Property Registry of El Salvador and assists clients with matters related to unfair competition and anti-piracy through advising on border measures and the cancellation and nullity of trade marks.

Responsables de la pratique:

Suzane De Tablas


Les références

Suzane De Tablas and Francisco Medrano have always known how to give quick answers and they are correct in their assessments. When objections arise, they take care of finding the best solution.

Principaux clients

Zuffa


Banco Bilbao Vizcaya Argentaria


World Vision (Visión Mundial El Salvador)


AIDS Healthcare Foundation


Procaps


Zodiac Intenational Corporation


Mercadona


Heca Global


Digicel Caribbean


Rappi


Principaux dossiers


  • Successfully resolved for Unipharm trade mark cancellation processes due to non-use to protect the client’s pharmaceuticals products in El Salvador.
  • Assisted AIDS Healthcare Foundation with IP issues relating to the opening of its operations in El Salvador, including the registration of trade marks and distinctive signs.
  • Assisting in the maintenance and defence of trade marks such as Pollo Campero for CMI, as well as advising on brand negotiation processes relating to the expansion of its operations.

CENTRAL LAW El Salvador

Counting major multinationals from the aerospace, fashion and automotive sectors, among its clients, CENTRAL LAW El Salvador harnesses the combined bench strength of seven offices across the region (in Guatemala, El Salvador, Honduras, Nicaragua, Costa Rica, Panama and the Dominican Republic) to advise on the management, registration and safeguarding of intellectual property portfolios. The practice is headed by Sandra Cabezas, who specialises in IP disputes in the medical devices sector and matters involving patents, copyrights, health regulations, franchising, licensing and consumer rights; experienced IP litigator and arbitrator José Manuel Argüello, who routinely assists companies in the food, agriculture and pharmaceutical industries; and associate Fernando Argumedo.

Responsables de la pratique:

Sandra Cabezas; José Manuel Argüello; Fernando Argumedo


Les références

What sets Central Law apart is the truly personalised service and the quality of their handling of each matter. They strive to validate the client’s requirements and align or intervene with the authorities if necessary, so as to expedite or clarify the evaluation criteria.

Cordial and polite treatment, agility and proactivity in the management of our matters.

Principaux clients

Almacenes Vidrí/Novex


Olympus


Abbott Laboratories


Pricesmart El Salvador


Grupo Profarmaco


Distribuidora Liverpool


Alcon/Novartis


Pan Sinai


Alura Animal Health and Nutrition


Abbvie


Editorial Santillana


Grupo Cuantico


Faesfarma


Global Farma


Principaux dossiers


  • Assisted with the registration of over 60 trade marks across El Salvador, Guatemala and Costa Rica for Almacenes Vidrí (in El Salvador) and Novex (Guatemala and Costa Rica).
  • Assisted Olympus with obtaining more than 170 registrations of medical devices.
  • Providing continuous assistance to Abbott Laboratories with the development of strategies to maintain its current sanitary registrations and the authorisation of its products, adapting to changes in local regulations and criteria.

ECIJA

The intellectual property group at ECIJA benefits from the firm's extensive regional and international presence (made up of 33 offices in 16 countries across Central America, Europe and Asia and strengthened by the firm’s March 2023 alliance with Anglo-German firm Taylor Wessing LLP) to develop brand protection strategies for major multinationals. With a client base spanning such sectors as consumer goods, manufacturing, and food and beverages, the team offers a comprehensive service covering brand litigation, trade mark oppositions and appeals, copyright matters, and trade mark registrations and management. Drawing on firm-wide expertise in the TMT space, the team also handles the transfer of economic rights, source code and software protection, and confidentiality and non-compete agreements in this area. The group is headed by experienced managing partner Alfredo Navas, a specialist in the legaltech and industrial and audiovisual media areas; Carlos Gil, who has strength in a wide range of TMT-related matters; and associate Alejandra Gómez, who is well versed in blockchain matters.

Responsables de la pratique:

Alfredo Navas; Carlos Gil; Alejandra Gómez


Principaux clients

Motocity


City Express


Academia Europea


Church and Dwight


Toto


Villareal División de Equipos


Laca Laca


Mediprocesos


Novalaser


Corporacion Saint Germain


Grupo Decoarte


Principaux dossiers


  • Assisted Toto with the implementation of a trade mark protection strategy throughout the Central American region.
  • Assisted Church & Dwight with the implementation of a trade mark protection strategy in El Salvador, including the registration of trade marks and advertising signs.

E-Proint

Following the the launch of its Salvadoran office with the October 2020 arrival of IP head Edy Guadalupe Portal and her team from Portal & Asociados, IP specialist E-Proint (which has a network across Central America and the Caribbean) continues to advise on the management, expansion and protection of the trade mark portfolios of major multinationals such as Moderna, GlaxoSmithKline and Red Bull. The team has notable strength in the pharmaceuticals, beverages, sports and fashion sectors. The firm provides a comprehensive service which ranges from advising on copyright, patent, trade mark and industrial design matters to handling IP litigation and assisting with due diligence and cybersecurity issues. The team is supported by senior associate Helen Menjivar, who assists clients with patent prosecution and anti-counterfeiting matters.

Responsables de la pratique:

Edy Guadalupe Portal


Les références

Eproint stands out for its quality to price ratio.

Eproint’s team is very responsive and is capable of providing advice at a high level without any delays.

The firm offers a centralised service. The communication is excellent and they are very efficient.

Principaux clients

Bayer


Moderna


Sandoz


GlaxoSmithKline


Eli Lilly


Red Bull


Cartoon Network (Warner Bros Discovery)


Puma


Davivieda


Mattel


Principaux dossiers


  • Advised Colombian bank Davivienda on the management of its trade mark portfolio.
  • Successfully acted for Mattel in anti-counterfeiting cases.

LatinAlliance El Salvador

Coordinating with offices in Nicaragua, Guatemala and Costa Rica, the experienced team at LatinAlliance El Salvador benefits from a regional presence when advising on the management and protection of the intellectual property portfolios of domestic and regional companies across such sectors as healthcare, pharmaceuticals, food and beverages, and retail. The firm's expertise ranges from trade mark oppositions, transfer contracts and licensing agreements to patent matters, cease and desist letters, and trade mark litigation related to cancellation for non-use. The group is headed by regional IP director Fabiola Torres, who also leads the firm’s innovation and development practice. Associate Daniela Noyolas, who advises on trade mark registrations and post-registration procedures, joined from Arias in August 2022.

Responsables de la pratique:

Fabiola Torres


Les références

The team is efficient and effective. Their willingness to collaborate with us on everything necessary, to fulfil all our requirements and go that extra mile to achieve the results expected always stands out.

Speed and efficiency in responses.

The team is quite fast in responding to queries, which demonstrates an important sense of urgency in meeting the needs of their clients.

Principaux clients

Altian Pharma (part of InsudPharma Group)


Grupo Carval


Laboratorios Medikem


Super Repuestos


SuKarne


Industrias La Popular


Pharmalat


Exell Business


Alutech


International Justice Mission


Winzzer Medical Corporation


Evenflo Company Holdings


Principaux dossiers


  • Acted for Panamanian company Industria La Popular in an opposition action to protect the Espumil trade mark, which is related to products such as soaps and detergents.
  • Filed an opposition on behalf of Industrias la Popular to protect its rights to the Ambar and Ambarmatic trade marks.
  • Acted for Industria La Popular in an opposition action to protect the Terso trade mark, which relates to products such as detergents.

Mayora IP

The team at Mayora IP (the specialist IP arm of Mayora & Mayora, S.C.) advises financial institutions and prominent multinationals in sectors ranging from pharmaceuticals, hospitality and food to banking, fashion, real estate and chemicals. The firm handles a steady stream of opposition actions, registrations and copyright licensing agreements. The team is headed by Edna López, the firm’s country manager for El Salvador, who has 15 years' experience in the practice area, with notable expertise in administrative litigation and matters involving anti-counterfeiting, copyright and patents.

Responsables de la pratique:

Edna López


Les références

The Mayora team is made up of highly qualified and expert professionals, who coordinate their work perfectly to provide fast, quality responses.

Mayora’s lawyers have extensive experience and value in the field of industrial property. They manage important portfolios and matters and are perfectly aware of all the latest legislation and details that allow all types of matters to be resolved favourably. We would like to highlight the work carried out by Edna López, a specialist with a great reputation in the field.

This team handles everything from simple to more complex cases and has an exceptional ability to clearly communicate the alternatives and courses of action in each case, which is not very common in the local market.

Principaux clients

Deposito de Telas


Lenzing


McDonald’s


CEAT


Laboratorios Vijosa


Castel (Dimarti)


Ufinet


Optima Servicios Financieros


Banco Cuscatlán


Gruma


Panda Restaurant Group


Beiersdorf


Arochi & Linder


Akerman


Associated Milk Producers


Stemline Therapeutics


FitSpo Global


Cristiani Bukard


Inversiones Pragma


Haynes & Boone


Principaux dossiers


  • Assisting pharmaceuticals company Laboratorios Vijosa with a nullity action and oppositions to a counter party’s trade mark registration.
  • Resolved a dispute over the unauthorised use of Panda Restaurant Group’s design trade mark.
  • Assisted Keola with the trade mark registration process to expand its business in El Salvador.