Next Generation Partners

Intellectual property in Nicaragua

Guy José Bendaña-Guerrero & Asociados

The renowned intellectual property team at boutique firm Guy José Bendaña-Guerrero & Asociados remains a market leader, with expertise in the management and protection of the copyright, trade mark, patent and industrial design portfolios of global brands including Microsoft, Pfizer, Chanel and General Electric. The team’s client base spans a broad range of sectors, including pharmaceuticals, automotive, software, consumer goods, and food and beverages. Headed by the highly experienced Guy Bendaña-Guerrero, IP enforcement and anti-counterfeiting specialist Julián Bendaña-Aragón and Blanca de Bendaña, the group provides a comprehensive service which extends to complex registrations, IP monetisation strategies, advertising matters, opposition actions and high-stakes infringement litigation. The practice is supported by experienced senior associate Ana Jeanssy Fornos.

Alvarado y Asociados

Alvarado y Asociados remains a go-to firm in the practice space, employing the bench strength and expertise of its team to safeguard and manage the intellectual property portfolios of global brands including those of Major League Baseball, the NBA and the Gap. With an active client base spanning the sports, food, building materials, apparel, manufacturing and consumer products sectors, the group’s full service covers matters ranging from copyright, trade mark and patent registrations and administrative procedures to oppositions and high-stakes infringement actions. The team is headed by the respected Gloria María de Alvarado and experienced IP strategist Zayda Cubas, with key support from senior associate Francisco José Alvarado, a specialist in the protection, registration and defence of distinctive signs, and associate Aura Tórrez, who manages administrative and judicial IP processes.

Responsables de la pratique:

Gloria María de Alvarado; Zayda Cubas


Les références

They were competent and I will continue to use them for future trade mark and IP matters. Francisco José Alvarado and Aura Tórrez were easy to work with.

Principaux clients

Bimbo


Cemex


The Gap


NBA


MLB


Arias

The team at regional firm Arias has longstanding experience of advising major global brands, including Jordache, Procter & Gamble, AstraZeneca and 3M, on the safeguarding and management of their international intellectual property portfolios. The firm acts for a diverse client base covering the apparel, consumer goods, tobacco, and food and beverages sectors, displaying particular strength in the pharmaceuticals space. Among the team’s core areas of expertise are the registration of trade marks, patents and copyrights, IP rights protection and enforcement, anti-counterfeiting measures, technology transfers and IP-related due diligence, including the preparation and revision of documents in physical and virtual data rooms. The team is led by Gustavo-Adolfo Vargas, a specialist in the IP aspects of complex, cross-border transactions. Associate Carlos Úbeda has notable expertise in the negotiation of co-existence agreements and pre-judicial meditations in enforcement actions.

Responsables de la pratique:

Gustavo-Adolfo Vargas


Les références

When it comes to IP matters, what is good about the team is their response times when dealing with the required processes, as well as their speed in handling the registration process in countries where we haven’t used the mark before.

They have the same level of experience as other teams, but what sets them apart is their fast responses and ability to deal with registrations in other countries or regions. We were very happy with the service provided by Carlos Úbeda.

Principaux clients

Tigo Nicaragua


Jordache Enterprises


Roble International Company


AstraZeneca


Royalty World


Procter & Gamble


3M


Clarke Modet


Herbalife


Tecnoquimicas


Principaux dossiers


  • Assisted Vanderbilt University with preparing and filing the national phase of the patent application for human monoclonal antibodies to severe acute respiratory syndrome Coronavirus 2.
  • Assisted Atea Pharmaceuticals with preparing and filing the national phase of the patent application for highly active compounds against Covid-19.

Bendaña & Bendaña

The intellectual property practice at boutique firm Bendaña & Bendaña provides a comprehensive service to major multinational corporations, advising on trade mark registration and renewal, design rights, the IP aspects of NDAs, franchise and licensing agreements, and high-stakes infringement litigation. Seasoned patent litigator Ricardo Bendaña Guerrero and María José Bendaña Guerrero are the names to note at top level.

BLP

The experienced team at BLP leverages the bench strength of its offices in Nicaragua, Honduras, Costa Rica and Guatemala to advise national and multinational corporates, including Apple and Unilever, across such sectors as tech, pharmaceuticals, tobacco and consumer goods, on the safeguarding and management of their global IP portfolios. The group provides a full service, assisting with trade mark searches, registrations and renewals, anti-counterfeiting measures, patent prosecution, and administrative and judicial proceedings. Practice head Orlando Cardoza is an expert in sanitary registrations as well as IP law, frequently advising on the compliance of products with health regulations in the country.

Responsables de la pratique:

Orlando Cardoza


Les références

What makes this practice unique is the comprehensive and personalised approach that the team offers to each client. The lawyers are highly competent in terms of legal knowledge and skills; they focus on thoroughly understanding the needs and objectives of each client to provide effective and efficient solutions.

What makes the attorneys at this firm stand out is their client-focused approach and commitment to excellence. The attorneys at this firm have a passion for providing innovative and effective solutions to the legal challenges facing their clients.

Centralised and coordinated client care.

Principaux clients

Laboratorios PISA


Grupo Aval Acciones y Valores


Apple


Joya de Nicaragua


Unilever


MCG Consultores


Joint Stock Company BIOCAD


Troncoso y Cáceres


Principaux dossiers


  • Conducted an analysis to provide accurate criteria for the content classification that would allow Apple to implement a new user experience called “Family22” for its Family accounts by reviewing Nicaragua’s regulations on content restrictions for children and advising on appropriate age ratings.
  • Advised on the transfer of Joya de Nicaragua’s entire trade mark portfolio to Country Universal.
  • Providing assistance to Unilever with the procurement of all of its sanitary registrations in Nicaragua, Guatemala and Costa Rica.

Estudio Caldera, S.A.

With three separate departments devoted to registrations, litigation and the digital tracking of trade marks, boutique firm Estudio Caldera, S.A. remains a one-stop shop for the safeguarding and management of the intellectual property portfolios of household-name global brands across such sectors as e-commerce, tech, food, hospitality, motor vehicles and consumer goods. The group assists with matters ranging from domain names, commercial names, sanitary registrations and satellite signals to complex patent and copyright infringement litigation, trade mark oppositions and IP-related due diligence processes. Martha Lorena Zelaya, trade marks department director Karla Mejia, and IT department head Isabel Artola lead the practice. Key support is provided by associate Betania Bojorge, who specialises in cancellations, objections and mediation.

Responsables de la pratique:

Martha Lorena Zelaya; Karla Mejia; Isabel Artola


Dentons

Leveraging its network of offices throughout the region, as well as internationally, Dentons advises major multinationals from the retail, food and beverages, tech, cosmetics, telecoms, pharmaceuticals and manufacturing sectors – among others – on the registration, protection and enforcement of their trade marks, patents, designs, copyrights and trade secrets. The group is also active in IP litigation and complex administrative procedures, the IP aspects of cross-border transactions, and regulatory and licensing issues. Director Mayra Navarrete, an expert in brand protection, anti-counterfeiting actions, IP prosecutions and data privacy, leads the practice. The team is backed by associate Ana Ruth Rodriguez, who utilises a background in the public sector.

Responsables de la pratique:

Mayra Navarrete


Les références

The team stands out for its attention to detail, follow-up and contact with clients, and for its immediate responses.

I believe that the firm’s intellectual property practice stands out due to the specialised knowledge of its main lawyer in this area, Mayra Navarrete. She stays abreast of changes in the industry and is highly adept at understanding the business and strategic needs of the company.

This practice has a solid team of lawyers in other countries, which allows us to receive a comprehensive service since our lawyer can directly contact other lawyers in the firm’s network to meet our needs outside of Nicaragua (which we have already done). Likewise, in terms of innovations, the access they give their clients to webinars on the Dentons Global platform is very worthwhile. Many topics of interest are discussed and the information is of a high level.

Principaux clients

Coca Cola Industrial


Walmart Centro América


Walmart México


Alimentos ProSalud


Super de Alimentos


Papelera Internacional


PedidosYa


Papelera Latinoamericana de Nicaragua


Principaux dossiers


  • Advising Coca-Cola Industrial regionally on sanitary regulations.
  • Advising Walmart Centro América on the preparation and filing of new trade mark applications, commercial surveillance regarding the unauthorised use of trade marks, control of renewals and assurance of protection regarding third parties.
  • Managing the health registrations of candy manufacturer Super de Alimentos, including appearing before the Nicaraguan Ministry of Health.

García & Bodán

Drawing on the bench strength of eight locations throughout the region, García & Bodán manages the intellectual property portfolios and health registrations of major global brands such as Novo Nordisk across sectors ranging from energy, financial services, food and beverages, and chemicals to retail, pharmaceuticals and telecoms. The team guides clients through administrative and judicial proceedings, and also covers the surveillance of trade marks, patents, industrial designs and utility models, as well as assistance with licensing and franchising matters and due diligence procedures. The team is led by associate Ileana Montenegro, who coordinates with other regional offices to advise the firm’s multinational client base, and regional IP director Julio Vargas, who is based in El Salvador. Another key figure is senior associate Lía Incer Flores, a former director of copyright and related rights at the General Directorate of the Intellectual Property Registry.

Responsables de la pratique:

Ileana Montenegro; Julio Vargas


Les références

García & Bodán is dedicated to providing legal advice in all areas of law, offering an excellent service. They are seeking closer relationships with their clients and excellence in the provision of services, with a practical and innovative approach.

Julio Vargas has extensive experience in managing brand portfolios for local and international clients – he anticipates their needs and provides a broad perspective on possible solutions. Lia Incer gives clients assurance that cases will be resolved diligently and efficiently. She is always quick and precise in answering questions.

The responsiveness of Lia Incer is first class – it ranks with the highest service levels of the dozens of lawyers I work with around the world.

Principaux clients

Grupo Televisa


Laboratorios La Santé


Grupo América Móvil/Claro


Novo Nordisk


Bagó Group


Alltech


Yara Costa Rica


Univision Communications


Principaux dossiers


  • Managing the health registration of Yara Costa Rica’s fertiliser products in Nicaragua and El Salvador, as well as the registration of the company as an authorised manufacturer of fertilisers for agricultural use.
  • Advising global corporation Juul Labs on handling its trade mark portfolio in Central American countries and assisting with copyright issues over the protection of accessories’ designs.
  • Advising on the procurement, maintenance and renewal of health registrations for the products of several international companies, including Novo Nordisk, The Kraft Heinz Company, Vitaminas y Minerales and Somex.

Consortium Legal

With offices in Costa Rica, Guatemala, Honduras, El Salvador and Nicaragua, the team at Consortium Legal is well equipped to advise regional and global corporates on the management and protection of their intellectual property portfolios. Acting for a diverse client base across the manufacturing, pharmaceuticals, tech, food and beverages, consumer electronics and software sectors, the group assists with opposition actions, licensing agreements, domain names, patents, industrial designs, sanitary registrations, renewals, and trade mark and copyright surveillance. The team is led by intellectual property and competition law expert Darliss Gordon and supported by associate Gabriel Castillo, who brings experience in IP transfers and oppositions to the practice.

Responsables de la pratique:

Darliss Gordon


Les références

Quick and effective responses from the team.

In a country where the processes are somewhat complicated, the support of a firm and a lawyer who knows how to navigate this process is essential. Darliss Gordon stands out for her knowledge, availability, agility and flexibility to adapt to clients’ requirements.


Principaux clients

Arabela


Laboratorios Químico-Farmacéuticos Lancasco


Genomma Lab Internacional


Productos Alimenticios Diana


Corporacion Multi Inversiones – CMI IP Holding


Laboratorio Kemex


Marketing Arm International


Hijos De Rivera


The Canadian Bank Note


Absortex


Principaux dossiers


  • Advising Arabela on the protection and surveillance of its portfolio of over 500 trade marks.
  • Assisting Laboratorios Químico-Farmacéuticos Lancasco with the management of over 100 products.
  • Advising Genomma Lab on the protection and surveillance of its portfolio of over 300 trade marks, filing oppositions against third-party trade marks, and investigating applications for nullity of similar marks in the country.

LatinAlliance Nicaragua

LatinAlliance Nicaragua coordinates with the firm’s offices across Latin America to advise regional corporates in the pharmaceuticals, manufacturing, healthcare and automotive industries on the management and protection of their intellectual property portfolios. The practice assists with matters ranging from coexistence and licensing agreements, trade mark portfolio management and trade mark oppositions to cease and desist letters and trade mark litigation. The team is directed from the firm’s Salvadoran office by regional IP director Fabiola Torres, an expert in trade mark registrations, copyright, patents and licensing issues. Legal manager Ana Carolina Barquero, who heads the IP department in Nicaragua, specialises in patent protection and opposition litigation regarding the registration of distinctive signs.

Responsables de la pratique:

Fabiola Torres


Principaux clients

Altian Pharma


Grupo Carval


Laboratorios Medikem


Central Americana de Distribución


Exell Business


Alutech


International Justice Mission


Renaware


Principaux dossiers


  • Successfully represented Central Americana de Distribución (CADISA) in blocking a trade mark cancellation lawsuit for non-use.
  • Successfully brought a trade mark opposition action on behalf of Central Americana de Distribución (CADISA).
  • Acted on behalf of Laboratorios Medikem, a Salvadoran laboratory with operations in El Salvador, Guatemala, Honduras, Nicaragua and Costa Rica, in response to an opposition to the registration of a new brand.