The full-service group at Angeles Pons is ‘trusted in the Dominican Republic for intellectual property and illicit trade issues’, and is also well regarded for its advice on the IP aspects of corporate and regulatory matters. Leading the team are experienced IP lawyer Wallis Pons, who ‘is always looking for innovative and efficient ways to move matters forward’, and Jaime Angeles, who regularly represents clients in trade mark, patent and unfair competition litigation. The group’s broad skill set is reflected in its recent workload, which covers contentious and non-contentious patent, trade mark, copyright and anti-counterfeiting matters, utilising its ‘high degree of IP expertise and experience‘.
Intellectual property in Dominican Republic
Angeles Pons
Responsables de la pratique:
Wallis Pons; Jaime Angeles
Les références
‘The firm is trusted in the Dominican Republic for intellectual property and illicit trade issues.‘
‘They have extensive knowledge of intellectual property, which allows them to provide effective strategies.‘
‘The group has a high degree of IP expertise and experience.’
Principaux clients
PepsiCo
Diageo
Claro
Grupo Ramos
InsudPharma
Galderma
American Airlines
Walmart Stores
Ikea
Adidas
WeWork
CEI-RD
Principaux dossiers
- Represented Minerva del Risco, one of the heirs of Dominican poet René del Risco, in a high-profile case before the Supreme Court relating to the copyright over the song “Una Primavera Para El Mundo”.
- Successfully represented Adobe in a dispute before the National Intellectual Property Office (ONAPI) over the cancellation of the commercial name “Photoshop del Caribe”.
- Acted for Stokely-Van Camp (a subsidiary of PepsiCo) in an administrative dispute over the filing by Hack of a 3D trade mark for a bottle similar to the one used by the client for its Gatorade product.
Headrick Rizik Alvarez & Fernández
The sizeable IP team at Headrick Rizik Alvarez & Fernández advises leading clients across the main economic sectors in the Dominican Republic, namely pharmaceuticals, chemicals, automobiles, electronics, cosmetics, textiles and services. Mary Fernández and senior associates Miguelina Figueroa and Gabriella Villanueva are the trio leading the team, and are particularly adept at handling IP litigation; this is emblematic of the recent work of the wider group, which has been significantly active in complex administrative disputes. Other key matters undertaken by the team include the negotiation and drafting of contracts to transfer or licence intellectual property rights, as well as data protection and privacy issues.
Responsables de la pratique:
Mary Fernández; Miguelina Figueroa; Gabriella Villanueva
Les références
‘Mary Fernández, Miguelina Figueroa and Gabriella Villanueva support us by responding in a precise, professional manner and have a good understanding of our business as well as everything related to intellectual property.‘
‘The depth of their investigations, support for claims beyond what was requested, and their innovative strategies have been excellent.‘
‘Highly personalised assistance and management of cases with depth and efficiency. Mary Fernández stands out in the team, as does the leadership displayed by Gabriela Villanueva.’
Principaux clients
Johnson & Johnson
Grupo SID (Mercasid, Induveca and other affiliates)
Merk Sharp & Dohme
Mejía Arcalá
Productos Farmacéuticos (CHINOIN)
Pfizer
Caesars Entertainment
Grupo Puntacana
Productos Farmacéuticos Dr. Gray/Anest
Hilton Worlwide
Hershey’s
Del Monte Foods
Novartis Caribe
Vice Presidency of The Dominican Republic and Health Cabinet for Covid-19
Cooperativa de Productores de Leche Dos Pinos
Sheehan Genetics
Alianza de Pacientes con Enfermedades Raras (ADAPA)
Libbey Glass
Tygrus
Chick-fil-A
Sichuan Kelun-Biotech Biopharmaceutical
Principaux dossiers
- Representing Del Monte Foods in litigation opposing the registration of the trade mark “Piñas del Monte” by Carlos Manuel Constanza Madea.
- Advising Didi Mobility on the legal implications for the use of the image rights of artists for the advertising of contests to be carried out through its digital platforms at the national level.
- Successfully defended Mapfre Salud ARS against the opposition to its application to register the trade mark “¡Siempre Contigo! Mapre Salud ARS” brought by Banesco Seguros.
Miniño Abogados
Miniño Abogados is described as ‘exceptionally responsive and skilled in the area of IP’. Urko Ochoa, noted as ‘the partner you need for IP matters in Dominican Republic‘, leads a team whose recent workload includes significant trade mark litigation and enforcement actions relating to copyright, with strong suits in the pharmaceuticals and technology (including fintech) sectors. ‘Strategic‘ managing partner Orietta Blanco is well versed in a wide range of IP issues but has a particular focus on the multi-jurisdictional management of trade mark and domain name portfolios in the Caribbean. The team also has growing six-person patent division, of which associate Eugenio Escolástico is a key part. Pamela Hernández, who was promoted to partner in March 2023, is another standout practitioner IP matters in the Dominican Republic and other countries in the region.
Responsables de la pratique:
Urko Ochoa
Les références
‘Miniño is our go-to firm in Dominican Republic. They always get the job done and are easy to work with. It provides comfort that Miniño understands what US clients require.’
‘Orietta Blanco is very strategic and consistently produces great outcomes for all of our clients. The team is extremely efficient and responsive.’
‘The team releases very good legal updates regarding the practice. In the same way, the communication of the entire team, on both trade marks and patents, is very thorough and clear in terms of requirements and updates on procedures.‘
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
Red Bull
Fresenius
Moroccanoil
BioMerieux
Staedtler
Principaux dossiers
- Acting for D.B.C. Corporation in one of most important trade mark cases to be heard in the Dominican Republic, relating to a copycat brand that became famous in its own right.
- Acted for Colombina in enforcement proceedings against the infringement of trade dress, including negotiations.
- Assisted well-known local jewellery designer Laura Tosato/EFECTOS with comprehensive IP and commercial support, including significant copyright and contractual elements.
Troncoso Leroux
A standout recent mandate for the team at Troncoso Leroux was appearing in the Supreme Court of Justice to represent a pharmaceutical company in a trade mark opposition action. Founding partner Maria del Pilar Troncoso heads up the team and is skilled in litigation in the IP space, while managing partner Pedro Troncoso is a key name to note when it comes to the IP aspects of corporate transactions. Domestically, the group has a strong client base and reputation, but it also acts for an impressive roster of international clients and is instructed by large multinational companies and organisations such as Major League Baseball. Senior associate Maxiell Herrera and associate Daniel Riley are go-to practitioners for trade mark enforcement and litigation.
Responsables de la pratique:
Maria del Pilar Troncoso
Les références
‘Accurate, precise, fast, and reliable.‘
‘Reliable and high-quality service.‘
Principaux clients
Novartis
Ron Barcelo
Lacoste Alligator
Crocs
Major League Baseball (MLB)
Pfizer
Eli Lilly and Company
Bristol-Myers Squibb
Puma
Alticor
YUM! Brands
Futbol Club Barcelona
Bulgari
Central Romana Corporation
SAS Jean Cassegran (LongChamp)
Televisa
Pernord Ricart
Salvatore Ferragamo
Guccio Gucci
Viacom International
Schaeffler
Principaux dossiers
- Assisted Zorro Productions with a trade mark application for “El Zorro”.
- Assisted Cognac with trade mark applications.
- Represented Salvatore Ferragamo in proceedings relating to counterfeit goods.
Bufete Lugo Lovatón
Bufete Lugo Lovatón's IP practice is particularly active in the food and beverages sector and in matters including copyright and trade mark infringement and unfair competition. On the regulatory side, the group often deals with issues relating to advertising regulations. Zaida Lugo is a key name to note.
Messina International
Founded in 2019, Messina International's IP team has a fast-growing client base which operates in a range of sectors, such as pharmaceuticals, technology and life sciences, and its diverse workload includes advising clients on government regulation, the IP aspects of licensing, distribution and supply agreements, and trade mark and copyright registration and protection. Managing partner Ana Messina, who has a wealth of expertise in the full spectrum of contentious and non-contentious IP matters, heads up the group alongside senior associate Adelin Villalobos, who has over 15 years' experience in IP and regulatory affairs.
Responsables de la pratique:
Ana Messina; Adelin Villalobos
Principaux clients
Viafirma (Avansi)
JJ Martin Group (Salutti USA/John Ra)
Brandstock Services
Alfaro, Ferrer & Ramirez
Deutsche Transnational Trustee Corporation/Empresas Polar
Calox International/Markatrade
Insecticidas Internacionales Dominicana/Agroser
Herrero & Asociados
Industrias San Miguel
Perfetti Van Melle
Integra Metas Estratégicas
Principaux dossiers
- Assisted Equifax with due diligence in IP matters related to a corporate transaction.
- Assisted Metas Estratégicas with compliance issues to enable the client to work together with state authorities on the development of an original country brand.
- Represented Calox International/Markatrade before the Supreme Court of the Dominican Republic in relation to a cancellation action.
Castillo y Castillo
Associate Carimer Guzmán and managing partner Luis Pimentel lead the IP team at Castillo y Castillo, which has a particular strength in the consumer goods sector, leveraging its knowledge of this industry to work with well-known clients such as Danone. Pimentel concentrates his practice on copyright and e-commerce matters, and also utilises his financial expertise to assist clients in the banking sector, regularly overseeing work for key client Banco Popular Dominicano. Guzmán is the go-to name for administrative and contentious trade mark procedures.
Responsables de la pratique:
Carimer Guzmán; Luis Pimentel
Les références
‘The experience of the team means their service goes beyond IP. The service received has always been of excellent quality.’
‘Carimer Guzmán has a wealth of experience and knowledge of the area.’
‘The firm is an expert in intellectual property issues. They work with great excellence, professionalism and pay attention to details, which is very important.’
Principaux clients
Industrias Banilejas (Induban)
Belcorp
Danone North America
Banco Popular Dominicano (BPD)
UPL
Grupo Bimbo
Aguirre Noboa
Ecolab
Brooks Kushman
Principaux dossiers
- Advising Induban on the defence of one of its key trade marks against a local infringer.
- Advising Danone North America on the sanitary registrations of its products and trade mark prosecutions.
- Advising major Mexican retailer Grupo Bimbo on the prosecution and maintenance of its large trade mark portfolio.
Guzmán Ariza
Senior counsel Leandro Corral and Fabio Guzmán Saladín, both of whom are highly active in advising on trade mark registrations, lead Guzmán Ariza‘s intellectual property team, which counts trade marks, patents, industrial designs and copyrights among its key areas of strength. Cross-border matters are a significant feature of the group’s work, thanks to its wide-ranging international client base, which spans the car manufacturing, pharmaceuticals, oil and gas sectors, among others.
Responsables de la pratique:
Leandro Corral; Fabio Guzmán Saladín
Principaux clients
Rocky Brands/Creative Recreation
Gazprom Neft
Kikkoman
Gold Star Tobacco
Sunwing Travel Group
Agrovet Market Animal Health
T&Beer
Senninger Irrigation
Principaux dossiers
- Assisted Gazprom Neft with amending old registrations and registering 3D marks.
- Assisted Kikkoman with modifying information pertaining to a trade mark registration.
- Assisted Gold Star Tobacco with the registration of seven of its trade marks.
JJ Roca & Asociados
JJ Roca & Asociados‘ versatile IP practitioners handle matters in a variety of sectors, such as chemicals, entertainment, technology and education. Among the group’s major international clients is Coca-Cola. Sharin Pablo de Roca and Ana Paula Campusano are the key names to note.
OMG
OMG‘s multidisciplinary team wins praise from clients as its ‘work is very easy to follow‘ and its lawyers ‘don’t resort to complex formulas‘. Luis Eduardo Aquino heads up the team, and his international trade and corporate knowhow is an asset in the team when advising on the IP aspects of corporate mandates. Associate and IP specialist Angeannette Tejeda is another key name to note in the team, regularly assisting clients with the administration of their intellectual property assets.
Responsables de la pratique:
Luis Eduardo Aquino
Les références
‘OMG has proven, over the years, to be an excellent ally to the legal field in the country. It is extremely clear, and the work is very easy to follow.‘
‘The lawyers who assist us adapt, maintain a legal tone, and don’t resort to complex formulas that “non-lawyers” are left with doubts about. This has given them a competitive advantage compared to other law firms.‘
Principaux clients
Ourofino Sáude Animal
Inter IKEA Systems
CISA Dominicana
SICPA
Universidad Iberoamericana (UNIBE)
Principaux dossiers
- Assisted Alimentos Heinz Costa Rica (Kraft Heinz) with IP issues related to its relationship with a local distributor for the commercialisation of Heinz products in the Dominican Republic.
- Assisting SICPA with IP issues related to a services contract (and its amendments) executed with the Tax Administration of the Dominican Republic (DGII) for the control, traceability and security system for alcoholic beverages and cigarettes in the Dominican market.
- Assisted Inter IKEA Systems with IP issues relating to the review of a draft franchise agreement with a Dominican franchisor, as well as the completion of a legal and regulatory risk analysis from the Dominican Republic perspective.
Pereyra & Asociados
Noted as an ‘outstanding firm to work with‘, Pereyra & Asociados is well known for its trade mark application and registration work, but also deals with cases relating to patents, trade secrets, industrial designs, and copyrights. Practice group head Lorena Pereyra is ‘an expert in her field‘, with a client roster that ranges from start-up companies to multinationals, which is also demonstrative of the group’s overall ability to assist a broad client base which covers the pharmaceuticals, healthcare and technology sectors, among others.
Responsables de la pratique:
Lorena Pereyra
Les références
‘Pereyra & Asociados is an outstanding firm to work with. They provided us with a perfect trade mark strategy that was tailored to our case. They knew exactly what we needed in order to succeed. We were able to register our trade mark in the Dominican Republic very quickly and felt always very well taken care of. The communication with the entire team was always swift and very friendly.‘
‘Lorena Pereyra was an absolute pleasure to work with. She is an expert in her field and always had great solutions for every problem that arose. She found a way to make our trade mark application happen which was almost impossible to achieve. She helped us navigate the legal landscape in the Dominican Republic with ease and we did not feel like we operated in a different jurisdiction.’
Principaux clients
Patrix IP Services
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
Avaya
Principaux dossiers
- Assisted Behrens Laboratories with a trade mark application for a Gliceramin pharmaceutical product.
- Assisted Avaya with the renewal of ten company trade marks before the local institutions.
- Assisted Essity Hygiene and Health with multiple trade mark registrations and renewals before the local institutions.
Russin, Vecchi & Heredia Bonetti
Russin, Vecchi & Heredia Bonetti has a strong track record in trade mark protection, regulatory issues, and privacy/publicity rights matters, as well as patents and copyright. Experienced IP practitioner Rosa Campillo Celado, whose international law expertise allows her to assist local and foreign clients doing business in the Dominican Republic, leads the team. On the litigation side, managing partner Georges Santoni Recio is a key name to note. Mónika Fiallo Paradas is also a prominent team member with over 20 years of experience in IP matters in a range of sectors.
Responsables de la pratique:
Rosa Campillo Celado
Principaux clients
BMJ Industries Tobacco
Mead Johnson Nutrition Dominicana and Mead Johnson
Photoshop Caribe
Principaux dossiers
- Assisted BMJ Industries Tobacco with filing several oppositions against a third-party trade mark applications in the Dominican Republic.
- Represented Mead Johnson Nutrition Dominicana and Mead Johnson in a right to publicity case stemming from the commercial use of the counterparty’s image for the advertising of the Alacta Plus brand.
- Acting for Photoshop Caribe in the administrative stage of proceedings before the ONAPI, relating to an annulment action filed against Adobe’s “Photoshop” trade mark, registered locally in 2015.
Troncoso y Cáceres
A longstanding presence in the Dominican market, Troncoso y Cáceres is particularly focused on the registration of trade marks, although it is also experienced in patent and industrial design matters. Anti-counterfeiting cases are another core area of expertise. Senior partner Ana Isabel Cáceres Matos and Jesús Troncoso oversee the practice, supported by senior associate Claudia Vargas Matos, a key name for IP litigation and regulatory matters.
Responsables de la pratique:
Ana Isabel Cáceres; Jesús Troncoso
Principaux clients
Apple
Societe Louis Vuitton Services
Revlon Consumer Products
Hero Motocorp
NBA Properties
Grupo Massimo Dutti
Kraft Foods Group Brands
Victoria’s Secret & Co.
Zacco Denmark
Inditex
Exxon Mobil
Pfizer
Henkel
Novartis
Becton, Dickinson and Company
SFFC
The Goodyear Tire & Rubber Company
Womble Bond Dickinson (US)
Fruit Of The Loom
Mitsubishi
LVMH Perfumes & Cosmetics
Vans
Amcor Rigid Packaging USA
Eaton Intelligent Power
Principaux dossiers
- Advised Indiana University Research and Technology Corporation and Assembly Biosciences on registering their patent for “Allosteric Modulators of Hepatitis B Core Protein”.
- Advised CR Bard on the registration of its “BD Atlas” trade mark in the Dominican Republic.
- Acted for Hyatt, the owner of the “Hyatt Ziva” trade mark, in filing an opposition against an application for a trade mark for “Ziba Suites & Golf Residences”.
Ulises Cabrera
The team at Ulises Cabrera, whose ‘willingness to collaborate always stands out‘, leverages close connections with law firms throughout the Caribbean region to work on cross-border IP matters. Practice head Magdalena Almonte, who has specialisms in the consumer goods, food and beverages, life sciences and technology sectors, oversees the team, supported by associate Aidaluz Pimentel. The pair are highly active in trade mark registration matters, which form a large part of the group’s IP work.
Responsables de la pratique:
Magdalena Almonte
Les références
‘The team is efficient and effective. The response times are fast, and we get favourable results. Their willingness to collaborate always stands out, as well as their ability to fully comply with what is entrusted to them and go that extra mile to achieve the results expected.’
‘Quick and efficient responses, organised, responsible, and committed to customers. Magdalena Almonte and Aidaluz Pimentel are names to note.‘
‘An organised team that can work fluidly and efficiently.‘
Principaux clients
Grupo Familia
Novo Nordisk
Químicos y Lubricantes
Delivery Hero
Xiaomi
Quirch Foods
Otis McAllister
Zhongce Rubber Group Company
Kao Corporation
Altian Pharma
Emcure Pharmaceuticals
Font Gamundi
Brand Leaders
Super de Alimentos
Shenzhen Woody Vapes Technology
Rolex
Roma Prince
Industrias Nigua
Terpel
Premier Electric Japan
Fundación Juan Bosch
General Mills
Campbells Soup Company
DIDI Chuxing Technology
Bacardi
Vreugdenhil
S.D. Sight Diagnostics
Productos Alimenticios Bocadeli
Spectrum Brands
Principaux dossiers
- Assisted Delivery Hero with IP due diligence related to the acquisition of Hugo Technologies.
- Represented Grupo Disagro in an opposition to the application for the trade mark “Armada”, due to its similarity to the client’s “Armero” trade mark.
- Defending Pancommercial Holdings in a cancellation action for non-use brought against its trade mark “Jack’s”.