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Firms To Watch: Intellectual property

Launched in 2021 with the hire of senior associate Alfredo Vargas from Alta Melara & Asociados, the Honduran team of specialist IP firm Eproint, which has a presence across Latin America and the Caribbean, is highly active in advising multinational clients on the management of their domestic IP portfolios.

Intellectual property in Honduras

Aguilar Castillo Love

Aguilar Castillo Love plays an active role in the registration and renewal of client’s trade mark portfolios in Honduras and across Central America, frequently taking advantage of the firm’s presence throughout the region to handle cross-border mandates. In addition, the team is well versed in IP disputes, and in advising on the IP aspects of licensing, distribution and franchise agreements. The food and beverages and retail sectors are core areas of strength, although the firm’s diverse client base also covers the pharmaceuticals (where it also advises on patent matters), telecoms and banking spheres. Juan José Alcerro Milla, whose expertise ranges from trade mark filings to high-profile IP litigation, leads the team alongside Honduras managing partner Enrique Rodríguez Burchard. Carolina Aguirre Larios is also a key contact.

Responsables de la pratique:

Enrique Rodríguez Burchard; Juan José Alcerro Milla


Principaux clients

Grupo MCC


Astra Honduras


Infarma


Industrial de Alimentos


Audio Video


Supermercados La Colonia


Distribuciones Universales (Diunsa)


Principaux dossiers


  • Assisting Grupo MCC with the filing, registration and renewal of over 30 trade marks and slogans in Honduras and the Central American region, and representing one of the client’s companies in an IP dispute.
  • Advising Diunsa on the prosecution and enforcement of over 20 trade marks.
  • Advising Astra Honduras on the registration of more than 40 trade marks in Honduras and the Central American region, and defending the client against trade mark oppositions in Guatemala, El Salvador and Nicaragua.

Arias

Arias‘ ability to draw on its regional network and close links with international firms makes it a strong choice to assist major multinationals across a range of sectors, including automotive, fashion, retail, food and beverages, and cosmetics, with the management of their trade mark portfolios. The team, which wins praise from clients for its ‘knowledge in the field‘ and ‘quick strategies‘, particularly stands out for its impressive roster of clients in the pharmaceutical sector, where it is also adept at advising on the registration and renewal of patents. On the contentious front, the firm’s top-flight litigation department assists with enforcement and anti-piracy actions. Sonia Urbina, whose broad practice spans trade mark, patent and health registrations and consumer protection matters, leads the team, ably supported by associate Anny Ramos.

Responsables de la pratique:

Sonia Urbina


Les références

‘I have to highlight the firm’s speed in correspondence and action. Matters are resolved quickly and efficiently.’

‘For us, the most important thing is the speed in the answers, the acknowledgment of receipt and, above all, that the invoices are sent on time for internal control. I believe that Arias handles itself very well on these points.’

‘The team stands out for its knowledge in the field, good suggestions and quick strategies.’

Principaux dossiers


  • Advising Proctor & Gamble on the management of its trade mark portfolio, including handling new applications and renewals, and opposition, nullity and cancellation actions against third parties.
  • Advising Sanofi on the management of its trade mark portfolio, including handling new applications and renewals, and opposition, nullity and cancellation actions against third parties.
  • Advising Bayer on the management of its patent portfolio.

BLP

BLP is highlighted by clients for its ‘ability to deal with matters in all of Central America‘, thanks to the firm’s extensive platform in the region, which is a clear asset when advising regional and global companies with operations in Honduras on the full spectrum of IP work. The team has a robust IP litigation practice, with a strong recent record of representing clients in opposition and cancellation actions, in addition to advising on the management of trade mark, patent and health registration portfolios. Its broad client base spans a range of sectors, including pharmaceuticals, cosmetics, food and beverages, and hospitality. ‘Trustworthy‘ practice head Fernando Godoy is equally skilled in contentious and non-contentious IP matters. He receives capable support from associates Ingrid Campos and José Armando Arriaga.

Responsables de la pratique:

Fernando Godoy


Les références

Their scope of work is wide and can cover all different areas of the legal issues a company may have. Their communication capabilities and practices make the relationship smooth and transparent.

The most important characteristics we value are ethics and knowledge of the law and in these aspects they excel. Fernando Godoy has shown himself to be of solid character and trustworthy every single time we require his services.

It is a team that remains at the forefront of the area, they advise on the regulations and laws of the country very well and always keep my company’s best interests in mind.

Principaux clients

Campofert


Dennemeyer


Colgate-Palmolive Company


Quala


Pons Marcas y Patentes


Iberbrand


Atlántica Agricola


Laboratorios Bussié


Kim Choi and Lim (KCL) Law


Principaux dossiers


  • Defending Quala against a cancellation action for non-use which has been filed against its “Predator” trade mark.
  • Advising Colgate-Palmolive on the health registrations of its oral and personal hygiene and home cleaning products in Central America.
  • Acting for Cementos Argos in a lawsuit brought by Ultracem seeking to annul the registration of the client’s “Eco Multiproposito Argos y Diseño” trade mark on the grounds of bad faith.

Bufete Casco

A presence in the Honduran market for more than 100 years, highly regarded IP boutique Bufete Casco handles the management of the trade mark, patent and copyright portfolios of an extensive roster of national and international clients. Managing partner Leonardo Casco Fortín is renowned for his expertise in contentious and non-contentious matters in the field; he also serves as a partner in the IP practice of ECIJA, recently providing support in copyright-related disputes. Other names to note within the practice include Beatriz Casco de Martínez and up-and-coming partner Leonardo Pablo Casco, both of whom cover the full spectrum of IP matters.

Dentons

Commended by clients for its ‘knowledge of the specificities of the law not just in Honduras, but in Latin America as a whole‘, Dentons combines the legacy firm’s historic strength in IP with a global platform to assist an array of multinational companies with the management of their local and regional IP portfolios. Demonstrating expertise across the automotive, food and beverages, retail and technology sectors, among others, the team advises on trade mark registrations and renewals and copyright issues, and is also active in IP disputes. Honduras managing partner Arturo Zacapa, who maintains a broad IP practice, heads the department. Gustavo Zacapa brings almost 40 years’ experience in the field, and director Milena Picado garners praise for her ‘extensive knowledge of IP issues‘.

Responsables de la pratique:

Arturo Zacapa; Milena Picado; Gustavo Zacapa


Les références

The team is efficient and effective. Their response times are fast, and they provide very good advice which has allowed us to obtain favourable results. Their willingness to work together whenever necessary to fulfil our requirements and to go that extra mile to achieve the results expected by our clients always stands out.

Milena Picado provides quick and efficient responses, and is organised, responsible and committed to her clients.’

We feel honoured to be able to work with the firm in Central America. The costs are attractive and the responses are timely. The use of technology is a plus, since they have all our clients’ information at hand.

Bufete Durón

Boutique firm Bufete Durón has been a leading name in the IP field in Honduras for almost nine decades, and continues to advise a host of multinational clients on the full range of trade mark, patent, utility model, industrial design and health registration matters. On the litigation front, the team is also active in opposition, cancellation and annulment actions, and has expertise in unfair competition and anti-counterfeiting claims. The well-regarded Lucía Durón, who is currently serving as president of the recently formed Association for the Protection of IP in Honduras (AHPPI), is the key contact.

Bufete Mejía & Asociados

Specialist IP firm Bufete Mejía & Asociados fields a comprehensive practice from its office in San Pedro Sula, spanning trade marks, patents, copyright and domain names, as well as advertising law and regulatory issues (including health registrations). Among the firm’s other areas of expertise are IP litigation - including unfair competition and false advertising claims - and advice on the IP and data protection aspects of corporate transactions and commercial contracts. Ricardo Mejía, who is widely recognised for his broad experience in both contentious and non-contentious IP matters, directs the practice.

Alta Melara & Asociados

Praised for its ‘extensive knowledge of IP issues‘ and ‘excellent communication with its clients‘, regional firm Alta Melara & Asociados has expanded on its strong corporate offering to provide a range of IP services to major corporations with operations in Honduras and Central America. The team is skilled in trade mark registrations and in developing strategies for regional IP protection, and also handles trade mark, patent and copyright infringement actions for clients across the retail, pharmaceutical, energy, telecoms and technology sectors, among others. Office managing partner Oscar Melara leads the ‘always available‘ and ‘well-rounded‘ team, drawing on his expertise in corporate and dispute resolution matters.

Responsables de la pratique:

Oscar Melara


Les références

Alta Melara & Asociados is a firm with extensive knowledge of IP issues and that maintains excellent communication with its clients. They anticipate the needs and obligations of their clients and efficiently communicate the corresponding reminders.

Excellent subject knowledge and communication.

Very good service for a complicated jurisdiction. Provides a quality and reliable service.

Principaux clients

Retail Brands Americas


Aditmaq


Unipharm de Honduras


Grupo Terra


Henkel Corporation


Monkey Foods Holding


Millicom/Tigo


Orius Biotecnología de Panamá


PayPal


Nutricorp


Corporación AG (Intrefica)


The Results Companies


Principaux dossiers


  • Advising Uno Honduras on the registration of the “Monster Dog” trade mark, which has been challenged by a competitor.
  • Advising Unipharm de Honduras on all of its IP matters in Honduras.
  • Advising Orius Biotech on the registration of its trade mark portfolio in Honduras.

Casco & Casco

Boutique firm Casco & Casco enjoys a strong reputation in IP matters across a vast array of sectors, including fashion, luxury cosmetics, pharmaceuticals, healthcare, and food and beverages, with longstanding experience in assisting multinational clients with the management and protection of their trade mark, patent and health registration portfolios in Honduras. At the helm of the practice, senior partner Jorge Omar Casco Zelaya is equally adept in contentious and non-contentious matters, Jorge Omar Casco Rubi focuses on trade mark prosecution and enforcement, and Lesbia Ondina Rubi advises on IP portfolio management. The sizeable team also includes Andrea Casco, a specialist in patent and health registration matters.

Responsables de la pratique:

Jorge Omar Casco Zelaya; Jorge Omar Casco Rubi; Lesbia Ondina Rubi


Principaux clients

McCain Foods


Colombina


Davivienda


Principaux dossiers


  • Advised Nalsani on a piracy matter and the confiscation of containers of goods infringing the client’s IP rights.
  • Advised Laboratorios Siegfried on its IP renewals.

Consortium Legal

Consortium Legal is well equipped to advise large corporations and entrepreneurs based in Central America and Mexico on the management of their IP portfolios in the region, frequently acting in conjunction with the firm’s extensive network of offices in Guatemala, El Salvador, Costa Rica and Nicaragua. The Honduras team has experience across the full range of industry segments, although it has an emphasis on the pharmaceutical, media, healthcare, and food and beverages sectors; it can also lean on the active litigation department for assistance in IP-related disputes. Experienced senior associate Sandra Amaya leads the team and maintains an all-round practice, with particular expertise in unfair competition and anti-piracy matters.

Responsables de la pratique:

Sandra Amaya


Principaux clients

Lancasco


Televisa


Principaux dossiers


  • Advising Laboratorios Quimico Farmaceuticos Lancasco on the management of its trade mark portfolio.
  • Successfully acted for Improvet in a trade mark cancellation action for non-use filed against Haut Pharma, the owner of the “Dermociclina” brand.
  • Advising Agroindustrial del Corral on the management of its trade mark portfolio.

ECIJA

Global firm ECIJA is highlighted by clients for its ability to provide ‘client service like a boutique‘, while boasting a ‘regional presence‘ which enables it to handle trade mark and patent matters in Honduras and across Central America. Led by skilled litigator Roberto Williams, the team is particularly active in IP disputes, including infringement and anti-counterfeiting actions and cases relating to the violation of IP rights in distribution contracts and software licences. Jorge Arturo Reina, who has expertise in contentious matters, and associate Gabriela Williams, who focuses on trade mark registrations, are also names to note, alongside the renowned Leonardo Casco Fortín (who is also a partner at IP boutique Bufete Casco).

Responsables de la pratique:

Roberto Williams


Les références

The team stands out for its client service and follow-up on our issues.

It is a large office that provides client service like a boutique.

Regional presence, in-depth analysis, clear advice and alternative options.

García & Bodán

Garnering praise for its ‘availability, coordination and responsibility‘, the Honduras IP team of García & Bodán routinely joins up with its counterparts in the firm’s offices across Central America to assist clients with the management of their regional IP and health registration portfolios. Acting for a host of major multinationals in the media, food and beverages, retail and pharmaceutical sectors – to name but a few – the firm demonstrates strength in trade mark, patent and copyright matters, including administrative and criminal litigation. The ‘knowledgeable, responsible and reliableGraciela Cruz heads the team in Honduras, while Julio Vargas, who is based in the El Salvador office, leads the regional IP practice.

Responsables de la pratique:

Graciela Cruz; Julio Vargas


Les références

Availability, coordination, responsibility.

Graciela Cruz is a knowledgeable, responsible and reliable professional.

The personalised service provided by Graciela and her team stands out. They keep in close contact and can resolve urgent issues with a phone call, without additional costs or prior notice.

Principaux dossiers


  • Assisting Novo Nordisk with the procurement and maintenance of all the required Honduran health registrations and licences for its biological and biotechnological products.
  • Advising Mexican and Argentinean pharmaceutical companies Laboratorios Bagó, Bago Group and Armstrong Laboratorios de México on the management of their trade mark portfolios.
  • Acting for Crocs in an anti-piracy action against five importers of counterfeit products in order to seize the items that are infringing on the client’s IP rights.