Ecuador

Low oil prices and a strong US dollar have spelled trouble for Ecuador’s economy, which has entered into a recession that the International Monetary Fund expects will continue throughout 2017. Law firms – particularly those that focus on domestic clients – are thus experiencing reduced demand for their services. Disorganisation and instability in the Ecuadorian Institute of Intellectual Property (IEPI) are also causing problems: the introduction of an online filing system was poorly handled and physical filing was subsequently reinstated. In addition, sudden changes in pending opposition dates meant that lawyers had to deal with a flurry of unexpected deadlines. On a positive note, IP crimes are once more regulated by law after they were removed in 2014 by controversial amendments to the Criminal Code, putting brand owners and their representatives on a stronger footing in the anti-counterfeiting fight.

Firms

1
Bustamante & Bustamante
CorralRosales
Falconi Puig Abogados
2
Fabara & Compañía Abogados
Julio C Guerrero B
Pérez Bustamante & Ponce Abogados
Romero Corral Abogados
3
Bermeo & Bermeo Law Firm
Paz Horowitz
Quevedo & Ponce
Bermeo & Bermeo Law Firm
Word-of-mouth recommendations are driving a steady stream of instructions to the doors of Bermeo & Bermeo, a boutique which can quickly soothe even the worst Latin American IP headaches. Its lawyers provide a personalised service, utilising sophisticated docketing and file management systems to ensure that brand protection efforts proceed smoothly. Overseeing the practice is senior partner Rodrigo Bermeo Rosales, who manages the trademark affairs of notable names such as Luxottica. He keeps busy on the contentious front and recently represented Lego, putting to bed a dispute between the iconic brick maker and a distributor which had opened a shop mimicking Lego’s trademarks and shop design. Another key contact is ace problem solver Rodrigo Bermeo-Andrade. He has also engaged in some interesting infringement work recently; as an example, he secured a great result for Doctor’s Associates – the owner of the Subway restaurant brand – against the operator of a sandwich vendor named ‘Surfway’.
Bustamante & Bustamante
General commercial outfit Bustamante & Bustamante maintains an outstanding reputation in the IP space. One of the most prolific filers in the country, it has rock-solid contentious credentials too, making it a reliable one-stop shop for any brand owner. Carmen Robayo de Hidalgo has an enviable client base comprised, in particular, of large US brand owners. She is hailed as “one of the market’s trademark leaders”.
CorralRosales
Offering “competitive prices, quick turnaround times and effective, quality advice”, CorralRosales enjoys a high profile on the international stage. Its patent, trademark and litigation departments work in tandem to address clients’ concerns in a truly holistic fashion; additional regulatory capabilites further distinguish it from the pack. A large percentage of the anti-counterfeiting actions taken in Ecuador are handled by the set, which deploys its own in-house investigators to seize the advantage. Maria Cecilia Romoleroux “is very proactive, always replies quickly and her advice is clear and comprehensive, enabling you to make the right decisions”. The wider market has benefited from her work in training officers of the Customs Agency, as well as members of the police, in approaches to combat counterfeiting. Her aggressive litigation and enforcement tactics are much appreciated by clients.
Fabara & Compañía Abogados
“In terms of quality-focused prosecution, Fabara stands out.” Since establishing the firm, Maria Rosa Fabara Vera has dedicated herself to doing things right, not just on getting business through the door, and this philosophy has if anything intensified over the years. The “extremely bright and dedicated” practitioner has many fans, who praise her “commercial, more than theoretical approach to matters”. Her firm covers all legal disciplines, but intellectual property is a central pillar of its offering. In addition to trademark prosecution, it litigates sensibly when this is in the best business interests of clients.
Falconi Puig Abogados
The “extremely well-organised” Falconi Puig is “a key ally” to its patrons. Its “strong team of young lawyers” is “rapid in responding and always available”; “analysis and communications are also very clear”. The firm is well known for its contentious skills, but has recently been honing its anti-counterfeiting capabilities and forging closer links with customs officials and other enforcement agents. Prosecution is another forte: the firm is a top-three filer. Sasha Mandakovic “is highly reliable in both prosecution and litigation, and his business-oriented advice and creative, practical solutions are very valuable. You know you’re in the best hands when you’re with Sasha”. He has lately been busy on an anti-genericide campaign for 3M concerning its Scotch brand, and has been masterminding an important regional trademark suit for Danone against Peruvian multinational Gloria. Department head Carlos Alberto Arroyo del Río is “responsive and proactive when handling conflicts”; “he provides comprehensive advice that keeps his clients’ ultimate goal and budget concerns in mind”. Further bench strength comes in the form of Cecilia Falconi, who is “a joy to work with”. “She thinks outside the box to creatively solve problems and her approach is very in tune with that of US companies and counsel.”
Julio C Guerrero B
The longest-serving boutique on the Ecuadorian market, Julio C Guerrero B has lately been broadening its horizons into additional areas of legal practice that complement its IP proficiency. Most notably, it has been expanding its regulatory know-how – much to the benefit of pharmaceutical players such as Takeda, for which it has been handling various trademark assignment matters. Another recent narrative is its increased investment in an already sophisticated software system, in particular to build in a logo searching function. Legal department director Johana Aguirre captains the litigation and enforcement division and is the main point of contact for prestigious brand owners such as Rolex and Harvard University. She is the current president of the Ecuadorian Association of Intellectual Property and is plugged into the Inter-American Association of Intellectual Property; her advice is underpinned by a nuanced grasp of the main trends and developments both locally and regionally.
Paz Horowitz
While modern and forward-thinking set-up Paz Horowitz provides a cutting-edge, commercially attuned service across multiple legal areas, intellectual property is engrained in its DNA. Founding partner Bruce Horowitz has decades of experience in the discipline and remains a font of wisdom on all manner of trademark topics. Having achieved a number of ‘firsts’ in the region – including securing the first sound mark registration in Latin America – the firm is a name to check out for brand owners that want to push boundaries. Its A-to-Z offering and sterling reputation are further draws.
Pérez Bustamante & Ponce Abogados
Full-service powerhouse Pérez Bustamante & Ponce is flourishing in the IP arena, with a growing domestic client base to complement its outstanding international following. A deep talent pool gives it the necessary firepower to dispatch complex briefs that others might struggle with. As an example, it recently successfully filed a job lot of 1,497 assignment applications for Jafer Enterprises, setting a national record for the highest single payment of official fees. The group’s commitment to quality and client service chimes with international heavyweights such as Ford, whose portfolio it has managed for over a decade. On the contentious front, it went out to bat for Freezetone Products in a global trademark dispute which involved knotty jurisdictional issues. Leading the charge is Francisco Pérez-Gangotena: during his tenure he has tightened the firm’s administrative and reporting structures and promoted a hands-on approach with clients, which is paying dividends in terms of the industry understanding its lawyers have developed. Spirited senior associate and tireless worker Luis Marín-Tobar provides invaluable support – and often leadership – on many of the team’s files. The internationally educated enforcement and litigation pro knows what it takes to bring the fight to the counterfeiters and win.
Quevedo & Ponce
Venerable commercial firm Quevedo & Ponce retains its place in the WTR 1000 thanks to its stellar general and IP litigation capabilities. Virtually no one is better at hammering out early settlements in disputes – or securing the right results when they go all the way – than Alejandro Ponce Martinez. Extensive Supreme Court experience and worldly wisdom make his the number to call for challenging trademark cases.
Romero Corral Abogados
Over the past year, IP and competition boutique Romero Corral has done a superb job creatively advising foreign clients such as BMW on how to adapt to the vicissitudes of dealing with the IEPI. At the same time, it has furnished domestic clients seeking to expand into new markets with valuable strategic guidance. The team handles each matter personally and with passion, and Margarita Romero sets the tone in this regard. She continues to extend her winning run for Industria De Diseño Textil Inditex, providing up-to-the-hilt protection for its ZARA trademark in Ecuador. Competition law brilliance is supplied by Alfredo Corral Ponce, a seasoned lawyer who also has a finely tuned knowledge of intellectual property. His negotiation skills are some of the best in the business – he honed these in various free trade agreement negotiations – and he is intimately familiar with the ins and outs of the national IP system, having previously presided over the IEPI.

Individuals

Carlos Alberto Arroyo del Río - Falconi Puig Abogados
Alfredo Corral Ponce - Romero Corral Abogados
Maria Rosa Fabara Vera - Fabara & Compañía Abogados
Bruce Horowitz - Paz Horowitz
Sasha Mandakovic - Falconi Puig Abogados
Carmen Robayo de Hidalgo - Bustamante & Bustamante
Margarita Romero Rosales - Romero Corral Abogados
María Cecilia Romoleroux - CorralRosales
Johana Aguirre Guerrero - Julio C Guerrero B
Flavio Arosemena Burbano - Arosemena Burbano & Asociados (AB&A)
Rodrigo Bermeo Rosales - Bermeo & Bermeo Law Firm
Rodrigo Bermeo-Andrade - Bermeo & Bermeo Law Firm
Cecilia Falconi - Falconi Puig Abogados
Luis Marín-Tobar - Pérez Bustamante & Ponce Abogados
Francisco Pérez-Gangotena - Pérez Bustamante & Ponce Abogados
Alejandro Ponce Martínez - Quevedo & Ponce
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Issue 67