IP legislation across the Caribbean is constantly being amended and updated to bring it in line with laws in more developed jurisdictions; many trademark offices are also following through with their commitment to shortening turnaround times and digitalising their services. Protecting trademarks in the region can still be problematic; in Bermuda, a jurisdiction which does not allow for multi-class applications, a recent increase in official fees is an annoyance; and in Belize, the IP office recently announced that all authorisation of agent forms must now be notarised, even though nothing is stipulative to this effect in the country’s trademark legislation. For brand owners, having reliable points of contact in the Caribbean is a must and the WTR 1000 recommends the best across eight jurisdictions. For the first time this year, the guide also recommends leading pan-Caribbean service providers for those looking for a regional one-stop shop.
- Clarke Gittens Farmer
- Cox Hallett Wilkinson Ltd
- Cabinet de Lespinasse
- Cabinet Salès
- Foga Daley
- Livingston Alexander & Levy
- Myers Fletcher & Gordon
- Nunes, Scholefield, DeLeon & Co
Firms: Puerto Rico
- Ferraiuoli LLC
- McConnell Valdés
Firms: The Bahamas
- Mosko & Associates
Firms: Trinidad and Tobago
- JD Sellier + Co
Cabinet de Lespinasse
Cabinet de Lespinasse is the top IP player in Haiti and a reliable and efficient point of contact for multinationals when it comes to trademark protection and enforcement. Thought leader Christian de Lespinasse works tirelessly not only for his clients but also for the betterment of the nation’s IP regime.
Venerable Haitian legal institution Cabinet Salès is a staunch protector of IP rights with a track record of excellence going back over 100 years. Working quickly and accurately while putting quality first, the team acquits itself with distinction when it comes to prosecution and administrative proceedings. Experienced litigation and alternative dispute resolution experts are on hand, too. Jean-Frédéric Salès is a leading commercial and labour lawyer – and an IP authority.
A reference for pharmaceutical companies, as well as top global brands in a host of other industry sectors, this boutique has consolidated its position as a leading service provider for the entire Caribbean region. With major new clients coming on board thick and fast, the set’s prosecution and portfolio management practice is thriving, although a steady increase in enforcement instructions is also an important thread in the narrative. Ultimately, the firm takes away the headache of chasing 20 local agents and – by offering practical advice that can be actioned quickly – proves itself to be much more than just a middleman. Providing a personalised and attentive service are strategic brand counsellor Katherine Van Deusen Hely and litigator Patrick Hely.
Clarke Gittens Farmer
For those seeking specialised IP advice alongside the resources and wider commercial perspective of general practice, Barbadian leader Clarke Gittens Farmer is a discerning choice. Sweetening the deal for rights holders with broad business horizons is the firm’s global connectedness, a results of its membership of Lex Mundi. Rosalind Smith Millar is the key contact for trademark services. Continuing to serve on the Barbados Government’s IP advisory committee which she previously chaired, she contributes much to the development of IP law and practice in the country.
Cox Hallett Wilkinson Ltd
One of the largest and most influential outfits in Bermuda, Cox Hallett Wilkinson makes light work of IP instructions. Jennifer Hedges oversees the practice and ensures that patrons receive an efficient and effective trademark registration service. She has more than three decades of experience and has seen and dealt with just about everything that can come up during the prosecution process.
When it comes to brands, Jamaican full-service firm DunnCox displays good business sense; this chimes with clients who want to leverage IP assets for commercial ends, rather than just accumulate IP rights. The ensemble shines when enforcing and monetising trademarks thanks to excellent negotiation skills. Corporate and commercial lawyer Joanne Wood Rattray is in her element getting signatures on the bottom line of IP-rich deals. She also sees to prosecution with precision and is a confident handler of anything contentious.
Eproint has the broadest geographic footprint of any firm in the WTR 1000 Caribbean section; it has offices in Belize, the Cayman Islands Costa Rica, the Dominican Republic, Guatemala and Honduras and can guarantee a consistently high-quality service to patrons across these jurisdictions. It plies its trade further afield, too – in fact, liaising with top foreign associates across the board, it can serve as a one-stop IP shop for the entire Caribbean, Central American and Latin American region. Proactive, ultra-responsive, efficient and solutions-oriented, Gabriela Bodden has a profound knowledge of international trademark law. Another key contact is Aaron Montero, an extremely organised practitioner with outstanding interpersonal skills. These two San José-based lawyers have over four decades of experience between them. They never stand still but are always looking to enhance the Eproint practice; in the past year, they have developed dedicated service offerings in the areas of pharmaceutical, IT, data protection and fashion law.
Top Puerto Rico outfit Ferraiuoli is in sync with its patrons in a way that few law firms are and dispenses advice across all legal disciplines in a such a way as to go right to the heart of their business. Intellectual property is a particularly fast-growing area of practice for the set, which manages portfolios into coherent and commercially valuable wholes, enforces marks with an encyclopaedia of attack plans and exploits rights for maximum gain. Managing partner and chair of the IP group Eugenio J Torres-Oyola is a natural-born innovator with an entrepreneurial mind. He keeps the team at the cutting edge of IP, technology and internet law. Furnishing clients with strategic wisdom while taking care of their prosecution and infringement litigation needs, Maristella Collazo-Soto serves as vice-chair of the practice.
“The IP lawyers at Foga Daley in Jamaica offer a superb level of service. They are super responsive and give accurate substantive advice proactively. If you need to get things done within a tight timeframe, they are the ones to call – they are always available and happy to help on anything urgent.” “Simply excellent”, head of department Dianne Daley is a doyenne of IP law in Jamaica and the Caribbean. She demonstrates the deftest touch in trademark prosecution and transactions and is a leading authority on copyright law.
Cayman ensemble HSM IP runs one of the Caribbean’s most technologically advanced trademark practices. Thanks to its sophisticated interactive database, it manages portfolios with rare efficiency and cost-effectiveness while adapting to the specific reporting, invoicing and billing needs of each client. Another USP is its international reach, which extends across the Caribbean/Central American region and, as of 2018, to Argentina, Brazil and Fiji; among Caribbean firms, HSM is hard to beat as an international one-stop shop. Interested parties would be wise to call Sophie Peat. She knows trademark law in the Cayman Islands cold having played an important role in its drafting and she is bang up to date on all IP developments in the region, as well as internationally. An economical portfolio manager, she expertly manages a team of highly qualified paralegals.
JD Sellier + Co
Experienced Trinidad and Tobago bureau JD Sellier + Co meaningfully supports clients’ business and brand development in many ways. With an IP practice going back some 90 years, the firm certainly has pedigree when it comes to trademarks. By combining the expertise and skillsets of its IP line up and litigation group, it renders a 360-degree protection, defence and enforcement service that encompasses the Caribbean region. Between them, Ariane Ramnath and Brien de Gannes cover the waterfront; Ramnath is a prosecution maven with extensive experience on contentious matters; veteran IP specialist de Gannes is a top litigator sought after by companies and governments for his strategic acumen.
Livingston Alexander & Levy
“One of the most responsive firms in the country”, Livingston Alexander & Levy is a repository of trust for international brand owners and overseas associates with business in Jamaica. The 108-year old outfit has an illustrious history but looks forward, providing clients with a dynamic IP service that adapts as their needs change. Dispensing gold-standard guidance on all brand-related matters, Anne-Marie White-Feanny and Kathryn Pearson are warmly endorsed by contemporaries in the Caribbean and beyond.
One of Puerto Rico’s best, McConnell Valdés thrives in the cut and thrust of IP litigation. IP division co-heads Dora Peñagarícano and Roberto Quiñones-Rivera are accomplished advocates who know what it takes to emerge victorious, whether their representees are accusing others of infringement or defending allegations. Peñagarícano elevates any IP discussion – from brainstorms on strategy with clients or colleagues to government consultations regarding legislation. An expert on brand issues in the retail and fashion sector, she represents a swathe of well-known names including Ann Taylor and Ralph Lauren, who she has recently assisted in connection with tough oppositions. She is no stranger to complex and sprawling cases and has also lately acted for Playero in a counterfeiting complaint against no fewer than 50 defendants. Quiñones-Rivera blends expertise in arbitration, unfair competition and trade regulation into his IP practice. He is undoubtedly among the most experienced litigators – in any legal discipline – in the region. The team is not just about the fight, though – it strengthens IP protection through judicious prosecution, too.
Mosko & Associates
The only Bahamian firm in the WTR 1000, Mosko & Associates is an essential stopping point for companies with IP needs in the Caribbean. Although it provides a range of company law services, intellectual property is the set’s first love. There is nothing Katina Mosko’s crew does not know about the commonwealth’s trademark legislation or, thanks to a comprehensive computer database, about existing rights in the country. Mosko has inculcated in the group an unwaveringly practical approach to deploying its knowledge to sew up strong protection matrices for clients.
Myers Fletcher & Gordon
This cosmopolitan Jamaican firm has been dispensing top-drawer IP counsel for decades as part of a soup-to-nuts business law practice. Its brand-related services, which run the gamut, go down a storm for companies that want to make the most of their intangible rights as business assets; the vastly experienced IP line up demonstrates refined commercial thinking at every turn. Credit for this goes to managing partner and IP touchpoint Peter Goldson, who previously served as head of the commercial department. Like Goldson, each contributor to the IP practice has broad horizons and employs an interdisciplinary scheme of thinking to solve complex legal problems, whatever their nature.
Nunes, Scholefield, DeLeon & Co
For all-weather trademark protection, look to Nunes, Scholefield, DeLeon & Co in Jamaica. Taking its cue from Grace Lindo, the team is motivated by identifying and implementing long-term solutions, not quick fixes; they dot I’s and cross T’s when prosecuting trademark applications so that the rights they secure can stand the test of time. Lindo gets a kick out of her clients’ creativity, be it around their brands or technology. She works for a diverse mix of large enterprises and start-ups and does a brilliant job tailoring her approach and advice.
Other recommended expertsFiona Hinds is a dependable contact for brand owners in Barbados; she has been an IP lawyer for most of her 20-year career and has guided the development of her country’s IP legislation. Carrington & Sealy is her base of operations. Anguillan firm Keithley Lake & Associates is no longer in operation, but fans of Kenneth Porter need not worry – he can be found at Sagis LP providing the same flawless trademark services as efficiently as he always has done.
- Kenneth Porter - Sagis LP
- Fiona J Hinds - Carrington & Sealy
- Rosalind K Smith Millar - Clarke Gittens Farmer
- Jennifer Hedges - Cox Hallett Wilkinson Ltd
- Christian de Lespinasse - Cabinet de Lespinasse
- Jean-Frédéric Salès - Cabinet Salès
- Dianne Daley - Foga Daley
- Peter S Goldson - Myers Fletcher & Gordon
- Grace A Lindo - Nunes, Scholefield, DeLeon & Co
- Kathryn JE Pearson - Livingston Alexander & Levy
- Anne-Marie White-Feanny - Livingston Alexander & Levy
- Joanne E Wood Rattray - Dunn Cox
Individuals: Puerto Rico
Individuals: The Bahamas
- Katina Mosko - Mosko & Associates
Individuals: Trinidad and Tobago
- Brien A de Gannes - JD Sellier + Co
- Ariane S Ramnath - JD Sellier + Co