Argentina

To say that 2019 has been a hectic year for Argentine trademark practitioners would be an understatement. After almost four decades of unaltered trademark legislation, the government has introduced marked changes to the opposition system and non-use proceedings in an effort to shorten and simplify trademark processes. Key changes brought about by Decrees 27/2018 and 242/19 include: a shift in the opposition procedure’s burden from the applicant to the opponent; a transfer of first-instance oppositions from the administrative courts to the National Institute of Industrial Property (INPI); the introduction of mid-term declarations of use, requiring trademark owners to file a sworn statement of use within the fifth and sixth year of registration; and the introduction of partial non-use cancellations, whereby a mark remains valid only if use is proven in connection with the goods and services it protects or related goods and services. Trademark practitioners have mixed feelings about the current state of affairs due to these changes and the country’s economic volatility; while the new proceedings may theoretically speed up prosecution and opposition processes for brand owners, many worry that the INPI may lack the resources to deal with the increased workload.

Firms

  • Berton Moreno + Ojam
  • G Breuer
  • Marval O’Farrell & Mairal
  • Baker McKenzie SC 
  • FRTB – Ferrer Reyes, Tellechea & Bouché
  • Hausheer Belgrano & Fernández
  • Mitrani, Caballero & Ruiz Moreno
  • Noetinger & Armando
  • Palacio & Asociados
  • Apellaniz & O'Farrell
  • Estudio Chaloupka
  • Litvin Marzorati Legales
  • Moeller IP Advisors
  • PAGBAM | IP
  • Richelet & Richelet

Apellaniz & O'Farrell

“A truly reliable IP firm,” Apellaniz & O’Farrell continues to please patrons year after year thanks to its “erudite team of young, energetic and proactive attorneys” and their “brilliance, creativity and practicality in handling all types of trademark and anti-counterfeiting matters”. Lately, these qualities have caught the eye of several clients in the technology industry – an area of work the group is seeing a sharp rise in. One of the brains behind this success, founding partner Nicolas O’Farrell, is enthusiastically recommended by customers and peers alike. One source enthuses: “Nicolas is a very knowledgeable, hard-working, responsive and reliable professional who knows how to engage with people and convince without being disagreeable. With a calm and contemplative demeanour, he thinks through problems and arrives at excellent strategies and solutions, offering clients the best value for money.”

Baker McKenzie SC 

“Efficient, expeditious and with a great capacity to detect clients’ needs, Baker McKenzie’s Buenos Aires office possesses top expertise and understanding of the commercial context in which trademark registrations, patents and counterfeit problems play a key role.” With full capabilities across the brand protection cycle, this rock-solid team performs immaculately under the “earnest and thoughtful leadership” of Bernard William Malone, a lawyer with a “superb understanding of IP practice in the difficult economic context of Argentina, Bernard always makes himself available to clients and constantly exceeds their expectations”. Second in command, Maria Paula Bassi not only offers excellent, prompt and affordable advice, but is also a popular choice for enforcement matters, currently handling cases for Victoria’s Secret, HSBC and Disney.

Berton Moreno + Ojam

“A new, up-and-coming and fast-growing IP boutique in Argentina”, Berton Moreno + Ojam is taking the market by storm with its 50-strong dream team of IP lawyers and agents. Adding value by enhancing clients’ intangibles and prioritising negotiation over expensive litigation, the group’s deep bench of all-round senior attorneys has attracted an impressive roster, including industry giants like Vodafone, Nike and Netflix. “Reputable, first-tier lawyer” Juan Carlos Ojam has been advising the latter; a renowned professor and practitioner with over 30 years’ experience in the field, he has worked across all IP areas and is often the first choice among top multinational patrons. Mercedes Bullrich “brings a solid IP reputation to the practice”, standing out for her in-depth involvement in patrons’ businesses and commercialisation abilities. “Versatile and effective”, Juan Berton Moreno and sports whizz Alberto Berton Moreno are particularly strong in trademark prosecution but also undertake litigation and enforcement when needed. A well-known technology expert, Marcelo García Sellart is highly recognised for his comprehensive knowledge of the sector, as is IP enthusiast Raquel Irene Flanzbaum, who has mastered the art of trademark counselling and treats every case like a work of art. The backbone of the contentious side, Enrique Gatti is one of Argentina’s most prominent litigators and an eminent member of the legal community, routinely pushing for legislative improvements in the IP sphere.

Estudio Chaloupka

Flawlessly addressing all aspects of intellectual property, petite boutique Estudio Chaloupka has fared extremely well with patrons of all industries, being warmly recommended for its “effective handling of trademark filings and complex litigation”. As the subject of these compliments, Paula Galván and Claudia Serritelli coordinate the team and work in tandem to provide “world-class analysis, communication, strategy and promptness”. As one client put it: “Claudia and Paula are unequalled in Spanish South America. They are both incredibly professional, well-spoken, and quick to respond to inquiries. Their opinions and advice are always clear and complete, and I appreciate their creative thinking and strategising in enforcement matters.” On top of such first-rate service, the duo also show true thought leadership, “keeping clients up-to-date on local developments and helping them navigate the new opposition and cancellation proceedings in Argentina”.

FRTB – Ferrer Reyes, Tellechea & Bouché

An absolute favourite with the pharmaceutical and agrochemical industry, FRTB is an excellent choice for brand owners looking for a “steady, hard-working and friendly team” that makes any IP headache disappear in a heartbeat. Commended for its teamwork and integrated approach to legal practice, the outfit features a group of IP superstars led by seasoned prosecutors Diego Bouché Ocampo and Santiago Ferrer Reyes, whose “cordiality, savoir-faire, proximity to clients and creative thinking” are highly praised by their peers. Co-leading the trademark department with Ocampo, the “practical, straight to the point and commercially savvy” Julia Tellechea loves devising IP protection strategies for unusual and challenging projects, which have been on the rise for the practice lately, especially in the pharmaceutical sector. When disputes arise, Laura de Achával and Laura Beatriz Plavnick have their patrons’ backs. As co-leaders of FRTB’s litigation department, they are “excellent attorneys with a knack for tackling IP cases that touch on several different areas”.

G Breuer

“Certainly in the gold category for intellectual property,” G Breuer is a specialist family firm with a longstanding history of success in the field. Greatly admired for its A-team of lawyers and agents, the outfit is home to some of the most reputable names in Argentine IP law. Above all, luminary Jorge Otamendi is “among the crème de la crème of IP lawyers in the country, having built an impressive legacy as a practitioner, author and lecturer”. Following in his footsteps, Pedro Breuer-Moreno and Alejandro Breuer-Moreno have also become prominent names in the sector – Pedro standing out as a top-class litigator and Alejandro as a committed prosecutor.

Hausheer Belgrano & Fernández

With over a century’s presence in the Argentine market, Hausheer Belgrano & Fernández is a landmark on the local IP scene. Delivering 360-degree IP services creatively and precisely, the team is equally praised by peers and clients, proving particularly popular with German patrons. All-rounder Graciela Claudia Pérez de Inzaurraga leads the way in both IP counselling and enforcement proceedings, and is lauded for her thoroughness and efficiency. Joining her on the contentious front, Gabriela Inés Musante is a shrewd negotiator, who knows how to turn up the heat when trademark disputes ensue. A safe pair of hands in IP prosecution, Carolina Inés Fernández is highly recommended by overseas connections for her hardworking and dedicated nature.

Litvin Marzorati Legales

Delivering efficient, high-quality and transparent services to a mixed clientele of domestic and international patrons, Litvin Marzorati Legales’ attorneys truly put brand owners at the heart of their work, travelling near and far to meet them in person if necessary. Staying true to this client-focused approach, the team carries out great work on the non-contentious front, but also has the litigants and arbitrators to deal with trademark disputes when they develop. Interested parties should contact founding partner Melisa Litvin, “an excellent professional and person whose responsive and shrewd advice always achieves the best results for clients”.

Marval O’Farrell & Mairal

“Marval O’Farrell & Mairal is an institution in Argentine IP practice.” Home to the largest and most technologically sophisticated IP department in the country – and the one with the broadest offering – the full-service giant is equally strong in IP prosecution, enforcement and litigation, featuring five-star line-ups on both sides of the contentious/non-contentious divide. First among equals, proactive litigator Gustavo Patricio Giay is one of the most respected voices in Argentine trademark litigation, taking the helm in litigious, enforcement and anti-counterfeiting proceedings. Pairing up with him on the contentious side, “thorough and precise” Martín Chajchir is the engine of the trademark litigation team, “handling complex proceedings with great creativity”. Together, the duo has dealt with litigation and anti-counterfeiting cases for client adidas AG and secured Argentina’s largest damages award of 2019 as a result. On the non-contentious front, Sergio Ellmann, Juan Lopez Mañan and Iris Quadrio take charge. One of Argentina’s top trademark filers, Ellmann possesses a “perfect understanding of the intellectual property landscape”; Lopez Mañan, in turn, uses his wit and knowledge to rescue international patrons in difficult circumstances, taking good care of their complex transactions and regional portfolios. Last but not least, Quadrio has over three decades’ experience in IP practice, handling trademark and trade dress cases for some of the firm’s most prominent patrons.

Mitrani, Caballero & Ruiz Moreno

Breaking into the WTR 1000 for the first time this year, full-service firm Mitrani, Caballero & Ruiz Moreno goes straight into the silver band on the back of excellent case highlights, a highly recommended IP division and breathtaking feedback from patrons, with one describing it as “the greatest IP team” he has ever worked with. “Fantastic local associate” Manuel Alonso heads the IP litigation and counselling practice and is “a pleasure to work with, offering advice that is quick but thorough, thoughtful but succinct, and never over-hedging”. On the licensing and trade secret front, Ignacio Bérèterbide leads the way with “pragmatism, solid and expeditious responses, and a focus on achieving sound, achievable solutions at cost-effective prices”. “A detailed-oriented professional that takes care of each and every single detail of each case, he performs excellent work and obtains immediate positive results, keeping extremely fluent communication channels with clients.” Also on the licensing and consulting front, Rita Colombo is “a reference for trademark work in Argentina”, receiving special praise for her unlimited expertise in domain names.

Moeller IP Advisors

With over 90 years’ presence in the Argentine IP sphere, Moeller IP offers the complete range of IP and regulatory services throughout the entire Latin American region, with offices in São Paulo and Montevideo for Brazilian and Uruguayan patrons’ convenience. In line with its growth-focused strategy, the boutique has been expanding its data protection and enforcement branches, with head of trademarks Victoria de Lasa Andrés supervising the latter. Combining excellent management skills with across-the-board knowledge of the IP industry, she excels at manoeuvring complex IP cases and routinely leads the team to successful outcomes. By her side, the office’s commercial hand Mariano Municoy is a safe choice for trademark portfolio management, taking charge of the firm’s regional portfolios.

Noetinger & Armando

Although backed by strong commercial and consumer law capabilities, intellectual property is where Noetinger & Armando’s heart is and for what it is particularly well regarded. Successfully protecting clients’ intangibles on both contentious and non-contentious fronts, the growing boutique acts as a hub for brand owners with regional businesses, garnering high praise for its ability to carry out instructions to the letter. When it comes to trademarks, patrons will want to reach out to Matías Noetinger, Fernando Noetinger and Pablo Armando, each a top-notch professional in their own right. Leading the trademarks and copyright team, the “extremely renowned Matías is an open-minded all-rounder, always going beyond simply applying the law to each case”. Fernando, an undisputable big name in Argentine IP litigation, has seen it all in the industrial property sphere and is the man to call when first-hand advice on complex IP issues is required. The youngest of the group, but certainly not lacking experience, Armando runs the trademarks department with flair, displaying a special knack for technology licensing and transfer agreements.

PAGBAM | IP

Clients choose PAGBAM | IP for the “attentive, swift and flexible” service consistently delivered by its multidisciplinary team of lawyers, IP agents and engineers. With an established presence both at the Federal Courts and the National Institute of Industrial Property, the firm’s IP division seamlessly navigates the local litigation and enforcement scene, guaranteeing bullet-proof protection for brand owners’ IP assets – a quality which is proving attractive for patrons of all sizes and from all industries. Interested parties should contact Fernando Alonso, PAGBAM’s IP co-chair and a well-regarded name in contentious trademark, advertising and privacy law circles.

Palacio & Asociados

Praise for Palacio’s IP work remains consistent year upon year, reflecting the IP and commercial boutique’s longstanding position as one of Argentina’s finest institutions for trademark and patent services. One international patron comments: “In 20 years of working with Palacio, we have collaborated across virtually all IP areas and have never had an inconvenience. They are extremely reliable, experienced, cutting edge and of outstanding professionalism and accuracy.” Another interviewee remarks: “Palacio is one of the most important firms in Argentina; the team achieves great results in both trademark prosecution and enforcement.” Prompting such positive reviews are four fantastic IP lawyers – Mingo Palacio, Diego Palacio, Héctor Palacio and Mercedes Durlach – who each collect great reviews of their own. “A remarkable litigator, Mingo is the man for tough trademark litigation cases, demonstrating solid experience, awesome negotiation skills and smart enforcement of trademarks.” Diego F Palacio “not only manages large trademark portfolios, prosecution, searches, oppositions and litigations, but also solves extremely difficult IP cases”. Managing partner Héctor Palacio stands out for his “knowledge and dedication to clients, crafting high-quality and grounded advice” that hits the nail on the head. Last but not least, head of trademarks Durlach is an all-rounder who routinely gets involved in both trademark prosecution and anti-counterfeiting cases.

Richelet & Richelet

“Richelet & Richelet is a specialised IP firm with strong prosecution and litigation departments”. Operating as a family outfit from the onset, the boutique has over 80 years of market presence, offering the complete brand protection package to both Argentine businesses and foreign patrons with local interests.

Other recommended experts

Claudio Fernández Lacort, from the eponymous Fernández Lacort, is a versatile IP attorney with extensive experience in trademark, patent and industrial design and a fine choice for IP portfolio management. Lerman & Szlak’s “responsive, supportive, reliable and proactive” Celia Lerman is “an agile IP lawyer with deep knowledge of intellectual property”. Offering “exceptionally clear, smart and client-oriented strategic advice, she follows only the highest legal standards and is a go-to for IP, corporate law and all legal matters related to entrepreneurship and innovation.” “Easy going” Santiago R O’Conor “offers flexible, cost-effective and straight-forward trademark services” in both prosecution and enforcement; he plies his trade from O’Conor & Power. Allende & Brea’s Pablo Palazzi is a “very responsive individual” whose “spot-on and timely advice on cross-border IP matters” has earned him great international praise. Paula Fernández Pfizenmaier, from Randle Legal, advises patrons on virtually all aspects of intellectual property, receiving great reviews from foreign peers. Izquierdo & Vicetto’s José Vicetto is “an experienced practitioner with well-established practices in trademark enforcement and prosecution”, being highly commended by international connections.

Individuals: enforcement and litigation

  • Gustavo Patricio Giay - Marval O'Farrell & Mairal
  • Juan Carlos Ojam - Berton Moreno + Ojam
  • Fernando M Alonso - PAGBAM | IP
  • Maria Paula Bassi - Baker McKenzie SC
  • Pedro C Breuer-Moreno - G Breuer
  • Martín G Chajchir - Marval O'Farrell & Mairal
  • Laura de Achával - FRTB – Ferrer Reyes, Tellechea & Bouché
  • Paula Fernández Pfizenmaier - Randle Legal
  • Raquel Irene Flanzbaum - Berton Moreno + Ojam
  • Marcelo García Sellart - Berton Moreno + Ojam
  • Enrique JF Gatti - Berton Moreno + Ojam
  • Gabriela Inés Musante - Hausheer Belgrano & Fernández
  • Fernando Noetinger - Noetinger & Armando
  • Nicolas O'Farrell - Apellaniz & O'Farrell
  • Santiago R O’Conor - O'Conor & Power Abogados-Propiedad Industrial 
  • Mingo Palacio - Palacio & Asociados
  • Pablo Palazzi - Allende & Brea
  • Graciela Claudia Pérez de Inzaurraga - Hausheer Belgrano & Fernández
  • Laura Beatriz Plavnick - FRTB – Ferrer Reyes, Tellechea & Bouché
  • Claudia Serritelli - Estudio Chaloupka
  • José María Vicetto - Izquierdo & Vicetto

Individuals: prosecution and strategy

  • Alejandro M Breuer-Moreno - G Breuer
  • Sergio M Ellmann - Marval O'Farrell & Mairal
  • Bernard William Malone - Baker McKenzie SC
  • Juan Carlos Ojam - Berton Moreno + Ojam
  • Graciela Claudia Pérez de Inzaurraga - Hausheer Belgrano & Fernández
  • Iris V Quadrio - Marval O'Farrell & Mairal
  • Manuel Alonso - Mitrani, Caballero & Ruiz Moreno
  • Pablo Armando - Noetinger & Armando
  • Ignacio Bérèterbide - Mitrani, Caballero & Ruiz Moreno
  • Juan Berton Moreno - Berton Moreno + Ojam
  • Alberto R Berton Moreno Jr - Berton Moreno + Ojam
  • Diego O Bouché Ocampo - FRTB - Ferrer Reyes, Tellechea & Bouché
  • Mercedes Bullrich - Berton Moreno + Ojam
  • Rita Colombo - Mitrani, Caballero & Ruiz Moreno
  • Victoria de Lasa Andrés - Moeller IP Advisors
  • Mercedes Durlach - Palacio & Asociados
  • Carolina Inés Fernández - Hausheer Belgrano & Fernández
  • Claudio Fernández Lacort - Fernández Lacort
  • Santiago Ferrer Reyes - FRTB - Ferrer Reyes, Tellechea & Bouché
  • Raquel Irene Flanzbaum - Berton Moreno + Ojam
  • Paula Galván - Estudio Chaloupka
  • Marcelo García Sellart - Berton Moreno + Ojam
  • Celia Lerman - Lerman & Szlak
  • Melisa Litvin - Litvin Marzorati Legales
  • Juan Lopez Mañan - Marval O'Farrell & Mairal
  • Mariano Municoy - Moeller IP Advisors
  • Matías F Noetinger - Noetinger & Armando
  • Nicolas O'Farrell - Apellaniz & O'Farrell
  • Santiago R O’Conor - O'Conor & Power Abogados-Propiedad Industrial 
  • Diego F Palacio - Palacio & Asociados
  • Héctor Palacio - Palacio & Asociados
  • Pablo Palazzi - Allende & Brea
  • Julia Tellechea - FRTB - Ferrer Reyes, Tellechea & Bouché
  • José María Vicetto - Izquierdo & Vicetto

Luminaries

  • Fernando Noetinger - Noetinger & Armando
  • Jorge Otamendi - G Breuer