ClarkeModet

WTR Research

The WTR 1000 focuses exclusively on trademark practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal trademark expertise.

Bronze - Firms

Making its WTR 1000 debut this year is the Lima outpost of European and Latin American IP powerhouse ClarkeModet. It serves as a one-stop shop for all IP needs and continually adapts its approach to achieve the commercial goals of its prestigious clientele. The “highly professional and competent” José Marquis delivers on this standard, handling everything from registration to oppositions and cancellations. Earning plaudits for his “rapid responses, effective solutions in defending brands and countless success stories”, he is the key contact to note at this innovative outfit.

Bronze - Firms: prosecution and strategy

Operating out of 22 offices located throughout Europe and Latin America, ClarkeModet has maintained an unmatched foothold in the Spanish and Portuguese-speaking world for over a century. The Madrid-headquartered outfit’s highly strategic approach resonates with brand owners and shines through as a hallmark of its work output. A fresh face in the guide this year, managing director Ignacio Gómez-Acebo dispenses clear-cut guidance packed with commercial insight to patrons in sectors from telecommunications to pharmaceuticals and construction.

Bronze - Firms

International IP set ClarkeModet earns extended coverage in the WTR 1000 for 2022 courtesy of the addition of Patrícia Falcão Corrêa and Fabrize Pereira da Cruz to the Brazil rankings. Falcão takes full advantage of more than 20 years of experience as a lawyer to support domestic and international clients in litigation and transactions. Identified as a future leader of the practice, Pereira da Cruz manages the trademark department and sees to a high volume of prosecution without ever letting standards slip. They run an efficient practice in Brazil and beyond, capitalising on the firm’s lean, cost-effective local set-up and extensive international resources. The Rio de Janeiro-based group has recently expanded its online monitoring and takedown services.

Bronze - Firms

ClarkeModet Colombia, which celebrated its 25th anniversary in 2020, houses a team of highly specialised and diversely qualified professionals who come together to render custom-built IP solutions for high-profile companies. In enforcement scenarios, Carolina Daza Montalvo is the person that they seek out; she has a superb track record in tricky oppositions and has added greatly to it recently by acting for top automotive, retail, toy and other brands. Additional firepower is supplied by Alonso Josè Castrillón, a future leader of the practice who has proved his mettle in trademark litigation. As an international firm, ClarkeModet has more than 500 experts stationed in 26 offices in Europe and Latin America, giving it incredible international reach and a huge advantage when it comes to global prosecution and enforcement.

Silver - Firms: prosecution and strategy

Serving clients across Latin America and Europe, ClarkeModet perfectly combines a global outlook with a local touch. From offices in Lisbon and Porto, the Portuguese contingent ably dispatches all manner of IP briefs, from trademark protection programmes to domain name issues and anti-counterfeiting measures. With the firm’s sights firmly fixed on innovation, services are streamlined through cutting-edge IP management systems that monitor for potential trademark infringements. Praised for her “initiative and innovative IP solutions and strategies”, María Cruz Garcia is a talisman for the team. As the senior global account manager, she has forged longstanding international connections and brought on board several new clients as a result. Joining Garcia in the rankings for the first time this year is Ana Fidalgo, another engine of the practice. She views trademark prosecution both in Portugal and abroad with a practical, well-informed eye.

Silver - Firms: prosecution and strategy

Breaking into the Uruguay rankings for 2022 is “traditional and highly prestigious” IP outfit ClarkeModet. A potent global force, it leverages 140 years of specialised IP experience to provide a tailored and innovative service to its international clientele. Thanks to cutting-edge blockchain initiatives and a recent alliance with the Smart Protection start-up, clients can now monitor their trademarks online in real time to identify any infringement concerns – a major draw in the current climate, where online marketplaces and social media have taken centre stage. Running the show in Montevideo is general manager Fabiana Penades, who boasts a wealth of knowledge in all trademark-related matters. Through close and productive relationships with colleagues worldwide, she facilitates the seamless delivery of services to patrons wherever their interests must be pursued.

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Eminent international IP firm ClarkeModet is well established in Chile, having had a presence in the jurisdiction for more than 20 years. Prolific in filing, the well-specced local team provides rigorous support at every stage of the brand journey, capitalising on know-how in areas such as IP management, valuation and commercialisation. A significant development in 2020 saw the arrival of senior consultant Diego Acuña, who has considerably boosted the ensemble’s enforcement practice. The former Beuchat, Barros & Pfenniger associate has handled significant criminal infringement mandates for a leading Japanese electronics company and a multinational telecommunications player, with impressive results to show for it.

Bronze - Firms

With a far-reaching international presence, ClarkeModet is a sure choice for brand owners seeking top-rate trademark services across Portuguese and Spanish-speaking nations. Though well known for its percipient take on trademark filing and prosecution matters, the practice has also recently branched out to handle complex technology, data privacy and e-commerce issues too. Continually adapting and evolving to reflect changes in industry – despite being a few years short of its 150th anniversary – the firm has seamlessly incorporated new technologies and innovative legal tools into its everyday practice. Clients highlight the “professionalism of each lawyer, rapid response times and the extensive knowledge and experience within the team, which provide a high degree of confidence when making decisions”. Contributing to this confidence is Maria Cecilia Aloise, the business development director and prosecution director in Argentina. Having worked in law firms not only at home but also in Italy, she has an international perspective on everything from the registration of trademarks to their utilisation as a commercial asset.

Bronze - Firms

Of ClarkeModet’s 600 attorneys, 100 are based in Mexico, where the firm has been present for more than five decades; it knows the lie of the land and has the bandwidth to handle a huge volume of trademark instructions. The firm at large has seen a lot of positive change recently with the creation of a new innovation, enterprise, valuations and licensing focused consulting practice, the launch of an international business development team, the deployment of new legal tech tools and a rebrand are all significant developments that collectively enhance the firm’s offering. Nahanny Canal serves as prosecution director; José Miguel Mena is a useful contact for litigious matters.

Firm Profile

ClarkeModet is the largest international IP group specialised in the European and Latin American markets, with 10 companies, 22 offices and a multidisciplinary team of over 500 experts. ClarkeModet currently manages one out of every 10 trademarks of international origin in Spanish and Portuguese-speaking countries.

In addition to providing prosecution and enforcement IP services (registration, maintenance, defence and monitoring of IP rights), ClarkeModet offers high-added value consultancy advice to trademark owners. The firm’s professionals do so through the transfer, use and exploitation of IP assets and by implementing work systems and policies aimed at generating a competitive advantage.

ClarkeModet was founded in Spain in 1879, with the current structure dating back to 1892 following the merger of Clarke y Cia and Agencia General de Patentes y Marcas. International expansion started in 1940, establishing new IP companies in Portugal and Latin America.

The group is present in Argentina, Brazil, Chile, Colombia, Mexico, Peru, Portugal, Spain, Uruguay and Venezuela, with three international desks (Asia Pacific, Europe and North America), together providing IP services in 180 countries.

The firm uses new technologies for both customer services and internal processes to guarantee quality and speed. The company is a pioneer in the use of blockchain and artificial intelligence to increase the protection of its clients’ assets in order to face new challenges in digital markets.

Trademarks

Clarkemodet excels in handling all aspects of trademark work, with more than 360 individuals involved in trademark services. They focus on the protection of clients’ trademarks, trade dress, domain names and commercial names, as well as on trademark portfolio and risk management. Technical services include prior art search; strategy protection per class of products and services, as well as per country; filing of applications before the relevant authorities; filing and answering oppositions; administrative nullity proceedings; infringement and cancellation actions/analysis for lack of use of a protected sign; licensing; and anti-counterfeiting services. This department covers a variety of areas, including food, fashion, medical devices and cosmetics.

Team

The team is made up of more than 500 professionals specialised in different areas of intellectual property, including engineers, European patent attorneys, lawyers and technology transfer consultants, who are frequently recognised by different IP rankings and legal directories.

Corporate social responsibility

Through its internal regulations and corporate culture, ClarkeModet supports different social interest initiatives, as well as inclusion and sustainability policies. The main lines of action for its corporate social responsibility (CSR) programme focus on the promotion of diversity in its teams through its inclusive recruitment policies.

ClarkeModet minimises environmental impact through electronic invoicing and file digitisation, as well as following programmes such as Ecoembes for recycling.

CSR initiatives also include the support of non-profit organisations and universities through the sponsorship of various programmes to promote intellectual property and stimulate innovation.

Good governance

The commitment to apply best business practices and to comply with both internal regulations and applicable legislation is one of the cornerstones of the firm's corporate culture.

When carrying out business, ClarkeModet follows best international practices and standards of good governance, as well as ethics as defined in its codes of conduct – which serve as the basis supporting employees, directors and administrators to tackle present and future challenges.

All the group’s companies have their own ethics code and whistleblowing channels based on the corporate model, which defines the values, commitments and responsibilities we have fostered. The principles of our ethics code are applicable not only to internal conduct, but also to our relationships with direct stakeholders: clients, suppliers, competitors (“winning the right way”), allies and public administration departments.

The whistleblowing channels are open to third parties so any person can place, consult or make complaints and queries related to the ethical standards of ClarkeModet, all under the principles of confidentiality, veracity, objectivity, independence and professional secrecy.

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