Protecting trademarks in the Caribbean can be a challenge – delayed responses and registrations, manual filings and lack of customs recordal systems are the norm in most jurisdictions. Further, a wide variation in judicial systems, which stems from distinct colonisation patterns, adds to this complexity. Some follow a common law system, others a civil law framework; some feature multi-class applications and protection for well-known trademarks, some do not; a few have ratified the Madrid protocol, most are yet to do so. However, increased importance is now being attached to intellectual property in this region and governments have been keen to update their laws in line with global IP developments.
- Cabinet de Lespinasse
- Foga Daley
- Livingston Alexander & Levy
- Nunes, Scholefield, DeLeon & Co
- Caribbean IP
- HSM IP
- MINIÑO Abogados
Firms: Puerto Rico
- Ferraiuoli LLC
- McConnell Valdés
Firms: The Bahamas
- Mosko & Associates
Firms: Trinidad and Tobago
- Fitzwilliam Stone Furness-Smith & Morgan
- JD Sellier + Co
Cabinet de Lespinasse
“Responsive and reliable, Cabinet de Lespinasse is a hidden secret in Haiti.” In practice since 1877, the IP boutique remains traditional at core but open, modern and innovative in approach, providing first-class trademark services to an enviable number of Fortune 500 companies. Interested parties should call on the services of Christian de Lespinasse, a national thought leader who speaks frequently on trademark law.
The ultimate one-stop shop for IP services, Caribbean IP is a breath of fresh air for brand owners, being counsel of choice for some impressive multinational clients. Recently adding Haiti and the Dominican Republic to its geographical coverage, the firm now acts in 28 jurisdictions across the region, perfectly “mastering the intricacies of every single trademark system” there. Employing US-style standards in responsiveness and accuracy, “technically savvy” Katherine Van Deusen Hely and Patrick Hely run the practice; the former directly meeting with clients and handling their cross-jurisdictional portfolios and the latter tackling back-end enforcement and litigious proceedings.
A deep-rooted Jamaican giant, DunnCox is a renowned full-service outfit, offering integrated legal packages that tick all the boxes. In intellectual property, the ensemble is recognised for its strong registration practice, but is no less capable when it comes to pinning down infringers, leading out-of-court settlements and negotiating profitable transactions. Commercial doyenne Joanne Wood Rattray is especially skilled in the latter; using her unique legal knowledge to get the best IP deals.
Cross-jurisdictional IP cases are bread and butter for Eproint; the IP boutique boasts unbeatable regional coverage from the Caribbean to South America, being fully acquainted with the workings of over 40 Latin American legal systems. As a result, the group has become counsel of choice for multinational marquee clients and has established itself as a top IP authority in the sub-continent – a status well-earned by duo Aaron Montero and Gabriela Bodden. A prominent brand guru, founding partner Montero has a keen eye for asset commercialisation, while IP all-rounder Bodden anchors the international practice with her unrivalled Caribbean expertise.
In just 15 years, Puerto Rican treasure Ferraiouli has grown from a two-partner boutique into one of the country’s largest outfits; a testament to the success of its forward-looking, technologically sophisticated practice. One of the first on the island to appreciate the commercial value of intellectual property, Ferraiuoli has since lived up to its well-established reputation, boasting the largest trademark practice in the country – and its most reputed. Founding partner Eugenio J Torres-Oyola is partially responsible for this success; doubling up as managing partner and head of the IP practice, his IP knowledge and thought-leadership are subject to high praise by international peers. Maristella Collazo-Soto, vice chair of the IP group, leads the way in transactional and litigious aspects, cultivating a buzzing international practice.
Fitzwilliam Stone Furness-Smith & Morgan
A Trinidad and Togo commercial giant, Fitzwilliam Stone does not simply support clients with all aspects of intellectual property, it also contributes to legal reforms that strengthen their IP rights in the country. Consequently, the full-service outfit has gained a remarkable reputation nationwide and has built strong ties with the Intellectual Property Office, which Olive Angela Tibbets Ramchand has carefully nurtured throughout her three-decade career. “Meticulous, very client-oriented and responsive”, Ramchand “gives personal care to all her matters”, leading the IP practice by example.
“Top-notch Jamaican boutique” Foga Daley is “ahead of the game in prosecution and advisory matters” in the nation. A preferred choice for clients facing challenging IP cases, the firm is doing particularly well for itself in this area thanks to the unmatched expertise of one of its founding partners, Dianne Daley. Former head of Jamaica’s Copyright Office, Daley has actively shaped the country’s legal landscape for innovation, using her in-depth knowledge of IP laws and practices to get clients top copyrights and trademark deals.
HSM IP’s pan-Caribbean practice is a client magnet, serving some of the world’s largest multinational companies from its Cayman Islands headquarters. Described by a client as “the go-to firm for all trademark matters in the region”, the boutique capitalises on the newest software to provide “highly skilled, efficient and cost-effective” prosecution services, doing so in a “reliable, responsive and capable manner”. The practice also displays top-class dispute resolution and litigation abilities, offering a full menu of IP services in over 60 jurisdictions worldwide. In Sophie Peat, service users find a trusted adviser who helps them to “navigate trademark applications and disputes across multiple Caribbean jurisdictions” and is “doing a fantastic job coordinating matters in tricky legal landscapes”.
JD Sellier + Co
Making the most of Trinidad and Togo’s privileged geographic location, full-service JD Sellier + Co has built an extensive network of first-class IP firms all over the Caribbean and Latin America – extensive coverage that comes in handy for international brand owners with multi-jurisdictional businesses. This guarantees the delivery of regionwide, top-quality services on both sides of the contentious/non-contentious divide, keeping clients and foreign counsel happy as a result. When trademark disputes arise, clients want Brien de Gannes’s number on speed dial. A savvy litigator and proliferous author, there is hardly any enforcement matter he has not tackled or contemplated. For trademark prosecution, oppositions and anti-counterfeiting cases, Ariane Ramnath is a safe pair of hands.
Livingston Alexander & Levy
Throughout its 109-year run, Lival has focused on solving clients’ problems and adapting and growing in line with their changing needs. Today, Jamaica’s oldest outfit features one of the country’s busiest and most responsive trademark departments, “strong in both litigation and prosecution”. Best known for the comprehensiveness of their IP strategies, its attorneys are as meticulous as they are busy, setting time aside to fully immerse themselves in patrons’ businesses. Anne-Marie White-Feanny and Kathryn Pearson fully embody this approach. White-Feanny is a born pragmatist and innovation enthusiast, keeping on top of all legal developments in Jamaica and the region; Pearson has a knack for litigation and enforcement, passionately protecting her clients when trademark disputes are on the horizon.
Growing alongside Puerto Rico’s commercial development, McConnell Valdés has become the biggest full-service firm in the Caribbean, boasting unparalleled resources and human capital. Its IP department is especially successful at defending and enforcing brand owners’ rights, thanks to litigation superstars Dora Peñagarícano and Roberto Quiñones-Rivera. An IP authority and highly influential in international committees and associations, Peñagarícano played a key role in drafting Puerto Rico’s new trademark legislation. Quiñones-Rivera brings complex litigation know-how to the table, which comes in handy when challenging anti-counterfeiting cases arise.
A new name in the WTR 1000’s pan-Caribbean table, MINIÑO is already familiar to those keeping an eye on the Dominican Republic’s section – it has topped the guide’s Dominican rankings for five consecutive years. This year’s edition not only shines a light on the group’s dynamism and technology-orientated nature, but also recognises its regional presence and efficient one-stop shop approach for trademark portfolio management across the islands. Arlene Herrera takes charge in this area as the coordinator for Caribbean matters, handling Caribbean-wide portfolios and filing strategies for clients such as Netflix, DirectTV, Western Digital Technologies and Mondelez International.
Mosko & Associates
Well ahead of its national competitors in both technology and service, IP boutique Mosko & Associates is the only firm in the islands with its own trademark, patents and copyrights database. It has received warm recommendations from overseas connections, thanks to Katina Mosko – a leader with a highly desirable client list, serving some of the world’s most prominent multinationals.
Nunes, Scholefield, DeLeon & Co
Popular among national innovators and brand owners, full-service Nunes, Scholefield, DeLeon & Co is home to a vibrant trademark practice with a “solid reputation for timely and effective results”. Combining the country’s largest litigation department with an innovative IP group, the firm’s capabilities are excellent across the IP spectrum. Grace Lindo embodies this all-round nature, provides “quick responses, thorough research and deep analysis” on trademark prosecution, transactions and litigation cases and receives praise for her “invaluable guidance and expertise”.
Other recommended expertsA distinguished litigator, Henlin Gibson Henlin’s Meg Georgia Gibson-Henlin has argued across all courts in Jamaica, being a safe choice for clients facing complex IP cases. Jennifer Hedges puts her three decades of experience to excellent use managing the IP practice at Cox Hallett Wilkinson and ensuring that trademark registrations are performed to the highest standard. A part-time lecturer and tutor, Carrington & Sealy’s Fiona Hinds approaches trademark cases with great analytical rigor. Anguillian superstar Kenneth Porter has valuable commercial awareness, offering pragmatic advice on all aspects of business and IP law. He operates out of Sagis. At Cabinet Salès, managing partner Jean-Frédéric Salès is an all-rounder, keeping active practices in IP, labour and business law. Andrea Scarlett-Lozer of Levy Cheeks is “a key person for advice and strategy”, handling some of the firm’s most complex transactions. Rosalind Smith Millar runs Clarke Gittens Farmer’s IP practice and is a reference in Barbados’s IP landscape, publishing frequently on the subject. Costa Rica-based Jessica Ward coordinates Colbs Legal Studio’s IP practice, standing out for her Caribbean and Central American-wide portfolio management skills. “Jessica is a thorough professional dedicated to each of the cases she takes on and achieves a perfect score on knowledge, response time and customer service”.
- 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
- Meg Georgia Gibson-Henlin - Henlin Gibson Henlin
- Grace A Lindo - Nunes, Scholefield, DeLeon & Co
- Kathryn JE Pearson - Livingston Alexander & Levy
- Andrea Scarlett-Lozer - Levy Cheeks
- Anne-Marie White-Feanny - Livingston Alexander & Levy
- Joanne E Wood Rattray - Dunn Cox
- Gabriela Bodden - Eproint
- Patrick Hely - Caribbean IP
- Arlene Herrera - MINIÑO Abogados
- Aaron Montero - Eproint
- Sophie Peat - HSM IP
- Katherine Van Deusen Hely - Caribbean IP
- Jessica Ward - Colbs
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
- Olive Angela Tibbets Ramchand - Fitzwilliam Stone Furness-Smith & Morgan