BKM | Berkemeyer is a leading firm in the IP practice area. The team handles the full range of matters, from the registration of trade marks, domain names, patents and designs, copyrights and copyright procurement, to life science and agriculture regulatory, licensing, franchising, technology and biotechnology agreements. The firm also handles contentious matters, including enforcement and litigation at administrative, civil and criminal levels. The practice continues to grow, present at the firm's recently opened offices in Ciudad del Este, and advising major national and international clients, such as Nestec and Grupo Bimbo. Marta Berkemeyer heads the team, with support from Hugo Berkemeyer, who takes a lead role in many of the firm’s cases. Bárbara Dollstadt leads the litigation department and Cristobal Gonzalez, who oversees the patent department. Jaqueline Querciola and Irene Angulo jointly lead the trade mark department, and Valeria Carron heads the international department, receiving considerable praise from clients. At the associate level, Jazmin Hamuy, Viviana Rolon and Lilian Lopez are active members of the IP team.
Intellectual property in Paraguay
BKM | Berkemeyer
Praxisleiter:
Marta Berkemeyer; Irene Angulo; Bárbara Dollstadt; Cristobal Gonzalez; Jaqueline Querciola; Valeria Carron
Referenzen
‘What sets the BKM team apart from other firms is its organisation, capacity for work and response. It is worth acknowledging that all matters are up to date and under control, and they are always available to answer any questions and/or comments.’
‘The speed, response, capacity and attention of Valeria Carron from BKM | Berkemeyer is a plus for the firm, since in dealing with her in daily work, she denotes being a lawyer committed not only to her work, but also to her firm.’
‘We have worked with BKM for a long time now, and always feel our matters are being duly dealt with in Paraguay. The team is great and responsive, and the intellectual practice includes both patents and trade marks.’
Kernmandanten
The Walt Disney Company
The Coca-Cola Company
Amazon
Grupo Bimbo
Hugo Boss
Apple
Novartis
Rolex
Mc Donalds
S.C Johnson & Son
Unilever
Shell
Highlight-Mandate
- Assisting The Walt Disney Company with ongoing legal advice on all IP related issues.
- Providing The Coca-Cola Company with ongoing legal advice on all IP related issues.
- Advising Philip Morris Brands on ongoing legal advice on all IP related issues.
Abente Stewart
Intellectual property boutique Abente Stewart has an established reputation within the practice area in Paraguay. The team is made up of academic experts in the field, who also have extensive practical experience advising on a full range of IP-related matters. Senior partner Victor Abente Brun, who has previously held the position of Director of Industrial Property under the Ministry of Industry and Commerce, is a recognised figure in the IP practice area and a key contact at the firm. Managing partner Victor Abente Stewart advises local and international clients on IP contracts and regulatory matters, as well as administrative and judicial IP cases. Cecilia Abente Stewart has a range of experience handling IP-related matters, including trade marks, copyright and data privacy issues. Associate Patricia Brun stands out for her experience in administrative and civil litigation regarding IP matters, and also assists foreign companies with advertising-related matters.
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Cervieri Monsuárez
With offices in Paraguay, Uruguay and Bolivia, specialist IP firm Cervieri Monsuárez has a multijurisdictional approach and assists a range of both national and international clients. The practice advises on a full range of matters within the practice area, including the registration and protection of IP rights like patents, industrial designs, trademarks, copyrights, domain names, health registrations and plant varieties. Along with registrations and filings, the team also focuses on enforcement aspects. Diego Pérez heads the firm’s anti-counterfeiting practice, and the firm has its own online software that monitors clients’ brands and checks for counterfeit products. Pérez leads the team alongside Marcela Cárdenas, who heads the prosecution practice.
Praxisleiter:
Diego Pérez; Marcela Cárdenas
Referenzen
‘There are very few firms that I trust explicitly, and Cervieri Monsuarez is definitely one of them.’
‘They’re very competent and communicative. They seem to have good retention, in general, and have been good to work with as a result.‘
‘The team is very active in customs training events and that’s greatly supported our brand protection efforts.‘
Kernmandanten
Puma
Under Armour
Crocs
Adidas
Sporloisirs
The Polo/Lauren Company
Nike Innovate
Tommy Hilfiger Licensing
Chapter 4 Corp DBA Supreme
Dc Comics
Guccio Gucci
Gianni Versace
Chanel
New Era Cap Co
Schaeffler Technologies & Co.
OPI Products
Funko
Spin Master
Teledeportes Paraguay
Parfums Christian Dior
Highlight-Mandate
- Acted for Schaeffler Technologies in a private investigation that confirmed the sale of counterfeit goods; a criminal complaint was filed and a successful raid took place.
- Assisted Dinapi authorities with the raid of an online store selling thousands of counterfeit products using a social media account.
- Advised a number of sporting goods companies on counterfeit goods raids carried out in the city of Villarrica.
Ferrere
Ferrere handles the gamut of IP and regulatory matters, from trade mark, patent, design and domain name registry, to opposition matters and litigation. The IP team advises clients on the transfer of IP rights, and the drafting of licensing and franchise agreements, and handles the IP aspects of due diligence processes and M&A transactions. The practice’s strong international focus has led to the recent addition of several new major clients from a range of industries, including Shein, Prime Health and Bitmain Technologies. Practice co-head Néstor Loizaga focuses on contentious matters, leading the team in advising clients on IP disputes. He heads the team alongside senior associate Montserrat Puente, a highly experienced IP expert who is recommended by clients as 'a comprehensive advisor on complex issues'. Miguel Saguier, promoted to partner in January 2023, is an expert in IP-related contentious matters. Cynthia Sanabria was promoted to senior associate in January 2023, and has significant experience managing IPR portfolios and specialises in patent and trade mark filing and prosecution. Fellow senior associate César Benitez is involved in all of the firm’s IP-related disputes and contentious matters.
Praxisleiter:
Néstor Loizaga; Montserrat Puente
Referenzen
‘The team is great. Their service is accurate, fast, and they think outside the box for the client’s demand.’
‘Montserrat Puente is a very good attorney: she is responsive and assertive.’
‘Highly professional, with extensive experience in the practice of intellectual property.’
Kernmandanten
UPL
La Caoba
Loveland Products
Rigo Trading
Limagrain
Gutis
Unicomer
Nutrien
Association A Todo Pulmón
Rádio e televisão Bandeirantes (via Peduti)
Vet Plus Tangerine Group UK
Intelbras
CMPC
Sociedad Anónima Damm
Grupo Solid (Guatemala)
Biocon
Blink Bioscience
British American Tobacco
DirecTV
Indel
Moderna
Shein
GSE Group
Bitmain Technologies
Binance UAB
The Hoff Brand
Viñedo Emiliana
Smart Fit
Prime Health
Agri Terra
BFL Metal Production
IHG
Vivara Participações
Access One
Highlight-Mandate
- Assisting Rede Agro with a cross-border matter to defend the trade mark ORBIA.
- Represented Gloria in oppositions to its trade mark ECOLAT.
- Represented the Chilean vineyard Bodega Emiliana in the judiciary instance of an opposition filed by the Emilia Romagna association.
Mersán Abogados
Mersán Abogados offers a wide array of services through its IP team, advising on trade marks, copyright, industrial models and designs, patents as well as IP contracts, agreements, transactions, licenses and franchises. The firm has many areas of expertise, including advertising law, protection of data and digital law, unfair competition and regulatory law in the health, food and beverages sectors, as well as more specialised fields, such as the protection of plant varieties and biotechnology. The firm has experience in criminal prosecution, representing clients in copyright matters. IP expert Hugo Mersán leads the team, with extensive experience in case analysis, contentious matters, administrative prosecution and plant breeders’ rights. He heads the practice alongside Lorena Mersán, who comes with client recommendation, Melissa Stimson and Maria de los Angeles Barrios. Liliana Nolan completes the leadership team, 'an expert in patent and trade mark issues'.
Praxisleiter:
Hugo Mersán; Lorena Mersán; Melissa Stimson; Liliana Nolan; Maria de los Angeles Barrios
Referenzen
‘Mersan has a strong and dedicated IP team with years of experience.’
‘Our relationship with the lawyers is close, and they practice their advisory role, understanding the needs of the business.’
‘Responsible, punctual, accurate and committed.’
Kernmandanten
British American Tobacco
BASF
Sanofi
The Goodyear Tire & Rubber Company
Pernod Ricard
Itaú Unibanco
Millicom International Cellular
International Olympic Committee
Pierre Balmain
Burger King
Ebay
B. Braun Melsungen
3M Company
Calvín Klein
WD-40 Company
Lauro Raatz
Granja Avícola La Granja
Agrotec
Eno Bronstrup (E.B.S.A.)
Prada
Target Brands
Cepas Argentinas
Sony Interactive Entertainment
True Manufacturing
Laura Ashley
Pierre Fabre
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Vouga Abogados
The IP team at Vouga Abogados has worked to expand its patent portfolio recently, advising new clients on patent applications. The practice is also growing to handle regulatory affairs, data protection and matters related to IT and privacy law. The team assists clients with IP due diligences, and the IP aspects of M&A and other transactions. Team co-head Siegfried Vouga has taken a lead role in the growth of the practice, and in many of the key matters. He heads the team along with Laura Lezcano, an expert in IP matters, who is praised by clients for her ‘excellent work‘ and ‘deep knowledge and wide experience‘. Rodrigo Fernández de Nestosa also comes with client recommendation and focuses on IP-related disputes. At the associate level, Stephanie Medina focuses on administrative law issues, particularly related to non-contentious matters within IP, and Grecia Florentin plays a key role in the prosecution of the firm’s administrative IP cases. Manuel Acevedo comes with client recommendation.
Praxisleiter:
Siegfried Vouga; Laura Lezcano
Referenzen
‘Vouga’s business language is characterised by its ability to convey complex legal issues in simple terms. The firm is always quick to adapt to new legal landscapes in our ever-changing commercial projects, always keeping in mind our ethos and the necessities of our business and our stakeholders with practical solutions, transparent billing, and quick turn-around.’
‘Laura Lezcano always keeps our company and the necessities of our business in mind, keeping us aware of relevant news affecting our commercial interests.‘
‘Rodrigo Fernández is a source of extensive knowledge and wide experience in matters of counterfeit products and general IP, always available with sensible advice that keeps in mind the ethos of our company, and our strong focus on compliance.’
Kernmandanten
Banco Do Brasil
Eurofarma Laboratorios
Equifax
Continental Grain Company
Barenbrug
Fundacion Saraki
Prosegur Paraguay
Asociacion Civil Sistema B Paraguay
Andermatt Group
Alex
Brand Security
Advance China IP Law Office
DKT Paraguay
Petroquim
Luiz Leonardos & Advogados
Bolsa de Valores y Productos de Asunción
Hijas De Feliciana De Fariña
L’Acerie
Highlight-Mandate
- Advised L’Acerie in filing audio-visual programme VOCES DEL CAMPO.
- Advised Andermatt Group on filing several applications in Latam jurisdictions.
- Represented two multinationals from the US and Switzerland, each one facing a lawsuit for alleged high-value damages involving substantial copyright and trade mark related matters.
Zacarias & Fernández
Zacarias & Fernández is a boutique IP firm that advises national and international clients on all types of copyright, trade mark and patent matters. The IP team is also expanding to include data protection work and advice to foreign investors looking to establish operations in Paraguay. Founding partner Wilfrido Fernández leads the team, with support from José Martí, who has experience in patent and design matters.
Praxisleiter:
Wilfrido Fernández
Kernmandanten
GlaxoSmithKline
Intel
Pfizer
ExxonMobil
Corteva
Red Bull
F. Hoffmann – La Roche
Highlight-Mandate
- Advised Kimberly-Clark Worldwide on its right to a Pantone code elliptical design, having obtained a final favourable resolution after an initial rejection from the trademark office.
- Advised Gopro Inc on oppositions against the trade mark applications for ‘GOAL PRO’, class 9 and 35.
- Advised Super Magnificent Coffee Company Ireland on the application for the trade mark ‘THE COFFEE BEAN & TEA LEAF’ in Paraguay, seeking protection for goods in class 30.
Olmedo Abogados
The IP team at Olmedo Abogados has seen a significant increase recently in the number of trade mark filings it is handling. The firm has been particularly active in the pharmaceutical sector, which has seen a recent boom in new inventions, filing new patents for pharmaceutical companies. Sebastian Olmedo leads the team, with a focus on litigation matters. Practice co-head Araceli Gonzalez has extensive experience in the management of clients’ IP rights, including litigation and enforcement. She also drafts and provides advice on confidentiality contracts, image rights, trade secrets, franchises and use licenses. Associate Julia Schmidt left the firm in September 2022.
Praxisleiter:
Sebastian Olmedo; Araceli Gonzalez
Kernmandanten
Unicentro
Corporacion Biotecnica
Procaps
Shandong Weifang Rainbow Chemical
P.T. Selamat Sempurna
Embotelladora Central
Sindicato De Músicos De La Sinfónica Y Cámara De Asunción
Amandau
Quasar Trading
Compañia Administradora De Riesgos
Highlight-Mandate
- Advised Unicentro on renewing its best-known trade marks in Paraguay.
- Advising Embotelladora Central on registration of more than 100 trade marks.
- Assisting Sindicato De Músicos De La Sinfónica Y Cámara De Asunción with filing trade marks and assessment regarding copyright infringements suffered in Paraguay.
Peroni Sosa Tellechea Burt & Narvaja
Peroni Sosa Tellechea Burt & Narvaja‘s IP team is made up of highly experienced IP specialists, who advise national and international clients on trade marks, patents, utility models and designs to registration and commercial use in Paraguay. The firm offers advice on concessions and licensing of brand name products, services and drafts, registration of distribution, representation, and agency rights contracts. The team also handles contentious matters, including litigation and opposition matters. Practice head Elba Britez de Ortiz has nearly 50 years of experience in the IP practice area and leads the team alongside Mariana Peroni and Juan Ortiz Britez, an IP specialist with over 20 years experience.
Praxisleiter:
Elba Britez de Ortiz; Mariana Peroni; Juan Ortiz Britez
Referenzen
‘We have been working with Peroni Sosa for many years, they are excellent professionals, agile, responsible and have affordable costs. We have worked with other law firms but with Peroni Sosa we feel more comfortable because of their way of working.’
‘They are responsible, agile and work very well. We have never had problems with any trademark or patent process. Outstanding associates are Juan Ortiz and Elba Britez.’
Kernmandanten
7-Eleven
Ab/Inbev (Holding)
Athleta
Banana Republic
Banco Atlas
Bridgestone
Licensing Services
Cervepar
Claro
Toy Cantando
Cervepar
Claro
Farmedis
Ford
GAP ITM
Grupo Televisa
Laboratorios Bagó
Mary Kay
National Academy of Recording Arts & Sciences (Grammys)
PI Industries
Sesderma
Starbucks
Sumitomo Chemical Company
TOE I Animation
Trovato
UPL
Vicente Scavone & Cia
Highlight-Mandate
- Represented Starbucks in a range of matters, including a market investigation regarding infringement of trade mark registrations.
- Managing AB InBev’s trade mark portfolio.
- Advised Grupo Televisa on a settlement agreement with Disney Enterprises and have withdrawn the oppositions against its trade mark applications.