Next Generation Partners

Firms To Watch: Intellectual property

Eproint has established a strong presence in the Dominican Republic with the hire of international IP expert Vanessa Cabrera, who joined from Troncoso Leroux in August 2023.

Intellectual property in Dominican Republic

Headrick Rizik Alvarez & Fernández

Headrick Rizik Alvarez & Fernández‘s ‘organised, efficient’ team is regularly engaged to handle complex IP litigation, including annulment and infringement actions relating to patents, trade marks and industrial designs, in addition to providing pre-litigation advice. The department also has extensive experience in the prosecution of IP rights and in obtaining marketing approvals for pharmaceutical and food and beverage products. The trio leading the team is founding partner Mary Fernández and senior associates Miguelina Figueroa and Gabriella Villanueva; Fernández has a broad practice encompassing patent, trade mark and copyright matters, while Figueroa’s work ranges from due diligence and assistance with IP rights in sales transactions to data protection and privacy issues, and Villanueva's core strength lies in the life sciences and healthcare industries.

Responsables de la pratique:

Mary Fernández; Miguelina Figueroa; Gabriella Villanueva


Les références

‘The willingness to collaborate and use all their resources to meet the needs of their clients is an element that differentiates them from other firms.’

‘Response times are short and their work is professional. They have been collaborative and understanding our of projects in Dominican Republic, and set out advice clearly.’

‘Headrick’s service is top notch. The team is very strong and there is always someone on the lookout for follow-up. The degree of knowledge to deal with complex issues is also remarkable. They are above the standard services in the country.’

Principaux clients

Johnson & Johnson


Grupo SID


Merk Sharp & Dohme


Mejía Arcalá


Laboratorios Armstrong


Productos Farmacéuticos


Mapfre Salud


Pfizer


Caesars Entertainment


Grupo Puntacana


Productos Farmacéuticos Dr. Gray/Anest


Hilton Worlwide


Editora SM


Hersheys


Plaza Lama


Del Monte Foods


Autozone


Playa Hotel & Resorts


Argelia International


Upfield


Miniño Abogados

Miniño Abogados has recently been involved in precedent-setting work in the IP space, advising on the first-ever multimedia trade mark filed in the Dominican Republic. The group stands out for its expertise in trade mark and copyright-related litigation, but is also skilled in patent prosecutions, data protection, and regulatory and compliance matters. Its impressive client base includes household-name corporations from the pharmaceutical, entertainment and technology sectors, such as Meta Platforms. Urko Ochoa and managing partner Orietta Blanco, who lead the team, offer clients experience which spans the full scope of IP matters and also have ‘extensive knowledge of local and Caribbean regulations’. Pamela Hernández, who is an expert in trade mark prosecutions, as well as contentious IP matters, is another key name.

Responsables de la pratique:

Urko Ochoa; Orietta Blanco


Les références

‘They stand out for the quality of all the work they deliver, giving results beyond what we expect. This is something that makes them unique in the sector.’  

‘Orietta Blanco and Urko Ochoa, as well as the rest of the team, provide timely and accurate advice on extremely complex matters, giving the results expected.’

‘The detail in the information they provide is flawless.’   

Principaux clients

Netflix


Amazon


Meta Platforms (formerly Facebook)


Philip Morris


Sanofi


E. & J. Gallo Winery


The DirecTV Group


Mondelez International


Starbucks Corporation


Edwards Lifesciences


Western Digital Technologies


Syngenta


Medtronic Logistics


Boehringer Ingelheim


Energizer


Ontier Holdings


Red Bull


Fresenius


Moroccanoil


BioMerieux


Staedtler


Haribo


Principaux dossiers


  • Assisted Ontier Holdings with the first-ever multimedia trade mark application in the Dominican Republic.
  • Representing Philip Morris in a case which has moved before the Supreme Court of Justice relating to an opposition filed against the trade mark MARBLE in the Dominican Republic on the basis of the MARLBORO trade mark.
  • Representing HBO in a signal piracy case against one of the main local cable TV providers.

Messina International

Messina International, whose diverse client base ranges from the technology to the life sciences sectors, is frequently instructed on traditional IP matters such as trade mark and copyright registration, but is also highly active in IP litigation and the IP aspects of licensing, distribution and supply agreements, regulatory compliance, technology transfers and advertising contracts, with notable strength in matters related to new technologies. Versatile IP specialist Ana Messina leads the team alongside Adelin Villalobos, who was promoted to partner in November 2023, and is praised for her knowledge of IP prosecution and litigation.

Responsables de la pratique:

Ana Isabel Messina; Adelin Villalobos


Les références

‘The lawyers are efficient and accessible. Each answer involves a comprehensive explanation of the procedures.’

‘They stand out for their personalised service and attention to detail in the management of cases. We received excellent customer service and communication from Adelin Villalobos.’

‘Agility and commitment are displayed by Ana Messina and Adelin Villalobos.’

Principaux clients

Viafirma


JJ Martin Group (Salutti USA)/ John Ra


Brandstock Services


Alfaro, Ferrer & Ramirez (AFRA)


Deutsche Transnational Trustee Corporation/Empresas Polar


Insecticidas Internacional Dominicana/Agroser


Herrero & Asociados


Industrias San Miguel


Perfetti Van Melle


Principaux dossiers


  • Advising Deutsche Transnational Trustee Corporation/Empresas Polar on cancellation actions brought against two of their most important brands (Cervezas Polar and Maltin Polar), their flagship trade marks in the Dominican Republic.
  • Advising Industrias San Miguel on regulatory affairs and compliance related to the manufacturing and commercialisation of products/goods in the Dominican Republic and foreign jurisdictions.
  • Represented a major luxury brand in a trade mark infringement case, procuring the declaration of notoriety of the client.

Castillo y Castillo

With notable ‘experience in trade mark issues and coordinating legal matters in the Caribbean‘, Castillo y Castillo‘s intellectual property team is particularly active in advising on the management of IP portfolios for clients the consumer goods and food and drink sectors, although the group advises a range of multinationals and banks (major retail bank Banco Popular Dominicano remains a standout client). The group’s practice head is senior associate Carimer Guzmán, who is able to advise clients on a myriad of IP issues including administrative and contentious trade mark proceedings.

Responsables de la pratique:

Carimer Guzmán


Les références

‘The firm has a lot of experience in trade mark issues and coordinating legal matters in the Caribbean. We have been working with them for many years and we consider them to be one of the best firms in the Dominican Republic.’   

‘Carimer Guzmán has an extensive knowledge of the subject and impeccable case management skills.’

Principaux clients

Yildiz Hondling


Industrias Banilejas (Induban)


Belcorp


Danone North America


Banco Popular Dominicano (BPD)


UPL


Grupo Bimbo


Pattishall, Mcauliffe, Newbury, Hilliard & Geraldson


AJE Group


Ecolab


Principaux dossiers


  • Representing Yildiz Holding in the prosecution and maintenance of its large trade mark portfolio.
  • Representing Induban in the prosecution and maintenance of its large trade mark portfolio.
  • Representing AJE Group in the prosecution and maintenance of its large trade mark portfolio.

Guzmán Ariza

Guzmán Ariza is well versed in advising on the management of trade mark, patent, copyright and industrial design portfolios for large multinationals and major regional companies, particularly those in the retail, food and drink, and pharmaceutical sectors. The team is also skilled in infringement and anti-counterfeiting litigation. Senior counsel Leandro Corral runs the team and is experienced in the management of IP portfolios and health registrations.

Responsables de la pratique:

Leandro Corral


Principaux clients

Gold Star Tobacco


Sunwing Travel


Senninger Irrigation


Agrovet Market Animal Health


Rud Starcke GmbH & Co


SMA Solar Technology


XPonential Fitness


Productora de Capsulas Gelarina (Procap)


René Schönefeld Industries


DLA Piper


Celltrion


Zimpro


Principaux dossiers


  • Assisting Foton International with the IP due diligence relating to establishing their own dealership in the Dominican Republic and the Caribbean.
  • Assisting Salvatore Ferragamo in the review and management of the IP aspects of the distribution contract for its products in the Dominican Republic and the Caribbean.
  • Advising Domino’s Pizza on data protection issues related to its franchisee in the Dominican Republic, Caribbean Management Group.

JJ Roca & Asociados

JJ Roca & Asociados‘ IP practice often operates in a cross-border fashion, and has a strong presence in the food and drink sector, where it often manages IP portfolios for major clients. Sharin Pablo de Roca, who heads up the team, offer expertise which extends to IP matters in the life sciences and healthcare sectors.

Responsables de la pratique:

Sharin Pablo de Roca


Principaux clients

The Coca-Cola Company


Kerry


Aerovias Del Continente Americano (AVIANCA)


Biofarma


Medtronic


Colombina


Western Digital Technologies


Next Level Authentic


Chery Automobile


Denk Pharma


LG Chem


Laboratorios Vizcaino


Laboratorios Pisa Bago Group


SwatchBravo


Les Laboratoires Servier


Principaux dossiers


  • Represented Swatch in litigation against Apple concerning the IWATCH trade mark in the Dominican Republic.
  • Advising the Coca-Cola Company on the management of its entire IP portfolio for the Caribbean region, which includes 26 different jurisdictions.
  • Representing Biofarma in numerous opposition and cancellation actions against similar pharmaceutical trade marks in the Dominican Republic.

OMG

OMG is highly proficient in trade mark registrations and administrative IP procedures. The group often assists clients with IP due diligence in relation to corporate transactions, as well as with IP issues relating to commercial contracts. Practice head Luis Eduardo Aquino has a strong track record in providing advice on trade mark registrations, among other IP issues. Senior director Angeannette Tejeda is notable for her advice to both local and international clients on the administration of their IP assets.

Responsables de la pratique:

Luis Eduardo Aquino


Les références

‘It is a great team of lawyers.’   

‘They have lawyers specialised in different areas. They are always willing to help and assist with whatever is necessary.’

Principaux clients

GD Midea Heating & Ventilation Equipment


Inter IKEA Systems


SICPA


Industrias San Miguel del Caribe


Cámara de Comercio y Turismo Domínico-Suiza


Corporación Andifar


CISA Dominicana


Alimentos Heinz de Costa Rica


Ourfo fino Saude Animal


GCS Investments


Principaux dossiers


  • Assisting SICPA with the IP aspects of a services contract, and its amendments, executed with the Tax Administration of the Dominican Republic (DGII) for the control, traceability and security system on alcoholic beverages and cigarettes in national production or being imported into the Dominican Market.
  • Assisting Cámara de Comercio y Turismo Domínico-Suiza with the defence of nullity actions of the THINK sign filed by a counterparty before the Dominican IP Office (ONAPI).
  • Assisting GD Midea Heating & Ventilation Equipment with IP issues relating to a distribution agreement for its products in the Dominican market by a new distributor, Oldach.

Pereyra & Asociados

Pereyra & Asociados‘ core strength lies in advising on local trade mark applications and registrations for clients ranging from start-ups to multinationals. Key sectors of expertise include technology, pharmaceuticals and tourism, among many others. Practice head Lorena Pereyra, who 'approaches IP issues with practicality and thoroughness', stands out for her advice to both Dominican and international clients on the management of their trade mark and patent portfolios.

Responsables de la pratique:

Lorena Pereyra


Les références

‘Their level of IP expertise is outstanding. Their speed in attending to clients’ queries and focus on clients’ business needs is really impressive.’

‘Lorena Pereyra approaches IP issues with practicality and thoroughness. She understands clients’ business needs and focuses on them when addressing any IP issues.’

Principaux clients

Patrix IP Services


Nova Skin Products


Behrens Laboratories


Bbraun Medical


Winkler Partners (Giant Manufacturing)


McDonald’s


Yellow Pages – Caribe Servicios de Información


Mondelez International (Cadbury-Kraft)


Hanesbrands


Esso República Dominicana


CF Hotels (Marriott)


Centromoda


Hospira – Pfizer


Microtek (Ecolab)


Essity Hygiene and Health


Mary Kay


Fiduciaria Duit Capital


Xolver


Russin, Vecchi & Heredia Bonetti

Russin, Vecchi & Heredia Bonetti harnesses its firm-wide cross-border expertise and international network to assist local clients seeking IP protection in the US, Europe, the Caribbean, and Central American jurisdictions. Practice head Rosa Campillo Celado epitomises the group’s deep understanding of trade marks, patents and copyrights, and their associated administrative and judicial processes. Mónika Fiallo Paradas is highly experienced in IP matters and is a key point of contact for clients in relation to anti-counterfeiting cases.

Responsables de la pratique:

Rosa Campillo Celado


Principaux clients

Goya


Volvo Bus Corporation


Hormel


LivOn


Bosch


Evliya Şekerleme


Array Technologies


Tetra-Pak


Oracle


Airbnb


Principaux dossiers


  • Advising a client in the storage rental sector on the IP aspects of a potential acquisition.
  • Advised a major global food and beverages company on the IP aspects of its advertising campaign in the Dominican Republic.
  • Advised a global company in the medical sector on the registration of the IP rights of a newco following its corporate reorganisation.

Ulises Cabrera

The IP and new technologies department at Ulises Cabrera predominantly advises on trade mark registrations, but the team is also skilled in handling opposition, cancellation and nullity actions, anti-counterfeiting cases and unfair competition claims. Its broad client base of both local and international clients continues to expand, with the team recently adding new clients such as Hersheys International. Group head Magdalena Almonte stands out for IP work in the consumer goods, food and beverages, life science and technology sectors. Managing partner José Cruz Campillo is another notable team member.

Responsables de la pratique:

Magdalena Almonte


Les références

‘Great job in helping us navigate the Dominican procedures so that as a US firm, we could complete the necessary procedures.’

‘Magdalena Almonte was always aware of the processes and sought to offer practical and pragmatic solutions for our needs.’

Principaux clients

Grupo Familia


Cardinal Health


Cámara de Comercio e Industria Franco Dominicana


Inversiones & Negocios (INESA)


Novo Nordisk


Localpayment


Haleon


Pancommercial Holdings


Grupo Disagro


Xiaomi


Biologische Heilmittel Heel


Fresenius Medical Care


Inaru Valley


BGI Genomics


Quirch Foods


Alister


Avso Dominicana


Pangeo


Altian Farma


Piege


Holiday Club


IRIS


Zhejiang Geely Holding Group


PT Selamat Sempurna


Avianca


Incofe


Dixon Comercializadora


Jaleel & Company


American Outlet USA


Hershey International


Inversiones Hilasal


47 Brand


Jiangsu Chengxing Phosph-Chemical


Delixi Electric


Dutch Farms


Antonio P. Haché & Co


Wellspring Pharmaceutical Corporation


Arab Beverages Est


Internacional de Cerámica


VFS Global Services


Químicos y Lubricantes


Tuteur S.A.C.I.F.I.A.


Dismart


Emcure Pharmaceuticals


Inversiones Tunc


Suzhou Dake Investment Consultation Co


Productos Alimenticios Bocadeli


Principaux dossiers


  • Representing Productos Familia in a criminal action against Importadora Yingya for counterfeiting and border measures.
  • Assisted 47 Brand with an opposition against the trade mark application for NY 47 ST NEW YORK ESSENTIAL BRAN, by the applicants Christian Trujillo and Modesto Quevedo.
  • Represented Biologische Heilmittel Heel in an action for annulment filed by Laboratorios LAM against the registered trade mark NEURAX-HEEL.