Intellectual property in Paraguay

BKM | Berkemeyer

Established as the leading specialist IP firm in the market, BKM | Berkemeyer provides the complete range of IP services. The team excels in the registration of trade marks, patents, domain names, designs and copyrights. It also boasts a successful contentious practice, representing clients in litigation and enforcement proceedings before administrative, civil and criminal courts. The team fields expertise across the full range of sectors, from pharmaceuticals, food and retail to technology and media. The life sciences and agricultural sectors are particular areas of specialisation, with the group’s knowledge extending to licensing and biotechnology agreements. Marta Berkemeyer heads the team, with Hugo T. Berkemeyer also playing a lead role in many of the group’s key mandates. Head of the litigation team Bárbara Dollstadt is an active member of the practice, alongside Irene Angulo, who leads the patent department with Cristobal Gonzalez. Valeria Carron heads the international practice and Jaqueline Querciola the trade mark department. Jazmin Hamuy focuses on trade mark filing and prosecution. Patricia Lopez Moreira, Viviana Rolon, Alexander Berkemeyer and Antonio Villa Berkemeyer are other names to note.

Responsables de la pratique:

Marta Berkemeyer; Irene Angulo; Bárbara Dollstadt; Cristobal Gonzalez; Jaqueline Querciola; Valeria Carron


Principaux clients

The Walt Disney Company


The Coca-Cola Company


Amazon


Grupo Bimbo


Hugo Boss


Apple


Novartis


Rolex


McDonald’s


Unilever


Shell


Bayer


S.C. Johnson & Son


Principaux dossiers


  • Providing ongoing advice to the Walt Disney Company on all IP-related matters.
  • Advising the Coca-Cola Company on all IP matters on an ongoing basis.
  • Advising Philip Morris Brands on an ongoing basis on all IP matters.

Ferrere

With a successful track record in contentious matters within the IP sector, Ferrere advises on oppositions, prosecutions of trade mark portfolios, and cancellation and nullity actions. Regulatory matters are another area of expertise, and the team represents clients in interactions with the IP office in Paraguay. The group excels in the drafting of licensing and franchise agreements, and is also experienced in the transfer of IP rights, particularly in the context of M&A. Its international focus is reflected in its extensive roster of multinational clients, spanning the TMT, agribusiness, finance, pharmaceutical, industrial and transportation sectors, that it advises on trade mark, patent, design and domain name registration. With a strong contentious practice, Néstor Loizaga leads the team. Practice co-head, senior associate and IP expert Montserrat Puente boasts ‘outstanding’ experience in trade mark portfolio management, including opposition and protection, as well as demonstrating expertise in niche matters, such as IP-generated royalties. At the senior associate level, Miguel Saguier plays a lead role in cancellation and nullity actions. Cynthia Sanabria specialises in trade mark filing and prosecution, defending trade mark and patent rights at the administrative level, while César Benitez is active in judicial proceedings.

Responsables de la pratique:

Néstor Loizaga; Montserrat Puente


Les références

‘Immediate response to our inquires. Handles with responsibility any matters we send.’

‘Montserrat Puente, my go-to person in this jurisdiction.’

‘Ferrere Abogados – IP stands out for its speed of service and providing complete information to clients.’

Principaux clients

UPL


La Caoba


Loveland Products


Rigo Trading


Limagrain


Gutis


Unicomer


Nutrien


Association A Todo Pulmón


Rádio e Televisão Bandeirantes


Vet Plus Tangerine Group UK


Intelbras


CMPC


Sociedad Anónima Damm


Grupo Solid


Biocon


Blink Bioscience


British American Tobacco


DirecTV


Indel


Shein


Bitmain Technologies


Binance UAB


The Hoff Brand


Viñedo Emiliana


Smart Fit


Prime Health


Agri Terra


BFL Metal Production


Disney


IHG


Agri Terra


Vivara Participações


Access One


American Airlines


MentorMate


Stetara Labs


Nobel do Brasil


Principaux dossiers


  • Assisted Geneze Sementes (currently part of Limagrain) in the process of regaining the GENEZE trade marks from its former local distributor.
  • Represented Bodega Emiliana in the legal actions filed before the Administrative Court (opposition judicial appeal), which sought to obstacle the registration of the “EMILIANA” trade mark.
  • Represented La Papelera Del Plata (CMPC) in the opposition proceedings against the filed HIGENOL trade mark application, which imitated the HIGIENOL trade mark.

Mersán Abogados

Mersán Abogados‘ expertise in the IP sector extends beyond trade marks, copyrights, patents and industrial designs to incorporate advertising and digital law and rights of plant varieties.  The team is experienced in copyright infringement at a criminal level, as well as franchise agreement, licensing and regulatory compliance. IP expert and head of practice Hugo Mersán boasts a wealth of experience in IP cases, representing clients in the administrative and judicial prosecution of trade marks, as well as bringing specialised knowledge of matters such as anti-piracy and biotechnology to the team. He leads the group alongside Lorena Mersán, who is praised for her ‘diligence, dynamism and excellence‘. Senior associate Melissa Stimson focuses her practice on trade mark matters, from renewals to litigation and prosecution, while Liliana Nolan specialises in the agricultural sector, including the rights of plant breeders. María de los Ángeles Barrios is another senior associate to note.

Responsables de la pratique:

Hugo Mersan; Lorena Mersan


Les références

‘Mersan has a very competent and effective team when submitting applications, processing, litigation, and everything related to IP. It is a very efficient team and clear in its responses and information. They make almost no mistakes and are very transparent when communicating. In addition, all the lawyers we work with are very good. Notable among them are Lorena Mersan, Liliana Nolan and Melissa Stimson.’

‘Hugo Mersan, Liliana Nolan, Lorena Mersan: I highlight their cordiality, their willingness and agility for any query or management.’

‘Diligence, dynamism, excellence, team capacity, knowledge of the subject. Lorena Mersan is fantastic!’

Principaux clients

British American Tobacco


Basf


Sanofi


The Goodyear Tire & Rubber Company


Pernod Ricard


Itaú Unibanco


Millicom International Cellular


Microsoft Corporation


International Olympic Committee


Pierre Fabre


Pierre Balmain


Burger King Corporation


Lesaffre International


Christian Dior


3M Company


Calvin Klein Inc.


WD-40 Company


Lauro Raatz


CSL Behring


HanesBrands


Guess


Agilent Technologies


Granja Avícola La Granja


Agrotec


Eno Bronstrup


Prada


Sancor Cooperativas Unidas Limitada


Target Brands


Cepas Argentinas


Laura Ashley Limited


Vitol Holding


Westrock Packaging Systems


HP Hewlett Packard Group


Principaux dossiers


Vouga Abogados

Experienced in the protection of IP assets, Vouga Abogados continues to manage a growing list of trade mark and patent portfolios, advising on risk mitigation and providing representation in litigation proceedings. With both national and international clients, the team manages patent applications on a global scale, with a particular focus on the pharmaceutical and agribusiness sectors. Siegfried Vouga, an expert in IP law, co-heads the practice and brings extensive experience to the team. Practice co-head associate Laura Lezcano boasts a diverse roster of international clients. Rodrigo Fernández de Nestosa plays a key role in the group’s contentious matters, representing clients at civil, administrative and criminal courts and before the Supreme Court. Promoted to partner in January 2024, Manuel Acevedo focuses his practice on patent-related matters. At the associate level, Grecia Florentin assists with the prosecution of administrative IP cases, while Stephanie Medina focuses on the health and pharma sectors.

Responsables de la pratique:

Siegfried Vouga; Laura Lezcano


Les références

‘The Vouga Abogados team is made up of top-level professionals with extensive knowledge of the Paraguayan market. It is a leading firm in corporate law and intellectual property, which is an opinion maker in the Paraguayan corporate market.’

‘Rodrigo Fernández is a stand-out from Vouga with his deep legal knowledge and immersion in the commercial necessities and priorities of our business. Along with his wide experience in matters of counterfeit products and general IP, Rodrigo is always available with quick, practical, efficient advice that keeps in mind the ethos and commercial relationships of our company, while maintaining our strong focus on compliance.’

‘Vouga is a very updated, avant-garde studio and superior to any other we work with.’

Principaux clients

BYD Company Limited


Mosaic Fertilizantes Do Brasil


Luveck Medical Corporation


Continental Grain Company


Barenbrug


Chery Automobile


Prosegur Paraguay


Zhejiang Geely Holding Group


Blue Diamond Growers


Alex


Guangdong Chigo Air-conditioning


Paraguay Refrescos


Nissin Foods Holdings


Wines & Spirits


Luiz Leonardos & Advogados


Bolsa de Valores y Productos de Asunción


Hijas de Feliciana de Fariña No 3 years


Midea Group


Principaux dossiers


  • Assisting Barenbrug in the obtention of different plant variety registrations to both protect IP rights and allow commercialisation in Paraguay.
  • Assisting Nextleaf Solution with the filing of two patent applications on cannabis-related matters.
  • Advised Mossaic Fertilizantes Do Brasil on the assessement of risks and the design of a strategy to achieve a coexistence agreement between the client’s trade marks (PERFORMA) and its counterparty, Syngenta’s trade mark (PERFORMAX).

Cervieri Monsuárez

Distinguished by its dedicated brand protection department, Cervieri Monsuárez represents global brands across Latin America and defends their IP rights. The team is also active in private investigations into counterfeit products. It advises on the registration of the full range of IP rights, from patents and trade marks to geographical indications, health registrations and plant varieties. Lorena Sosa heads the practice, while associate Carlos Pavón plays a key role in the team’s IP litigation mandates. Lucía Cantera is another name to note. Also at the associate level, Giovanna Milessi focuses on anti-counterfeit matters, while Lilian Marecos is active in IP prosecution.

Responsables de la pratique:

Lorena Sosa; Carlos Pavón; Giovanna Milessi; Lilian Marecos


Les références

‘They’re a multi-jurisdictional firm and have proven capable in those jurisdictions. Further, they’re the first firm I’m aware of to investigate ways to recycle counterfeit goods. They also have several divisions that collaborate with customs offices which improves cooperation with their clients.’

‘The associates are all responsive and collaborative. We have worked with Lucia Cantera Carrasco.’

Principaux clients

Schaeffler Technologies


Tiffany and Company


Guccio Gucci


Cartier International


Michael Kors Switzerland International


Ferrero


Funko


Crocs


Principaux dossiers


  • Advised Schaeffler Technologies on a private investigation into counterfeit FAG bearings, resulting in the filing of a criminal complaint and a successful raid.
  • Intervened on behalf of Funko when toys without trade marks but with copyrights owned by Funko, were retained in the port of Campestre, Ciudad del Este.
  • Advised Ferrero on out-of-court actions to obtain a cease of infringing activity when it became aware that pastry and confectionery products were being offered in the Paraguayan market bearing the term “Nutella”.

Olmedo Abogados

The IP team at Olmedo Abogados has noted a recent increase in filings for new trade marks. The practice has seen particular growth in the registration of new inventions and advises on the filing of new patents, with a focus on the pharma sector. Sebastián Olmedo and José Ignacio Olmedo jointly lead the team, both bringing extensive experience in litigation to the practice. Associate Adriana Quiñonez fields extensive experience in the management, protection and enforcement of IP rights; as well as patents, copyright, utility and industrial models, she advises on confidentiality contracts, image rights, trade secrets, franchises and use licenses.

Responsables de la pratique:

Sebastian Olmedo; Jose Ignacio Olmedo; Adriana Quiñonez


Principaux clients

Nooa Ciencia E Tecnologia Agricola


Woden Colombia


Hero Motocorp


Kabushiki Kaisha Kobe Seiko Sho Actuando En Comercio Como Kobe Steel


Compañía Administradora De Riesgos


Unicentro


Celltrion


Ontier Holdings


Molecor Canalizaciones


Smith & Wesson


Principaux dossiers


  • Assisted Nooa Ciencia E Tecnologia Agricola with the registration process of its entire brand portfolio, in addition to assisting with everything related to the health registration of the products.
  • Advised Woden Colombia on the filing of new trade mark applications in Paraguay in order to protect the new slogan, and advised regarding IP assets.
  • Assisting Kabushiki Kaisha Kobe Seiko Sho Actuando En Comercio Como Kobe Stee with the filing of new trade mark applications for KOBELCO in several classes.

Peroni Sosa Tellechea Burt & Narvaja

Peroni Sosa Tellechea Burt & Narvaja advises both local and foreign companies on the registration and commercial use of trade marks, patents, utility models and designs. The team advises brands on their products and services, including concessions and licensing, as well as handling the registration of various contracts. Practice co-head Elba Britez de Ortiz specialises in trade mark and patent registration and is an active litigator in trade mark oppositions. Juan Ortiz Britez co-leads the team and plays a key role in investigations against counterfeit goods. Promoted to junior partner in July 2023, Nadine Peroni boasts a successful track record in opposition proceedings. Mariana Peroni has retired from the firm.

Responsables de la pratique:

Elba Britez de Ortiz; Juan Ortiz Britez; Nadine Peroni


Principaux clients

Ab/Inbev (Holding)


Cervepar


National Academy of Recording Arts & Sciences


Toy Cantando


Banco Atlas


Eurofarma Paraguay


Farmedis


Grupo Televisa


Starbucks Corporation


Productos Farmacéuticos


Genomma Lab Internacional


GAP ITM


Ford Motor Company


Mary Kay


Ueno


Biogénesis Bagó


Jaguar Land Rover


Editorial Azeta


Vicente Scavone & Cía


Grupo Nación


Bebidas del Paraguay


Sumitomo Chemical Company


TOEI Animation


Trovato


UPL Corporation & UPL Corporation Europe


Principaux dossiers


  • Representing Starbucks Corporation in a wide range of matters, from a market investigation regarding infringement of trade mark registrations granted in Starbucks Corporation’s name and prosecution strategies to filing 48 new trade mark applications.
  • Representing AB InBev in litigation against trade mark Brava, sued for nullity based on AmBev’s Brahma.
  • Assisting Grupo Televisa in reaching a settlement with Disney Enterprises, in a case involving its trade mark applications for Star based on the trade mark El Canal de las Estrellas.