The IP environment in Colombia is looked on favourably by international brand owners; the Superintendence of Industry and Commerce is efficient and ever more consistent in its decision making regarding cases of infringement since it was granted judicial powers. One subject of focus for IP professionals is arbitration; the Chamber of Commerce of Bogota – working in conjunction with the Inter-American Association of Intellectual Property – has devised a set of arbitration rules for IP disputes.
- Baker McKenzie SAS
- Brigard Castro
- Cavelier Abogados
- Lloreda Camacho & Co
- Castellanos & Co
- Dentons Cárdenas & Cárdenas
- Posse Herrera Ruiz
- Triana Uribe & Michelsen
“Strong on trademark filing and sharp as a tack in litigation”, Baker McKenzie has a lock on all aspects of trademark practice. The crew in Bogota spearheads the global firm’s robust Latin America practice that stretches to all corners of the continent. Forming a best-in-class unit are Alvaro Correa Ordoñez, Juan Pablo Concha Delgado and Ricardo Metke Méndez. Correa Ordoñez is an inspiring leader for the group and, given his experience – he became a partner here in 1987 – is hotly sought after as a high-level IP strategist. Concha’s international vision combined with local street smarts are also in high demand. Litigation and enforcement are his strong suits. Arbitration pro Metke is a celebrated IP professor who is a go-to for advice on matters sitting at the intersection of IP and unfair competition law.
Brigard Castro’s success rate in seeing trademark applications through to grant is outstanding and to many there is no better prosecution guide in Colombia. Top innovators including Amazon Technologies, Google and Dyson Research are drawn to the set’s “IP pioneer” status. However, Brigard Castro is by no means just a filing shop – it is also a force to be reckoned with in litigation and enforcement scenarios and can be counted on for trenchant strategic advice. Supplying an abundance of the latter to a host of domestic, regional and Spanish companies is Martín Torres Cardozo, who helms the trademark prosecution practice. Juan Pablo Cadena and María Fernanda Castellanos concentrate their rapier-like minds on litigation, often dividing cases up along industry lines; Cadena takes the reins on disputes in the retail sector, while Castellanos leads on life sciences contentions.
Castellanos & Co
Client satisfaction has always been number one for Castellanos & Co as recent reviews show: “Simply superb, it is highly qualified and proactively finds ways to add value to its service.” “The knowledge and quality that it showcases is very impressive, it makes complex things easy and it progresses matters smoothly.” Margarita Castellanos and Ximena Castellanos have been paying a great deal of attention to back office processes lately and have everything running smoothly and with exceptional efficiency; however, this effort has not impinged on the personal nature of their service in any way. “Both of them are outstanding lawyers who respond quickly and give clear, excellent advice. They are easy-going and nice people to work with too.” Responsible for much of the firm’s filing output, “Ximena is always thinking one step ahead”. “She’s super knowledgeable and just a marvellous person all round.” Margarita takes charge on anything contentious and is an ace on oppositions. “She has outstanding communication skills” and knows how to bend the Superintendence of Industry and Commerce to her will.
Clients and foreign associates line up to sing Cavelier’s praises: “The firm is geared up to give the best possible service – its organisation skills are simply amazing.” “Extremely detail-oriented, it is a standard-setter in Colombia” and a “market-leader in terms of quality”. A prolific filer of trademarks at home, it is also active daily across Latin America and the Caribbean; discerning brand owners use it as a hub to take the stress of coordinating many different representatives away and to capitalise on consistent cross-border strategising. Also notable is the technological sophistication of the firm which is both willing and able to innovate around workflow management and service delivery. Cavelier has a stacked team of 21 lawyers and 15 paralegals to take care of any and all trademark matters, both contentious or non-contentious, with steadfast leadership provided by IP head Luz Clemencia de Páez, litigation chief Edna Sarmiento and international department chief Jorge Chávarro. In the words of one client: “Luz Clemencia and Edna have contributed fundamentally to the construction of our brand portfolio nationally and internationally, and to them we owe the protection of our flagship brands. Their knowledge and representation are impeccable.” “Jorge Chávarro can be reached at any moment and, once instructed, always follows up quickly and efficiently. His knowledge of trademark matters is at the highest level and he is creative in the strategic advice he gives.” Joining them in the WTR 1000 for the first time this year is “IP bible” Eduardo Varela, an authority on trademark matters arising in the media, entertainment and sports areas. “Eduardo is well prepared and exceptionally proactive. He gets to the heart of matters quickly and gives very direct advice.”
Dentons Cárdenas & Cárdenas
Having previously operated in the region through associates, Dentons established itself on the ground in Latin America when it combined with Cárdenas & Cárdenas in 2015. The Bogotá team, has far-reaching local roots – Cárdenas & Cárdenas more than 100 years of history – but can also capitalise on being part of the largest law firm in the world. Domestic peers profess themselves “impressed with the consolidation and maintenance of high quality” since the merger. Trademark rights holders are treated to an outstanding service by Luz Helena Adarve and Juanita Acosta, lawyers with “broad experience who practice with the utmost integrity”. Adarve heads the IP, technology, privacy and cybersecurity practice and has the sort of broad horizons that sophisticated companies – and their C-suites – love to see. Acosta has been a partner for 10 years and excels in portfolio management as well as contract negotiation and IP commercialisation.
Lloreda Camacho & Co
According to clients, “it is an honour to work with the lawyers and staff at Lloreda Camacho”. The committed outfit is famed for its around-the-clock availability, responsiveness and top-quality trademark prosecution and litigation work. In terms of recent developments, the continued growth of its foreign practice is key; the set serves as a vital strategic ally to companies making moves in Latin America, Asia and Europe. On the contentious front, the group continues to showcase decisive courtroom skills, in addition to finely-tuned alternative dispute resolution expertise. Partners-in-charge “Alicia Lloreda and Tatiana Carrillo expedite all requests and never miss a deadline – their customer service is exceptional. They truly know their clients’ needs and are extremely well-organised and attentive; they also think outside the box – its never a cookie-cutter approach.” Lloreda has been an inspiring leader of the team for over 20 years and is a keen strategist with an acute commercial sense. Carrillo takes charge of the trademark and copyright team. She thinks holistically about brands and brings penetrating social media, advertising and digital marketing expertise to the table.
Geographic limits cannot be placed on OlarteMoure’s trademark practice; evincing a strong dedication to its clients and showcasing rich international experience and adaptability, the firm deploys wherever needed. As a Latin-American hub, it is a smart choice; it works closely with a cherry-picked selection of top-grade foreign associates, but its professionals also know the nuances of protecting and enforcing trademarks in different regional jurisdictions. It is also notable that few other Colombian firms are as active in Asia as OlarteMoure, which opened an office in Tokyo in 2017. Bringing about a bumper year in terms of new business and excellent results, Juan Moure and Juan Felipe Acosta have been hard at work. As a former deputy superintendent for industrial property, Moure knows the Colombian trademark system better than most. A “natural leader who inspires confidence”, he is a connoisseur not just of IP but also competition law. Acosta is “highly diligent and always delivers”, as well as being “a brilliant communicator”. Another name to note is dyed-in-the-wool trademark lawyer Bibiana Agudelo who previously served as trademark counsel at PepsiCo covering the Andean Community, Central America and the Caribbean. When it comes to worldwide portfolio management, litigation and strategic advice, Grupo Nutresa benefits from the expertise of all three.
Posse Herrera Ruiz
Posse Herrera Ruiz reaps excellent client reviews: “Its management of trademark matters is fast, well-executed and accurate.” “The team is enthusiastic, committed, communicative, creative, open-minded, organised, rigorous and reliable.” In portfolio management, its approach is commercial, which makes it cost-effective – steps are only taken when they serve a business need. This also applies in litigation – which has been a busy side of the practice recently – the team successfully prevented the dilution of a Medellin coffee chain’s brand, reversed an economically harmful decision of the Superintendency of Industry and Commerce’s for a domestic cosmetics company and swiftly prevented the unauthorised use of a global automotive company’s logo. Taking the lead on all these matters, authoritative IP consultant Helena Camargo guides the practice with assuredness. Her partner Ernesto Cavelier is a leading light on technology transfer, licensing and all forms of IP monetisation.
Triana Uribe & Michelsen
Triana Uribe & Michelsen is one of the most experienced trademark litigation firms in Colombia; as a result, the team can give very accurate reads on chances of success, which enables in-house counsel to spend their money wisely on actions that will advance their commercial agenda. In litigation, as in all areas of its trademark practice, the set works with precision and can turn on a dime when market or other circumstances change. Its activities in the antitrust, data and consumer law areas have been expanding rapidly of late, bringing holism to the side’s brands practice. Fernando Triana co-pilots the group with Juan Carlos Uribe and they draw support from a splendid team of lawyers including Andres Medina, Marcela Gómez, Sandra Ávila and Sandra Méndez, who were all made partners at the end of 2017. Fernando Triana is a market leader when it comes to the mediation and arbitration of IP disputes.
Other recommended expertsCuesta & Asociados senior partner Juan Carlos Cuesta Quintero is enthusiastically recommended by peers for his arbitration expertise. Mónica Wolf de Camhi of boutique Wolf Méndez speaks Spanish, English, French and German and is a sounding board for a colourful catalogue of international clients. “She’s great to touch base with on IP developments in Colombia, has broad experience and produces high-standard work.”
- Luz Helena Adarve - Dentons Cardenas & Cardenas
- Juan Pablo Cadena - Brigard Castro
- Jorge Chávarro - Cavelier Abogados
- Juan Pablo Concha Delgado - Baker McKenzie SAS
- Alvaro Correa Ordoñez - Baker McKenzie SAS
- Alicia Lloreda - Lloreda Camacho & Co
- Ricardo Metke Méndez - Baker McKenzie SAS
- Martín Torres Cardozo - Brigard Castro
- Fernando Triana - Triana Uribe & Michelsen
- Juan Felipe Acosta - OlarteMoure
- Juanita Acosta - Dentons Cardenas & Cardenas
- Bibiana Agudelo - OlarteMoure
- Helena Camargo - Posse Herrera Ruiz
- Tatiana Carrillo - Lloreda Camacho & Co
- Margarita Castellanos - Castellanos & Co
- Maria Fernanda Castellanos - Brigard Castro
- Ximena Castellanos - Castellanos & Co
- Ernesto Cavelier - Posse Herrera Ruiz
- Juan Carlos Cuesta Quintero - Cuesta & Asociados Ltda
- Luz Clemencia de Páez - Cavelier Abogados
- Juan G Moure - OlarteMoure
- Edna Sarmiento - Cavelier Abogados
- Juan Carlos Uribe - Triana Uribe & Michelsen
- Eduardo Varela - Cavelier Abogados
- Mónica Wolf de Camhi - Wolf Méndez Abogados Asociados