Caribbean

The Caribbean IP scene is continually evolving and modernising. Several jurisdictions are in the process of updating their trademark statutes – including the Cayman Islands, which will soon allow for local filings irrespective of pre-existing UK or EU trademark registrations. Another sign of greater maturity in the market is the recent formalisation and heightened activity of the Caribbean IP Association, which is doing much to promote awareness of intellectual property in the region and enhance the knowledge base of trademark registry staff. The Madrid Protocol conversation is still ongoing; Jamaica and Trinidad and Tobago are both close to signing up, which may pave the way for further accessions across the Caribbean.

Firms

H
Cabinet de Lespinasse
Cabinet Salès
Caribbean IP
Carrington & Sealy
Clarke Gittens Farmer
Cox Hallett Wilkinson Limited
DunnCox
Foga Daley
Ideas Trademarks & Patents
JD Sellier + Co
Keithley Lake & Associates
Livingston Alexander & Levy
McConnell Valdés
Mosko & Associates
Myers Fletcher & Gordon
Nunes, Scholefield, DeLeon & Co
Cabinet de Lespinasse
Cabinet de Lespinasse knows how best to overcome the challenges presented by a less than stellar trademark office to optimise protection for clients’ intellectual property. Brand owners and peers alike take comfort from its long tradition, sterling track record and responsiveness, and flock to its doors for search, filing, prosecution and renewal services, as well as its contentious nous. Director Christian de Lespinasse has pushed the IP agenda in Haiti for over three decades.
Cabinet Salès
Intellectual property is a central pillar at sophisticated commercial Haitian outfit Cabinet Salès. Its robust, full-service IP department houses an extremely experienced trademark section with a remarkable 100 year-plus operational history. Proficiency in opposition and infringement scenarios complements its effortless handling of registrations. Senior and managing partner Jean-Frédéric Salès specialises in commercial, labour and IP law; the regular author is a key reference on the Haitian legal landscape.
Caribbean IP
Caribbean IP doesn’t just churn through filings; it provides strategic advice underpinned by deep regional expertise. Run by Katherine Van Deusen Hely in the style of a US boutique, it has a rapidly expanding pan-Caribbean prosecution practice; at the same time, it is fielding contentious questions at a quickening rate and has beefed up its enforcement capabilities in response. A staunch believer in the personal touch, Hely builds close relationships with brand owners, who appreciate the added value she injects into her flat-fee services. Her regional know-how is second to none and she has lately been advising extensively on Cuba-related matters.
Carrington & Sealy
This long-established Barbadian firm is a popular destination for foreign associates referring pan-Caribbean instructions. One source observes: “We are very selective of the agents we use, as they are an extension of us in another country. Carrington & Sealy offers competitive prices; answers quickly and in an effective, zealous manner; and ultimately upholds the same standards of quality as we do.” Fiona Hinds has captained the IP section for 15 years and practised in the discipline for over 20. A member of the government’s IP Commission, she knows the law inside out and is often called upon to assist with legislative amendments.
Clarke Gittens Farmer
Clarke Gittens Farmer is a leading business law firm in Barbados which, alongside corporate and litigation, runs a substantial trademark and patent registration practice. As a member of Lex Mundi, it has superb connections and a global outlook, which resonates with brand owners seeking a reliable regional service. Sage counsellor Rosalind Smith Millar is steeped in intellectual property; she has a master’s in the subject, which she now teaches, and participates actively in various local and international associations and committees.
Cox Hallett Wilkinson Limited
Cox Hallett Wilkinson is one of the largest Bermudan law firms – and the country’s only representative in the WTR 1000. It handles every aspect of trademark registration with alacrity under the direction of Jennifer Hedges, a seasoned non-contentious specialist.
DunnCox
The skill with which Jamaican player DunnCox handles complex commercial matters translates seamlessly into the IP sphere, resulting in brand-related advice that is framed within the context of, and geared towards the achievement of, the client’s business goals. It pulls off a similar trick by parlaying the expertise of its redoubtable litigation division, too. Joanne Wood Rattray has been a partner here for over 20 years, taking the lead on IP matters throughout. Her practice is a broad church, encompassing all of the usual availability search and registration work, as well as oppositions and infringements, domain names and franchising and licensing. Operating out of Costa Rica, Eproint provides a more internationally focused IP protection and enforcement service than other Caribbean firms; it covers the region comprehensively, while taking care of business in Central and Latin America, too. Its systems are finely honed for this purpose, prompting sources to comment not only on its “excellent reach”, but also on its “high degree of responsiveness and good prices”. Gabriela Bodden and Aarón Montero astutely guide international trademark portfolio development and provide on-point advice on monetisation strategies so that clients can make the most out of their distinctive signs. Puerto Rican outfit Ferraiuoli has a sizeable trademark team; its turnaround times are some of the quickest around and there is always someone on hand for the client with the relevant file history knowledge. Its legendary cost effectiveness, matched with quality, also sets it apart, and is a key reason why it has been attracting pan-Caribbean mandates away from other respected names in the region. Managing partner and IP chair Eugenio Torres-Oyola works tirelessly both in the interests of patrons and as an ambassador for intellectual property and the regional scene surrounding it. His resolutely commercial and pragmatic approach is widely appreciated. IP group vice chair Maristella Collazo-Soto joins Torres-Oyola in the guide for the first time this year. She exercises a keen eye for quality in all aspects of IP protection and enforcement, and understands how best to secure brand protection in Puerto Rico and the United States.
Foga Daley
Foga Daley is the premier choice in Jamaica for foreign associates seeking regional trademark solutions. It started out life as an IP boutique at the turn of the century, and although it has since expanded into additional areas of practice, it has never forgotten its roots and continues to furnish patrons with insightful guidance on all aspects of trademark protection and commercialisation. Meanwhile, a specialised IP litigation unit has proven its mettle time and again in anti-counterfeiting and civil infringement suits. “Dianne Daley is extremely sharp and has thorough knowledge of all areas of trademark practice. She is very involved in the local IP bar and has a lot of experience, as well as being very responsive.” The founding partner leads the IP group. Alongside its legal and corporate services units, Cayman player HSM operates a dedicated IP company, staffed by a talented team of lawyers and “highly efficient paralegals”. Widely hailed for its client-centric approach, the set provides commercially infused trademark advice that delivers the protection needed, locally and across the Caribbean, at a sensitive price point. Key contact Sophie Davies joined the firm in 2010 from King & Wood Mallesons’ London office and has since assumed management duties within HSM’s IP group.
Ideas Trademarks & Patents
Costa Rican outfit Ideas Trademarks and Patents makes its debut in the WTR 1000 this year. It is a persuasive option for companies seeking to centralise the management of their trademark portfolios in the Caribbean and in Central America: it is home to one of the largest groups in the region, with nearly 20 professionals, all of whom are dedicated to the protection and defence of IP rights. Founder Maricruz Villanea Villegas is an outstanding portfolio caretaker and a sage adviser with extensive regional insight. A doyenne of IP law locally, she is also a founding member of Costa Rica’s IP industry association.
JD Sellier + Co
“The pre-eminent name for intellectual property in Trinidad & Tobago”, JD Sellier comes highly recommended as a “reliable, prompt and quality” outfit. The full-service commercial firm has deep-seated IP expertise and, in Brien de Gannes, one of the most clued-up trademark litigators anywhere in the Caribbean. De Gannes continues to add to his storied CV, which includes plenty of IP agenda-building activity, including treaty negotiation and government advice. Trademark registration is the focus of Ariane Ramnath, although she also adds value on infringement and passing-off briefs. Ramnath has cultivated a solid network of contacts across Latin America, which is a boon to those seeking joined-up protection across borders.
Keithley Lake & Associates
Although a general practice firm, Keithly Lake has the necessary know-how to provide brand owners with the high degree of IP specialisation they need. That said, it never looks at trademark matters in isolation, delivering commercially contextualised advice to those developing their brands in Anguilla’s thriving tourism and financial services markets. “Incredibly responsive and always on top of the work”, its diligent crew is “brilliant at keeping you informed”. The “quick and comprehensive” Kenneth Porter is warmly endorsed; although he primarily acts for large international companies on a regional basis, he has also done much to raise awareness of intellectual property in the local market.
Livingston Alexander & Levy
Venerable outfit Lival – Jamaica’s oldest law firm – has a robust IP team that registers trademarks, designs and patents tactically, enforces them vigorously and commercialises them lucratively. Anne-Marie White-Feanny has steered the IP ship with a sure hand since she joined the firm in 1982. Keeping close to her clients, she understands their products and services intimately and can thus provide penetrating practical solutions. Kathryn Pearson transitioned from the litigation department to intellectual property a decade ago, but has never lost her flair for dispute resolution. She understands all aspects of the prosecution process, but is particularly valuable to have on side in opposition and cancellation actions, civil infringement cases and anti-counterfeiting investigations.
McConnell Valdés
San Juan, Puerto Rico, is the base of operations for McConnell Valdés, an award-winning full-service set-up and Lex Mundi member which supports clients locally, throughout Latin America and in the United States and Europe. Uniting members of the firm’s corporate and litigation practices, the IP group shines on transactional and contentious matters in particular, though it also does a superb job building ironclad portfolios. Dora Peñagarícano knows more about the local IP environment than most; she helped to draft the Trademark Act and has acted as president of the national bar association’s IP committee. Active within the International Trademark Association as a member of various committees, she also brings an international perspective to the table. Experienced advocate Roberto Quinones-Rivera is the contact point for those faced with contentious concerns.
Mosko & Associates
IP expertise in the Bahamas is hard to come by, until you arrive at the doors of Mosko & Associates, which boasts this in abundance. The technically savvy firm maintains the only registered trademark database in the jurisdiction, and is a go-to for companies seeking to create and register strong brands while avoiding disputes. Should trouble flare, however, the team here is well equipped to take the necessary action. Overseeing the group is Caribbean trademark and business maven Katina Mosko.
Myers Fletcher & Gordon
Kingston native Myers Fletcher & Gordon – the sole Jamaican firm within Lex Mundi’s global network – “addresses problems with creative measures” across all legal disciplines. A nuanced understanding of the commercial importance of IP rights underpins everything it does in the trademark arena, from registration to licensing and enforcement. With six attorneys on staff within the IP section, clients are never left wanting for know-how or waiting for responses. Managing partner and IP devotee Peter Goldson is as erudite as they come and a favourite of blue-chip patrons such as Diageo, Nestlé and Johnson & Johnson.
Nunes, Scholefield, DeLeon & Co
The IP and litigation departments of Jamaican player Nunes, Scholefield, DeLeon & Co dovetail neatly to dispense holistic guidance to patrons on IP policies and protection. Grace Lindo heads a group that earns warm plaudits from foreign correspondents for its “quality services and speedy communication”. The entrepreneurially minded Lindo works wonders when it comes to the commercialisation of intellectual property and technology, and is always up to date on internet-related trademark and domain name matters. She can effortlessly switch gears from representing large multinationals to championing the rights and interests of start-ups.

Individuals

Gabriela Bodden - Eproint
Maristella Collazo-Soto - Ferraiuoli LLC
Dianne Daley - Foga Daley
Sophie Davies - HSM IP
Brien A de Gannes - JD Sellier + Co
Christian de Lespinasse - Cabinet de Lespinasse
Peter S Goldson - Myers Fletcher & Gordon
Jennifer Hedges - Cox Hallett Wilkinson Limited
Fiona J Hinds - Carrington & Sealy
Grace A Lindo - Nunes, Scholefield, DeLeon & Co
Aarón Montero - Eproint
Katina Mosko - Mosko & Associates
Kathryn JE Pearson - Livingston Alexander & Levy
Dora M Peñagarícano - McConnell Valdés
Kenneth Porter - Keithley Lake & Associates
Roberto C Quinones Rivera - McConnell Valdés
Ariane S Ramnath - JD Sellier + Co
Jean-Frédéric Salès - Cabinet Salès
Rosalind K Smith Millar - Clarke Gittens Farmer
Eugenio J Torres-Oyola - Ferraiuoli LLC
Katherine Van Deusen Hely - Caribbean IP
Maricruz Villanea Villegas - Ideas Trademarks & Patents
Anne-Marie White-Feanny - Livingston Alexander & Levy
Joanne E Wood Rattray - DunnCox
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Issue 68