Colombia

Colombia is an attractive point of entry into Latin America for international companies, especially given the political and economic troubles that have plagued other jurisdictions in the region – Brazil, for example – traditionally used as launch points into South America. In line with this, a number of international firms are springing up; Uría Menéndez recently tied up with Prietocarrizosa (and other entities), while another Iberian player, PONS, has been building momentum locally. Continuing to garner favourable feedback from market stakeholders, the Superintendence of Industry and Commerce is operating efficiently and has a reputation as one of the best registries in Latin America. Now comfortable with its judicial powers, it is also proving consistent in its approach to infringement decision making.

Firms

1
Baker McKenzie
Brigard & Castro
Cavelier Abogados
Dentons Cárdenas & Cárdenas
Lloreda Camacho & Co
2
Castellanos & Co
OlarteMoure
Philippi Prietocarrizosa Ferroro DU & Uria
Posse Herrera Ruiz
Triana Uribe & Michelsen
3
Cuesta & Asociados Ltda
Wolf Méndez Abogados Asociados
Baker McKenzie
To many, Baker McKenzie is the best in the business when it comes to IP protection in Colombia. It has a well-endowed team of experienced senior experts who provide pitch-perfect legal and strategic business advice around any issue that concerns brands. An inspiring leader of the Bogota IP group, Alvaro Correa Ordoñez is one of the top names in trademarks across all of Latin America. He is a rock for many blue chip companies and, as testament to this, is often put in charge of not just domestic but pan-continental portfolio management duties. Juan Pablo Concha Delgado is another perspicacious international thinker; he applies global best practices in the course of his enforcement activities, which continue apace. Fiercely results oriented, this first responder acts quickly to cut counterfeiters off at source, giving clients peace of mind. As well as providing illuminating training sessions, he maintains close links with Customs, with whom he wants to get the job done. Acting as a consultant to clients, and a sounding board for his colleagues, Ricardo Metke Méndez is one of the wisest IP minds in the region. The esteemed university professor has taught thousands of students over the course of a distinguished academic career.
Brigard & Castro
One in-house counsel – who works for one of the world’s most famous and valuable brands – calls Brigard & Castro “an elite law firm in Latin America” while drawing attention to its “fast response times and excellent, high-quality work”. Regional foreign associates concur with this assessment, describing the firm as a “top player” which “offers an outstanding service” and is “very easy to work with”. The team acts for a stunning roster of leading international brands for whom it covers all the bases. Captain of the ship and brilliant tactician Juan Pablo Cadena, has recently handled oppositions for Google, Nike Innovate, Kimberly-Clark and Inditex, meeting with success at every turn. Trademark prosecution group chief Martín Torres is another eminent name that any brand owner can have complete trust in. Both professionals have featured in the gold tier in every WTR 1000 to date, which highlights their consistently outstanding thought and practice leadership.
Castellanos & Co
This dynamic two-partner, three-lawyer boutique gives personal attention to every client and every matter to a degree that is unique on the Colombian IP legal market. Deep industry knowledge across many sectors – life sciences, technology, automotive and fashion, to name a few – helps the team align its advice with the commercial interests of clients, including a notable concentration of brands with European bases. Although prosecution is its core business, the set is by no means just a filing shop; it renders highly sophisticated legal opinions that help rights holders make smart business decisions about how to invest their IP dollars for maximum return. Administrative litigation work is also dispatched with aplomb. Managing the firm with efficiency is Ximena Castellanos, who also heads the trademark department. She is fluent in English, French and Spanish and communicates crystal clear advice to a diverse client base. Her partner, Margarita Castellanos takes charge of the patent and legal units, but has abundant knowledge of distinctive signs too. When the two join together, great things tend to happen; carrying the day as a result of their tenacity and clever argumentation, the pair recently handled an important and precedent-setting case concerning the analysis of evocative elements within a notorious trademark, acting for Cereales y Pastas SA de CV in a convoluted case against Nestlé.
Cavelier Abogados
Regional foreign correspondents are quick to recommend prestigious business law firm Cavelier Abogados. Intellectual property is a central pillar of its well-rounded commercial practice and with 12 patent experts on staff, it shines with particular lustre in the patent and technology field. Taking inspiration from its loyal following of innovative clients, the firm deploys sophisticated IT tools to enable it to service clients efficiently; this is key on the trademark side, given the large number of marks – over 50,000 – for which it is responsible. More than just a nimble filer, Cavelier can also extinguish the flames of any trademark conflagration and is a robust ally to have on side in the fight against fakes. International department leader Jorge Chávarro has a unique skill set; his expertise encompasses regulatory law, trademarks (particularly geographical indications), patents, plant varieties and commercial law. Currently on her second stint as head of the litigation division, Edna Sarmiento is the person to call when storm clouds gather. Another must-have name for the contact book is former head of the legal office and industrial property division of the Superintendence of Industry and Commerce Luz Clemencia de Páez, who supervises the trademark practice with an eagle eye for quality.
Cuesta & Asociados Ltda
Bogota and Medellin set-up Cuesta & Asociados is notable for its commercial approach to intellectual property, which it combines with a tailored service – few combine these strengths so effectively. Brand owners benefit from the team’s broad horizons and can use the firm as a hub for trademark protection across Latin America and the Caribbean, secure in the knowledge that a consistent approach will be taken. The man in charge is the cosmopolitan Juan Carlos Cuesta Quintero, a Spanish, English, Portuguese, French and Italian speaker with an intricate knowledge of IP regimes across the region.
Dentons Cárdenas & Cárdenas
Garnering by far the most positive client feedback of any Colombian outfit during research for the WTR 1000 2018, Dentons Cárdenas & Cárdenas is firing on all cylinders when it comes to its brands practice. “When you need to hire skilled, committed, experienced, respected professionals in the trademark area, you come here.” “The team handles any file efficiently, manages risk with exceptional reliability, produces accurate and high-quality work, takes fast and appropriate action, and is polite and kind in its manner of service.” Co-leading this “wonderful team” are Luz Helena Adarve and Juanita Acosta. With three decades of experience, Adarve is well prepared for anything that is thrown at her; whipping a trademark portfolio into shape, working the courtroom in complex litigation and drafting agreements are all in a day’s work for this doyenne of intellectual property. Acosta has two decades in the game and undertakes a similar mix of non-contentious and contentious work. Adding value at every opportunity, she provides insightful advice on every privacy, consumer protection and advertising concern that might cloud the mind of a brand owner.
Lloreda Camacho & Co
Lloreda Camacho “fills the trusted adviser role to perfection”. According to one source, “We feel extremely well represented when the firm is managing our cases”; another comments, “it continues to be at the top of our list in Colombia, thanks to its superb customer care”. Supporting a diverse roster of clients around the clock, the perfectly poised team manages prosecution affairs efficiently and takes an aggressive (where necessary), creative and strategic approach to infringements. It is an excellent option as a one-stop shop not only in Colombia but increasingly across Latin America and even further afield into Europe and Asia. A master of the art of securing well-known status for famous marks, Tatiana Carrillo always puts her best foot forwards as head of the trademark and copyright practice. She regularly takes to the podium as a speaker on IP topics for domestic and international audiences and generously shares her knowledge with the wider IP community. Responsible for the overall IP practice, Alicia Lloreda provides gilt-edged strategic guidance which is directed right to the heart of her clients’ brands and businesses. A global thinker, she is highly active within the International Trademark Association and lately served as co-chair of the Presidential Taskforce which revises the organisation’s committee structure.
OlarteMoure
With a well-established reputation for excellence in anything patent-related, OlarteMoure is a force to be reckoned with when it comes to trademarks. Not one to stand still, it recently brought on board a new trademark practice director, Bibiana Agudelo, who comes with extensive in-house experience from PepsiCo; having also done stints in various well-known US law firms, she is attuned to the needs of North American brand owners and foreign associates. Showcasing a faculty for getting to grips with huge portfolios, as well as an ability to identify and execute joined-up non-contentious and contentious strategies, the team continues to manage Nutresa Group’s worldwide portfolio and take charge of all of its IP litigation affairs. Anti-counterfeiting is very much a strong suit, too; the group has lately been instructed by Millionarios FC to tackle fakers; building on its success enforcing rights in Barranquilla and Medellin, the firm has also extended its activities for a global software company into Bucaramanga. As one of the market’s IP heavyweights, Juan Moure is a fantastic leader of the group; an IP and competition law professor and free trade negotiator with a wealth of public sector experience, he has a broad perspective on IP law, which is reflected in the holistic nature of his advice. Another professional to keep front of mind is Felipe Acosta, a litigator who deftly resolves disputes, as opposed to just fighting them. These two are “really expanding the firm to become more of a regional player, which is extremely helpful in overcoming problems”.
Philippi Prietocarrizosa Ferroro DU & Uria
The name Philippi Prietocarrizosa Ferroro DU & Uria may not be especially well known yet; it is the result of a merger between Chilean outfit Philippi, Yrarrázaval, Pulido & Brunner, Colombian player Prietocarrizosa, Peruvian firms Ferrero and Delmar Ugarte and, last but not least, Iberian powerhouse Uría Menéndez. The first Ibero-American set-up, it is a unique proposition in the Colombian market and a great option for brand owners seeking protection across the hispanophone and lusophone worlds. Deeming it a “reliable and responsive outfit with a wide-ranging Latin American and international IP practice”, commentators certainly seem to have bought into the concept. As a result of his expansive trademark experience, Mauricio Patiño Bonnet is well placed to act as a strategic brand protection and development adviser. Best known for her razor-sharp portfolio management skills, Zoraida Fonseca delivers exceptional results on every file.

Four years since it launched in Colombia, Spanish player PONS makes its debut in the Latin America section of the WTR 1000 this year. Now operating out of two domestic offices and having recently opened up shop in Medellin, the firm is ready whatever the weather – its commitment to excellent and personalised customer service is palpable. Prosecution forms the backbone of the practice, and the group’s pan-Latin American filing efficiency has international brand owners lining up around the block. Of counsel Luz Helena Villamil possesses over three decades of experience, which has proved to be a boon to her colleagues and clients since she joined the side in 2016.

Posse Herrera Ruiz
An excellent first port of call not just in Colombia, but all of Latin America, independent outfit Posse Herrera Ruiz has seen its base of international clients diversify and broaden in recent years, with its ‘one-stop service’ spreading the message of its regional proficiency throughout the marketplace. Its cross-border expertise is equally attractive to domestic clients, such as Solla, whose portfolio it has been auditing across 13 jurisdictions. The group’s performance on the trademark and unfair competition litigation front has been nothing short of stellar this past year; while they may not appear in the courtroom every day, the direct, no-nonsense approach of its practitioners to infringements enables it to net quick wins and favourable settlements – this is highly appreciated, as litigating in Colombia can be particularly expensive. Positive anti-counterfeiting results have also been forthcoming; Lincoln Global is one client to have benefited from the set’s cost-effective strategies. Motivational leader Helena Camargo leverages the full weight of her 35 years’ experience in her all-encompassing consultancy practice. Transactional maven Ernesto Cavelier – the president of the Andean chapter of the Licensing Executives Society – is also on hand for those looking to cut deals and see a return on their IP investment.
Triana Uribe & Michelsen
Taking full advantage of its rigorous knowledge of black-letter trademark law as well as meaningful insight into international practice area trends and developments, Triana Uribe & Michelsen can analyse trademark issues meticulously in order to give clients accurate risk assessments. This is something that in-house IP counsel love, as they can present the advice they have received to the C-suite with total confidence. The 2016-2017 period has been another busy one for Fernando Triana and company. Triana’s negotiation skills were on show when he had an infringement charge levelled against his client Caracol Televisión dropped; he clearly has the magic touch when it comes to conflict resolution. He also got Gabrica SAS to down tools in a dispute with his client, Schell & Kampeter.
Wolf Méndez Abogados Asociados
The leadership of Mónica Wolf de Camhi puts Wolf Méndez on the IP map. “She has excellent English language skills and a real passion for protecting her clients’ rights. She has built an excellent team, which is great to work with on trademarks.” Wolf has a strong reputation in the United States, as well as contacts throughout Latin America who are resolutely loyal to her cause.

Individuals

Luz Helena Adarve - Dentons Cárdenas & Cárdenas
Juan Pablo Cadena - Brigard & Castro
Ernesto Cavelier - Posse Herrera Ruiz
Jorge Chávarro - Cavelier Abogados
Juan Pablo Concha Delgado - Baker McKenzie
Alvaro Correa Ordoñez - Baker McKenzie
Alicia Lloreda - Lloreda Camacho & Co
Ricardo Metke Méndez - Baker McKenzie
Martín Torres Cardozo - Brigard & Castro
Fernando Triana - Triana Uribe & Michelsen
J Felipe Acosta - OlarteMoure
Juanita Acosta - Dentons Cárdenas & Cárdenas
Helena Camargo - Posse Herrera Ruiz
Tatiana Carrillo - Lloreda Camacho & Co
Margarita Castellanos - Castellanos & Co
Ximena Castellanos - Castellanos & Co
Juan Carlos Cuesta Quintero - Cuesta & Asociados Ltda
Luz Clemencia de Páez - Cavelier Abogados
Zoraida Fonseca - Philippi Prietocarrizosa Ferroro DU & Uria
Juan G Moure - OlarteMoure
Mauricio Patiño Bonnet - Philippi Prietocarrizosa Ferroro DU & Uria
Ian Raisbeck - Raisbeck & Castro
Edna Sarmiento - Cavelier Abogados
Luz Helena Villamil - PONS IP
Mónica Wolf de Camhi - Wolf Méndez Abogados Asociados
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Issue 74