The Ecuadorian economy has suffered substantially as a result of declining oil prices and heightened political tension following the country’s general election – in which allegations of fraud were levelled against President Lenín Moreno. For local IP professionals, the Ecuadorian Institute of Intellectual Property continues to grapple with systemic issues surrounding online trademark filing. However, on a more positive note for rights holders, it has also slashed patent filing fees.
The sheer diversity of brand owners who call on Bermeo & Bermeo – and the fact that many of these are international household names – is testament to the firm’s speed, cost effectiveness and expertise. A sophisticated yet user-friendly docketing system enables the ensemble to perform each task efficiently, yet the group never fails to see the bigger picture and provide advice that is commercially meaningful in the long run. Rodrigo Bermeo Rosales and Rodrigo Bermeo-Andrade are the pillars of the practice. With the benefit of over three decades of experience, Bermeo Rosales handles multifaceted IP disputes with finesse. Bermeo-Andrade concentrates on prosecution and is a prudent counsellor with international experience, having previously worked at a well-known US law firm in Washington DC.
“Prestigious commercial firm” Bustamante & Bustamante runs “one of the longest established IP practices in Ecuador” and is “a leader when it comes to trademark law”. The Bustamante IP department was created when the side was established in 1956; as a result its practitioners possess unmatched knowledge of black-letter law and how it has evolved over the decades. A laser focus on commercial objectives lends a pragmatic edge to the advice the group dispenses, while an unerring dedication to quality means that even the most exacting international brand owner leaves satisfied. The firm’s competitors enviously note its “extremely strong following in the US market”. Long-serving partner and “truly excellent lawyer” Carmen Robayo de Hidalgo has an all-seeing eye and can advise on any brand-related question with acuity. The abundance of judicial experience on her résumé puts her clients at ease when disputes arise.
There is never a dull moment at dynamic CorralRosales; aside from the cutting-edge work it delivers, it cemented an IP and international practice-bolstering merger in 2017 with Estudio Juridico Gallegos. The side also saw managing partner, Maria Cecilia Romoleroux join the International Trademark Association (INTA) board. A far-sighted adviser, Romoleroux never stops, whether protecting her clients’ rights or improving the framework for the wider IP community. International respondents refer to her as a “simply brilliant” practitioner and “a lovely person”. “She appreciates where brand owners are coming from and what they want, and knows how to make it all happen for them in her jurisdiction.” Eduardo Rios who joins the WTR 1000 rankings this year, has been upholding equal treatment rights for foreign companies by protecting marks belonging to Colombian oil and gas company, Terpel, from the cancellation efforts of one individual. Constantly alert to the threat of fakes, Rios has led enforcement efforts to protect the three-dimensional (3D) trademarks of a famous footwear brand. Fellow WTR 1000 debutant Francisco Gallegos has been showcasing his expertise on non-traditional marks, and recently handled a complex case which revolved around distinctiveness priority in combined two-dimensional and 3D word-plus-design marks. Although quick off the mark on brand-related issues, Gallegos is best known for his mastery of life sciences, technology and IP-driven M&A matters.
Fabara & Compañía is a byword for trust for brand owners and foreign associates and is enthusiastically endorsed for its accessibility, responsiveness, clear communication and tailored service. A full-service firm with an overarching focus on intellectual property, it can allay any trademark concern; even those that are intertwined with general legal quandaries. The ever-popular Maria Rosa Fabara Vera sets a tone of excellence here. Sources call her a “highly intelligent and very proactive lawyer” with finely tuned instincts capable of devising practical and commercial solutions.
The sheer volume of client praise secures Falconi Puig’s place in the WTR 1000 gold tier once again this year. Reflecting on the cohesiveness of its relationship with the firm, one client remarks: “We are extremely satisfied with the service, excellent analytical advice and efficient IP strategies given to us. The firm delivers the results we need in order to keep growing as a business.” Going further, another states: “It is the best law firm I have worked with in Ecuador – and one of the best in Latin America in terms of quality. The team responds quickly and gives accurate answers; the fees are reasonable, too, certainly when you take into account the quality of the service.” The ensemble is renowned for its star-studded domestic client base, although it also has a healthy mix of big name companies on its books. Regardless of size and nationality, all clients capitalise on the firm’s extensive database of pending and registered trademarks – the most comprehensive of its kind in Ecuador – as an invaluable strategic tool. They also rely on the whetted advocacy skills and enforcement nous of the Falconi Puig professionals to extinguish any infringement concerns as soon as they arise. Sasha Mandakovic, the group’s foremost trademark expert, has lately been deftly running an anti-dilution campaign on behalf of 3M to invigorate the protection of its Post-it and Scotch brands. The versatile enforcer has also been directing a large portfolio separation and management task for Hewlett-Packard. “Sasha is particularly good; he is incredibly conscientious and provides the same level of service and attention of any top European or US lawyer.” Cecilia Falconi is also incredibly active in the soft IP world and has chalked up a number of notable victories of late; in one case she acted on behalf of leading faucet maker FV – a sister to German company Franz Viegener – and secured a substantial fine against an entity which had been attempting to import infringing units from China. It is also becoming more apparent that anti-counterfeiting and border measures are becoming an expanding area of activity for the firm. Overseeing this and other developments in his role as managing partner is Carlos Alberto Arroyo del Rio. His practice focuses on IP transactional work and litigation – both domains in which he can flex his honed negotiation muscles.
Julio C Guerrero B is a pioneer of IP law and practice in Ecuador. Indisputably proficient across all facets of intellectual property, it has a particular faculty for trademarks and brands and a great track record for protecting them not just domestically and regionally, but globally. Always looking for ways to improve its service, the firm has recently been developing a graphic and logo trademark database; with tens of thousands of logos already processed this is a unique resource that is not available from the IEPI. Johana Aguirre Guerrero has been instrumental in the organisation of this project and has done tremendous work to reinvigorate the firm in the past few years. As the outfit’s legal director – and president of the country’s IP association – she has a profound reservoir of trademark litigation and enforcement experience, as well as regulatory expertise to draw from. Joining her in the directory this year is Jorge Luis Carrión Vizcarra who possesses a nuanced understanding of the IEPI’s inner workings, having previously served as the organisation’s oppositions coordinator. He joined the firm roster in 2015 as part of an overall shake up in a bid to move away from the tradition of the firm being managed by a member of the Guerrero family.
Pérez Bustamante y Ponce is a prize-winning commercial law firm hailed as the country’s biggest and best. Its accomplished IP squad is a force to be reckoned with in contentious settings, partly because it cleverly utilises the extra resources of its dispute resolution department. A significant amount of the firm’s success is also down to the talents of world class individuals such as Luis Marin-Tobar. An anti-counterfeiting maven, Marin-Tobar has skilfully orchestrated an assortment of impressive seizures in his time and plays a key role in INTA’s Anti-counterfeiting Committee. It is obvious that he gets a thrill out of shutting down infringers, but this does not distract him from his other duties as a percipient all-round IP counsellor and deal broker. Determination and enthusiasm are the hallmarks of Marin-Tobar’s trade. Credit for the eminent standing of Pérez Bustamante y Ponce in the legal world must also be given to division chief Francisco Pérez-Gangotena. A safe pair of hands for any trademark infraction, Pérez-Gangotena also oversees a substantial portfolio management practice and has an eagle eye for quality. His team “fully lives up to expectations in terms of response times and identifies and executes strategies that are well adapted to business realities”. Effusive client responses make mention of an excellent bench of associates here; Rafael González and Hugo López-Jijón are worthy of particular mention for the sterling work they have done of late.
With six domestic offices and nearly 80 years of history, the name Quevedo & Ponce is woven into the very fabric of Ecuadorian legal practice. Within the sphere of intellectual property, it is particularly admired for how it conducts litigation and its ability to expeditiously and efficiently put the right case law or legislative provision to use in any circumstance. Alejandro Ponce Martínez leads the line and is widely regarded to be a “marvellous civil litigator and arbitrator”. A “walking encyclopaedia who has been a litigator all his life”, he is “a prestigious attorney in every respect” and “a go-to for anything seriously complex or high stakes”. However, this is no one-man show, as nearly all the partners here play vital roles within the IP practice.
Romero Corral’s compact and cohesive team makes a compelling choice for rights holders seeking a personal, partner-led IP service. Members of the set meet regularly to discuss cases and as a result their advice is always a perfectly blended amalgamation of IP and competition law insight. The work undertaken for ZARA owner Inditex – and the brilliant results achieved – remains a particular claim to fame for the firm and its lead partner Margarita Romero Rosales, who is responsible for the Inditex account. Her creative and canny argumentation has gone a long way to protecting the company in a challenging jurisdiction and helped the ZARA brand to turn a corner in its fight against infringers, particularly now that Romero has secured it well-known status. “An excellent professional who provides a reliably high-quality service”, Romero also continues to deliver superb results on every file for German car marque BMW. She has been steadily growing the outfit’s enforcement practice since it launched anti-counterfeiting operations in 2014, but has not dropped the prosecution ball during this time. Her partner, Alfredo Corral Ponce, is one of Latin America’s top competition law experts and is a distinguished writer and speaker on IP and competition topics. The former IEPI chief has played an absolutely pivotal role in the development of the country’s IP infrastructure as a treaty negotiator.
Other recommended experts
Flavio Arosemena Burbano is the managing partner of top Guayaquil outfit Arosemena Burbano & Asociados. He is an international student – and master – of IP law who delivers solutions with rare efficiency. Paz Horowitz founding partner Bruce Horowitz has an unusual blend of litigation, IP, compliance and anticorruption expertise that sets him out from the crowd; decades of experience and extensive US connections achieve the same effect.
Register for more free content
- Read more World Trademark Review blogs and articles
- Receive the editor's weekly review by email