Dominican Republic

There have been few significant IP trends or developments to report from the Dominican Republic, although everyone is watching to see how tobacco plain packaging issues develop, as well as keeping an eye out for any updates concerning the Madrid Protocol. However, the past 24 months have seen several notable changes in the legal services market. Three freshly minted set-ups have emerged – Angeles Pons, Troncoso Leroux and Biaggi & Messina-Lugo IP – giving clients some interesting new options to partner with. Though the island is small, the market is tremendously competitive – at the International Trademark Association annual meeting there are usually more than 10 Dominican firms participating. This keeps everyone on their toes and the country is home to some of the most proactive and committed IP specialists in the Caribbean. As such, many brand owners and foreign associates engage Santo Domingo firms to take charge of their regional protection and enforcement affairs.

Firms

1
MINIÑO
2
Angeles Pons
Headrick, Rizik, Alvarez & Fernández
Troncoso Leroux
3
Jorge Mera & Villegas
Troncoso y Caceres
Valdez Albizu
Angeles Pons
Angeles Pons is a brand-new player on the market, established at the end of May 2016 when Jaime Angeles and Wallis Pons joined forces. Formed by two of the nation’s best IP practitioners, it certainly has a bright future ahead of it. The pair offer a full service when it comes to brand protection and enforcement, and routinely go beyond the brief to furnish clients with insightful commercial guidance. Angeles is best known as the market’s top copyright expert, though is nonetheless a dab hand on trademark matters. Former Biaggi & Messina IP director Pons has the magic touch with large portfolios and is appreciated for the personal service she provides.
Headrick, Rizik, Alvarez & Fernández
Full-service firm Headrick, Rizik, Alvarez & Fernández is “excellent in every legal discipline it handles” and lives up to this reputation in the trademark arena. Its practice is flourishing right now, particularly in the pharmaceutical and food and beverage sectors, where it brings its regulatory expertise to bear to superb effect. A strong transactional practice separates it from many of its competitors on the market; if a corporate transaction is going down, the team will ensure that all of the related IP issues are sewn up. With more than 10,000 trademarks under its management and a doughty contentious practice to boot, it is a fine destination for one-stop shoppers. “One of the most professional, responsible and responsive individuals anywhere”, Mary Fernandez Rodriguez captains the side. She is in the thick of the action, too – close partner involvement characterises the firm’s work across all departments. She brings broad knowledge of foreign investment, commercial, franchising and IP law – among other areas – to the table to provide holistic advice to clients. She draws invaluable support from Lilly Acevedo Gómez, a proactive associate with up-to-the-minute awareness of regional and international developments in trademark law and practice. The two “understand core issues quickly and address them in a pragmatic and business-friendly manner”. “Simply the best”, is the enthusiastic verdict on WTR 1000 debutant JJ Roca. The general commercial firm offers “A1 quality in intellectual property” and is endorsed not just for its Dominican Republic capabilities, but for its pan-Caribbean execution too. Speed, sparkling communication skills and competitive prices lend it further credibility. Sharin Pablo de Roca leads the IP practice group with verve. She is the current president of the Dominican Association of Intellectual Property and was also recently selected to preside over the Competition Committee of the Inter-American Association of Intellectual Property for 2016-2017; she is definitely a mover and shaker in the community and very in tune with all that is happening regionally.
Jorge Mera & Villegas
Jorge Mera & Villegas has intellectual property etched into its DNA, having entered existence following the merger of an IP boutique with a general practice. By appreciating the commercial forces at play in clients’ industries, it offers trenchant advice that can be implemented in practical ways. Patricia Villegas de Jorge and Carmen Prieto Villegas are key contacts for interested parties. Villegas de Jorge has broad expertise encompassing patents and trademarks, as well as unfair competition, franchising and licensing, among other areas; Prieto Villegas focuses squarely on soft intellectual property. Both have extensive contentious experience to call upon.
MINIÑO
MINIÑO is the sole occupant of the gold tier in this year’s WTR 1000; its relative position has been strengthened as a result of the recent changes on the market and it receives both the most and the most enthusiastic feedback of any Dominican Republic firm. “It resolves whatever issue you have in the Caribbean quickly,” avers one foreign associate; “it has a commercial understanding and provides tailored services,” reports another. Brand owners are equally enthusiastic: “It is extremely responsive, provides clear and concise advice, understands your needs and budget, and identifies creative solutions for conflicts.” The group has lots of great work going on to shout about: it has recently been advising DIRECTV, Twitter and Sanofi on regional trademark strategy, taking care of infringement concerns for Alpargatas with respect to its Havaianas sandals and masterminding significant counterfeiting matters for Michael Kors. In department head Orietta Blanco and popular international partner Urko Ochoa, it has some “very dynamic lawyers”. Blanco is “great for the region – if you have a problem anywhere, she can solve it”. Ochoa is a “brilliant attorney with an incredible eye for detail”; he is also “very cost conscious and thorough”. They have surrounded themselves with a great staff, including associates – such as Caribbean trademark coordinator Arlene Herrera – who thrive on the responsibility they are given.
Troncoso Leroux
Troncoso Leroux arrived on the market in Summer 2015, established by former members of the IP team at Troncoso y Caceres. Most notable among these is Maria del Pilar Troncoso, an “outstanding lawyer who is very well established and experienced”. The firm earns commendations for both its prosecution and enforcement practices.
Troncoso y Caceres
With a history stretching back over 100 years, Troncoso y Caceres is woven into the fabric of the Dominican legal scene. More specifically, it has the oldest IP practice in the country, with a sterling track record managing portfolios and litigations throughout the region. Though hit by departures in 2015, it was rejoined by María Felix Troncoso, a seasoned, internationally minded expert with a real passion for brands. The IP department is now blessed with strong leadership.
Valdez Albizu
The prosecution and opposition capabilities of commercial outfit Valdez Albizu get a great write-up from clients: “The firm is responsive and provides timely and complete updates on progress. It also comes up with creative ideas for dealing with office actions and resolving disputes.” Its glittering roster includes several prominent pharmaceutical companies, who love its personalised service and ability to get things over the line within very tight timeframes. The expansion of its regional practice is an ongoing story – the firm has a growing network and does a great job striking the right balance between cost and service when coordinating work outside of the Dominican Republic. Alejandra Valdez helms the IP department and is the first port of call for clients.

Individuals

Jaime R Angeles - Angeles Pons
Maria del Pilar Troncoso - Troncoso Leroux
María J Felix Troncoso - Troncoso Y Caceres
Mary Fernández Rodriguez - Headrick, Rizik, Alvarez & Fernández
Zaida E Lugo Lovatón - Lugo IP
Urko Ochoa - MINIÑO
Orietta Blanco - MINIÑO
Tania Castillo - Castillo y Castillo
Sharin Pablo de Roca - JJ Roca & Asociados
Wallis Pons Cardi - Angeles Pons
Alejandra Valdez - Valdez Albizu
Lilly Acevedo Gómez - Headrick, Rizik, Alvarez & Fernández
Arlene Herrera - MINIÑO
Katherine Mena Franco - Mena & Sanchez-Guadarrama SC
Ana Isabel Messina - Biaggi & Messina
Carmen Prieto Villegas - Jorge Mera & Villegas
Patricia Villegas de Jorge - Jorge Mera & Villegas
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Issue 68