Colombia

Colombia’s economy – like that of all Latin American countries – has been hit hard by the fall in oil and other commodity prices. While the prospect of a lasting truce between the government and FARC rebels was expected to drive up foreign investment, the entire peace process is now on hold following Colombian voters’ rejection of the accord concluded in September 2016. However, the overall outlook here is more positive than in many other neighbouring markets; international brand owners seeking an entry point into Latin America will therefore continue to watch Colombia closely. The efficiency of the country’s trademark office – the Superintendence of Industry and Commerce – is a boon for rights holders; it is undoubtedly one of the best registries in South America and recently shored up this reputation following a comprehensive upgrade of its technical platform. It is also helpfully getting to grips with its judicial powers, realigning its decisions with the jurisprudence to which litigators are accustomed.

Firms

1
Baker McKenzie Colombia SA
Brigard & Castro
Cavelier Abogados
Dentons Cardenas & Cardenas
Lloreda Camacho & Co
Triana Uribe & Michelsen
2
Castellanos & Co
OlarteMoure
Philippi Prietocarrizosa & Uria SAS
Posse Herrera Ruiz
3
Clarke Modet & Co
Cuesta & Asociados Ltda
Raisbeck & Castro
Wolf Méndez Abogados Asociados
Baker McKenzie Colombia SA
Of all the major international players, Baker McKenzie has the strongest presence in Latin America and the team in Colombia is the jewel in its regional crown. Rather than merely providing agency-type services, it dispenses advice that is highly sophisticated from both black-letter law and commercial perspectives. One of the best in the business when it comes to strategic counselling and enforcement, it also deftly manages both domestic and global portfolios. Juan Pablo Concha Delgado was recently appointed to lead the Bogota office, taking the reins from Alvaro Correa Ordoñez. Concha watches the Colombian marketplace like a hawk, swooping in rapidly whenever clients’ brands are threatened by infringers; his direct, no-nonsense approach is one of his biggest selling points. A leading light on the national IP scene, Correa remains “an incredibly important asset to the firm and its clients”; the gold-rated partner is “hugely experienced” and “quick and correct” whenever giving advice or interpreting the law. He continues his fine work for McDonald’s and PepsiCo, both of which he has protected in Colombia for many years. Also on hand is of counsel and distinguished academic Ricardo Metke Méndez; like Correa, he is a seasoned veteran who has seen just about all there is to see in terms of brand protection.
Brigard & Castro
Brigard & Castro attracts glowing reviews from all corners of the market. “When you need power, you just push a button and the firm puts an A team together for you. It attends to matters in a consistent fashion; the look and feel of the service from different partners is the same.” The nimble boutique’s work is top of the line – for example, “when you read its oppositions, you can see some very clever argumentation”. Although adept at prosecution, it is best known for its contentious muscle; peers call it “aggressive competition and a challenge to go up against”. It recently represented Philip Morris in a dispute with a key competitor, which culminated in a declaration of well-known status for the MARLBORO trademark in Colombia; seamless cooperation between its opposition, litigation and strategic counselling units was pivotal to victory in this case. Leading the squad is Juan Pablo Cadena, who “stands out for his knowledge and experience”. “He has been on the frontline of trademark practice for many years, is great with clients and has built up a good group.” Picking up the most foreign associate recommendations of any individual in the Colombia listings, Martín Torres Cardozo is an easy choice for the WTR 1000 gold tier. He directs the trademark prosecution section and is a brilliant portfolio manager.
Castellanos & Co
According to one internationally renowned Latin American trademark expert, Castellanos & Co “provides excellent advice and gives an immediate response”. The two-partner outfit “renders an especially effective prosecution service”, but has considerably expanded its contentious practice of late. It dexterously handles administrative litigation and knows how to get the right result from the Superintendence of Industry and Commerce, as evidenced by its recent representation of Swatch Group in a precedent-setting case concerning one of the watchmaker’s TISSOT Madrid Protocol registrations; based on the team’s eloquent argumentation, the mark’s initial rejection for confusing similarity to another mark in the same class was ultimately overturned on appeal. Margarita Castellanos took the lead on this brief; patrons appreciate her commitment to maintaining the highest standards of quality while keeping costs to a minimum. “A lot of lawyers want you to oppose things constantly, but Margarita will focus attention on situations where clients are at risk of commercial damage.” She takes charge of the disputes team, while management of the prosecution unit and the firm as a whole falls to Ximena Castellanos. Both partners give their personal attention to each instruction.
Cavelier Abogados
Cavelier runs “one of the best patent departments in the Andean Community”, but also offers a “quick and quality” trademark service. “It has really good systems and processes in place – you can see it in the way it formats responses.” A high degree of specialisation among its practitioners allows it to handle any branding issue under the sun with consummate ease; on the contentious side, for example, it has dedicated experts in criminal IP law who man a busy anti-counterfeiting practice. Its WTR 1000-listed partners have diverse but complementary skill sets, and together form “an experienced and trustworthy team”. At the helm of the international department is Jorge Chávarro, who has “an amazing knowledge of trademarks and geographical indications” and “a great strategic mind when it comes to handling global portfolios”. “Aggressive and effective” contentious maven Edna Sarmiento oversees the litigation unit with a steady hand. “Incredibly skilled and a decent person with whom you can have a very collegial relationship”, Luz Clemencia de Páez takes care of all things prosecution. She is a former head of the legal office and industrial property division of the Superintendence of Industry and Commerce, so she knows the ins and outs of the system like no other.
Clarke Modet & Co
Clarke Modet & Co has been doing business in Colombia for more than 20 years, amassing a large collective of talented professionals between its Bogota and Medellin offices along the way. It combines in-depth local knowledge with international expertise spanning all Portuguese and Spanish-speaking jurisdictions, and is a top choice for brand owners seeking to centralise the management of their portfolios. Technical and legal service manager Carolina Daza Montalvo is the main point of contact.
Cuesta & Asociados Ltda
Foreign associates warmly endorse Cuesta & Asociados, citing the “quality and reliability” of its work and its “fast responses and reasonable rates”. With intellectual property a central pillar of its business law practice, the firm is well versed in the intricacies of protecting and enforcing trademark rights both domestically and internationally; from outposts in Bogota and Medellin, it adroitly coordinates projects across Latin America and the Caribbean. Senior partner Juan Carlos Cuesta runs a tight ship.
Dentons Cardenas & Cardenas
The merger of international powerhouse Dentons and Cárdenas & Cárdenas – as well as Mexico’s López Velarde – made Latin American headlines in 2016. Dentons selected its Colombian partner wisely; Cárdenas & Cárdenas nets excellent reviews from all sources, who praise its “detail-oriented approach” and “first-rate work”, as well as its “personal touch and quick responses”. “It has a very complete IP practice” that spans the contentious/non-contentious divide, with supplementary expertise in ancillary areas such as advertising, consumer protection, privacy and regulatory law. Juanita Acosta and Luz Helena Adarve are the names to note. Acosta is an experienced portfolio manager and negotiator; Adarve is a keen strategist with over three decades of experience. Their newfound ability to channel the extensive resources of a large global firm in the service of clients has significantly strengthened their position on the Colombian IP scene.
Lloreda Camacho & Co
The IP contingent at Lloreda Camacho is “very alert commercially” and “sharp on strategy”. Impressed by the outfit’s resolute command of domestic branding issues, international clients are increasingly instructing it to manage their regional affairs; the team is well suited to the task, given its sophisticated understanding of the IP regimes of numerous jurisdictions and dependable network of top-tier correspondents. Personifying the set’s joined-up thinking, litigation-focused IP department head Alicia Lloreda and trademark and copyright group leader Tatiana Carrillo work closely together to secure watertight protection of clients’ crown-jewel assets. “Alicia is charismatic and uniquely skilled in the way she puts things into place for you – she is all about the client.”
OlarteMoure
Renowned for dispensing strategic counsel laced with cutting-edge insight, OlarteMoure can manage the largest and most complex portfolios with ease; as testament to this, it currently handles the global patent and trademark portfolio of Nutresa, which operates in over 100 jurisdictions. Maintaining a bustling opposition practice and unafraid to dig deep in any civil or criminal IP infringement scenario, the team is a dab hand at contentious matters, too. On a recent project, it significantly reduced counterfeiting in Medellin and Barranquilla (where it has branch offices) for a global software company. One foreign associate enthuses: “From a cost-benefit perspective, and taking into account the quality of its work and responsiveness, OlarteMoure is easy to recommend and one of our favourite firms to partner with.” One of the Colombian market’s heavyweights, department head Juan Moure boasts a sparkling CV; he held various other public sector posts before becoming the deputy superintendent for industrial property and played an integral role in government negotiations on IP law and free trade. Rising star Felipe Acosta directs the IP litigation division with aplomb, although he also manages international portfolios without breaking a sweat.
Philippi Prietocarrizosa & Uria SAS
Although Dentons and Cárdenas & Cárdenas may have stolen some of its thunder with their May 2016 union, full-service operator Philippi Prietocarrizosa & Uría still sits firmly among the country’s trademark elite. Offices in Chile, Colombia and Peru make it an adept regional coordinator; working in tandem with Iberian power player Uría Menéndez, it can also take care of business in Europe, the United States and Asia. Its dynamic IP squad is a safe pair of hands for registration and complex litigation, and excels in IP-driven transactions. Man in charge Mauricio Patiño Bonnet is active in all these areas and supervises affairs with a keen eye for quality. Owners of large international portfolios in need of strategic direction are well catered for by Zoraida Fonseca.
Posse Herrera Ruiz
The trademark infringement practice at commercial outfit Posse Herrera Ruiz has recorded striking growth over the past year; implementing clever strategies, the team resolves a vast majority of cases before they reach the courtroom, resulting in considerable time and cost savings for clients. This efficiency has also fuelled demand for the set’s regional and international services; its deep knowledge of the Caribbean and US markets in particular separates it from the pack. The far-sighted advice of Helena Camargo strikes a chord with clients such as Fender Musical Instruments, for which she has successfully handled numerous oppositions; she is a top choice for any administrative litigation. When it comes to IP transactions, the firm also has another best-in-class lawyer in Ernesto Cavelier, a prominent figure in the Licensing Executives Society.
Raisbeck & Castro
Two-partner set-up Raisbeck & Castro has all the boxes ticked when it comes to intellectual property, with robust patent and trademark practices as well as complementary expertise in regulatory and commercial law. Respected all-rounder Ian Raisbeck prosecutes as shrewdly as he litigates; one of Colombia’s small coterie of anti-counterfeiting gurus and eminently business oriented, he has a strong market profile and wins plaudits for his creative approach to branding issues.
Triana Uribe & Michelsen
Triana Uribe & Michelsen is “simply excellent on the trademark side and really knows its craft”. “The firm has good people providing detailed advice and quality work. It sees a lot of prosecution, but also has a great litigation department.” Foreign associates further recommend it for its “speedy communication”. “Knowledgeable, reliable and commercial”, Fernando Triana stands tall as one of the country’s leading IP litigators. Laura Michelsen enjoys a similar reputation over on the prosecution side and joins her colleague in the WTR 1000 gold tier.
Wolf Méndez Abogados Asociados
In 2016 storied boutique Wolf Méndez celebrated 25 years of dispensing practical solutions to patrons’ IP problems in Colombia and abroad. With dedicated IP and litigation departments, and additional expertise in unfair competition, consumer protection and contracts, there is nothing that it cannot handle. Mónica Wolf de Camhi is recognised internationally for her outstanding trademark knowledge and client service. As a result of her high-level participation in various associations and committees, she is extremely well connected, making her a vital asset for those with complex cross-border issues.

Individuals

Luz Helena Adarve - Dentons Cardenas & Cardenas
Juan Pablo Cadena - Brigard & Castro
Ernesto Cavelier - Posse Herrera Ruiz
Jorge Chávarro - Cavelier Abogados
Juan Pablo Concha Delgado - Baker McKenzie Colombia SA
Alvaro Correa Ordoñez - Baker McKenzie Colombia SA
Alicia Lloreda - Lloreda Camacho & Co
Ricardo Metke Méndez - Baker McKenzie Colombia SA
Laura Michelsen - Triana Uribe & Michelsen
Martín Torres Cardozo - Brigard & Castro
Fernando Triana - Triana Uribe & Michelsen
Felipe Acosta - OlarteMoure
Juanita Acosta - Dentons Cardenas & Cardenas
Helena Camargo - Posse Herrera Ruiz
Tatiana Carrillo - Lloreda Camacho & Co
Margarita Castellanos - Castellanos & Co
Ximena Castellanos - Castellanos & Co
Juan Carlos Cuesta - Cuesta & Asociados Ltda
Luz Clemencia de Páez - Cavelier Abogados
Zoraida Fonseca - Philippi Prietocarrizosa & Uria SAS
Juan G Moure - OlarteMoure
Mauricio Patiño Bonnet - Philippi Prietocarrizosa & Uria SAS
Ian Raisbeck - Raisbeck & Castro
Edna Sarmiento - Cavelier Abogados
Luz Helena Villamil - PONS
Mónica Wolf de Camhi - Wolf Méndez Abogados Asociados
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Issue 69