Dominican Republic

The Dominican Republic has the largest GDP of any country in the Caribbean region and is one of the most populous, making it an important jurisdiction from a foreign investment and therefore brand perspective; it also has a first-to-file system, which gives rise to heightened trademark protection concerns. The National Office of Industrial Property functions efficiently, with an electronic filing system that has helped it to weather the challenges of the covid-19 pandemic better than those in neighbouring countries. One of the main talking points among practitioners during the review period was the presidential election which took place on 5 July 2020, which saw Luis Abinader ascend to power; it remains to be seen what impact this will have on the IP scene.

Firms

  • MINIÑO Abogados
  • Troncoso Leroux
  • Angeles Pons
  • Headrick Rizik Alvarez & Fernandez
  • Bufete Lugo Lovaton
  • JJ Roca & Asociados
  • Russin Vecchi & Heredia Bonetti
  • Ulises Cabrera
  • Valdez Albizu

Angeles Pons

Angeles Pons serves as the trusted adviser to numerous top companies in industries as diverse as aviation, retail, pharmaceuticals, food and beverages, sportswear and streetwear and technology. These are attracted by the experience and sterling track record of founding partners Jaime Angeles and Wallis Pons, two tenacious lawyers who are adept at getting difficult marks registered, clearing markets of fakes and hammering out favourable outcomes in court. Described as a “natural leader”, Pons consistently meets with success whatever she turns her hand to; she has lately dispatched counterfeiting cases for Federal Mogul Corporation; advised PepsiCo and Diageo on regulatory matters; and represented Grupo Ramos, the country’s biggest retail store, in a lawsuit filed by Crocs, whose 3D trademarks were ultimately invalidated. Poised litigator Angeles secured a major anti-counterfeiting decision in the pharmaceutical space for ARAPF, resulting in the imprisonment of the infringers.

Bufete Lugo Lovaton

The go-to IP set for a colourful catalogue of domestic brands and internationals, agile boutique Bufete Lugo Lovaton provides a “pristine service characterised by responsibility and top-quality work”. The team operates with dexterity across the contentious/non-contentious divide and is further distinguished by its authority in the area of advertising law, in which it runs without doubt the leading practice in the country. Zaida Lugo provides strong leadership to the practice, which she is continually refining and improving: she has, for example, rounded out the firm’s regulatory offering for the benefit of her many drug, food and drink, alcoholic beverages and cosmetics patrons. Anti-counterfeiting is another notable area of recent growth, thanks to the onboarding of major US sports leagues as new clients. Lugo has a talent for overcoming rights protection obstacles and has successfully represented several companies in opposition and cancellation proceedings; for Vinicola Del Norte, owner of the Duggans whisky brand, she persuaded the trademark office to reject claims made by Diageo, including one of exclusivity over the colours green and red for bottles of alcoholic drinks; and for Telecable del Nordeste, as owner of the TDN mark, she cancelled an unauthorised registration by Televisa.

Headrick Rizik Alvarez & Fernandez

At Headrick, “experienced lawyers give a high-quality service” in all commercial legal disciplines. The leading full-service outfit mines a rich seam of IP know-how and tends to the total brand needs of clients, leaning heavily on rainmakers Lilly Acevedo Gómez and Mary Fernández Rodríguez. Acevedo, the IP and regulatory affairs department director, gives rigorous advice to pharmaceuticals, food and beverage and cosmetics companies, and is not afraid to take on difficult challenges or push boundaries when it comes to protecting their intangible rights. Likewise founding partner Fernández, who is called on to lead when there are no clear paths to follow. She has held numerous prestigious positions in domestic and international associations and is applauded for her insight on IP as well as business matters.

JJ Roca & Asociados

ROCA is hailed by international sources for the efficiency with which it handles trademark matters. Investing time and effort upfront to understand the products, business and needs of its clients, the team gives targeted advice and conscientiously applies a practical approach to problem solving – not just in the Dominican Republic, but across the Caribbean. In charge of the IP and corporate departments is Sharin Pablo de Roca, a seasoned and commercially astute practitioner who is increasingly regarded as one of the country’s finest legal minds. A junior partner who is also the subject of growing recognition, Ana Paula Campusano specialises in intellectual property and is an adept portfolio manager and IP transactional lawyer.

MINIÑO Abogados

Not only an elite performer in the Dominican Republic, MINIÑO is one of the best IP outfits anywhere in Central and Latin America. Collaboration and teamwork define its modus operandi: internally, its lawyers and paralegals cooperate seamlessly so that all tasks are given the appropriate level of attention; while externally, the ensemble efficiently connects with foreign associates on international assignments, which are a forte. Celebrated for its responsiveness and proactivity, the group turns work around rapidly, securing much-needed protections at speed and facilitating quick litigation wins with its settlement and business-focused mindset. Inspiration and motivation come from Urko Ochoa, who holds the reins of the IP practice, and managing partner Orietta Blanco. Clients call them “incredibly supportive and attentive lawyers who take ownership of matters and offer up well-thought-out advice and creative solutions”. “They successfully meet every challenge and are easy to recommend to anyone needing solid and dependable regional assistance.” Together with outstanding senior associate and IP litigation practice coordinator Pamela Hernandez, they represent Philip Morris International on strategic matters in 21 jurisdictions. Fielding different configurations of lawyers, the firm services a diverse array of top global brands; Ochoa, Hernandez and cross-border coordination guru Arlene Herrera link up, for example, to give a fulsome search, prosecution, maintenance and litigation service to Mondelez International.

Russin Vecchi & Heredia Bonetti

A new addition to the WTR 1000 this year on the recommendation of several local IP leaders, Russin Vecchi & Heredia Bonetti is a respected corporate, litigation, IP, family law and real estate firm which can be called on in confidence for trademark prosecution services. The team functions hand in glove with its counterparts in the US, Russian and Asia offices of international parent Russin & Vecchi, making for effective coordination of global brand matters. The engine of the practice in Santo Domingo is Mónika Fiallo Paradas, a partner who has spent 18 years advising companies on setting up local business operations and protecting their intellectual property.

Troncoso Leroux

An essential ally for many prestigious companies, Troncoso Leroux is an up-and-coming corporate and IP boutique that is home to a hugely experienced team. Handling routine and complex matters alike with due care and attention to detail, the group implements practical solutions with impressive speed. Setting the tone in this regard is María del Pilar Troncoso, an IP doyenne and former president of ASIPI and the Dominican Association of Intellectual Property. Unstinting in her dedication to quality, she applies razor-sharp skills to difficult prosecution conundrums on behalf of A-listers such as Pfizer, for which she recently defended a trademark office decision to reject a local laboratory’s application for a trademark that infringed the design and colour of Pfizer’s Viagra tablet. Supporting her as junior partner and occupying the role of litigation team captain, Vanessa Cabrera Almonte is entering prime time now. A former district attorney and anti-counterfeiting specialist, she lately acted for Viacom International in a criminal complaint against an infringer that resulted in the destruction of a huge volume of fake goods.

Ulises Cabrera

With expertise not just in trademarks, but also in competition, consumer, data privacy and regulatory law, among others, Ulises Cabrera can support brand owners in many meaningful ways. Whether reorganising and strengthening portfolios or advocating in the Dominican courts, the firm does a tremendous job responding quickly to instructions, communicating clearly and promptly with clients as their files progress, and getting satisfying outcomes at the end – all for a reasonable price. Recent highlights for Magdalena Almonte et al include mounting a defence against an infringement claim for one of the world’s top hotel brands; overseeing the advertising registration of regulated products for Novo Nordisk; and managing the IP portfolio of Grupo Familia. Almonte “understands her clients’ needs and is a reliable and timely contact for the Dominican Republic”.

Valdez Albizu

Foreign law firms and direct clients love working with Valdez Albizu because they receive a “top-priority service” characterised by “rapid response times and excellent value for money”. The general practice outfit places a strong emphasis on intellectual property and maintains a dynamic prosecution and administrative litigation practice, though it has the facility to handle all manner of protection, enforcement and transactional tasks. Leading the way, Alejandra Valdez fields a diverse array of instructions, which keeps her clued up and ready for anything. Among her clients is Anastasia Beverly Hills, a well-known cosmetics brand, for which she has recently taken care of oppositions against bad-faith filers.

Other recommended experts

Partner Tania Castillo and senior associate Carimer Guzmán anchor the trademark practice at Castillo y Castillo, a venerable full-service outfit with a long tradition in intellectual property. The latter makes her debut in the WTR 1000 this year, recommended as a well-rounded practitioner in the brands space. Maria Felix Troncoso of Felix & Co is admired as a “hardworking professional who knows how to handle difficult cases”. Tipped by many of her peers, she enjoys excellent standing on the Dominican market and internationally, too. Pellerano & Messina was established in 2019 as a fresh IP boutique by Ana Isabel Messina. She is the perfect fit for complex IP matters from which regulatory concerns arise and is a go-to for marquee brands in areas such as energy drinks, pharmaceuticals and luxury goods. Orange IP is a new name on the Dominican market, having been established in January 2020 by Carmen Prieto Villegas, an entrepreneurially minded attorney who consistently brings the heat in IP infringement litigation. For well-established full-service firm Jorge Mera & Villegas, intellectual property is a focal point. Patricia Villegas de Jorge – one of its leading specialists – practises comprehensively in the area of trademarks and in related fields such as licensing and franchising and unfair competition, and has forged close relations with clients over many years.

Individuals

  • Jaime R Angeles - Angeles Pons
  • Orietta Blanco - MINIÑO Abogados
  • María del Pilar Troncoso - Troncoso Leroux
  • Maria J Felix Troncoso - Felix & Co
  • Mary Fernández Rodríguez - Headrick Rizik Alvarez & Fernandez
  • Zaida E Lugo - Bufete Lugo Lovaton
  • Urko Ochoa - MINIÑO Abogados
  • Wallis Pons - Angeles Pons
  • Lilly Acevedo Gómez - Headrick Rizik Alvarez & Fernandez
  • Tania Castillo - Castillo & Castillo
  • Ana Isabel Messina - Pellerano & Messina 
  • Sharin Pablo De Roca - JJ Roca & Asociados
  • Alejandra Valdez - Valdez Albizu
  • Magdalena Almonte - Abogados & Notaría Ulises Cabrera
  • Vanessa Cabrera Almonte - Troncoso Leroux
  • Ana Paula Campusano - JJ Roca & Asociados
  • Carimer Guzman - Castillo & Castillo
  • Pamela Hernandez - MINIÑO Abogados
  • Arlene Herrera - MINIÑO Abogados
  • Carmen Prieto Villegas - Orange IP
  • Patricia Villegas de Jorge - Jorge Mera & Villegas