The powerhouse IP team at Romero Pineda remains a market leader, assisting such household-name multinationals as Disney, Kraft-Heinz and Pfizer with the maintenance and defence of their global IP portfolios. The team is led by managing partner José Roberto Romero, an authority in the IP field whose expertise spans a broad range of industries, including telecoms, real estate, entertainment, pharmaceuticals, and food and beverages, and litigation practice director Carlos Castillo, who brings over 30 years' experience to his handling of IP enforcement and anti-counterfeiting disputes. The team was bolstered at senior level in March 2023 by the elevation to the partnership of Elsy Duran, the founder of the firm’s foreign IP matters division, who advises clients on searches, new filings, assignments, mergers and prosecution. Capable support is provided by associates Nadya León, who has notable strength in opposition actions, objections and refusals, as well as extra-judicial negotiations related to the protection and enforcement of trade marks, and Susana Navarro, who assists clients with the registration of their industrial designs, patents, utility models and domain names.
Intellectual property in El Salvador
Romero Pineda
Practice head(s):
José Roberto Romero; Carlos Castillo
Testimonials
‘Elsy Durán is excellent – she has knowledge of the subject matter and provides essential follow-up on the processes entrusted to her.’
‘The team stands out for its ability to analyse and solve problems, as well as the personalised client service.‘
‘Romero Pineda is a leader in intellectual property and the legal management of brands in El Salvador. There is no other law firm that compares to the service, quality, knowledge, support and commitment that each member of its team possesses.‘
‘Their involvement with our brand and the dedication they show is incredible. We feel very supported and well advised by Romero Pineda. It is always difficult for us to quickly understand legal matters, but the Romero Pineda team always makes things easy and understandable for us.‘
Key clients
Brandstock (now Questel)
Productos Alimenticios Bocadeli
Brinker International
Proyecciones y Administración Empresarial
PAE Global
Arch Resources Group
Grupo Bimbo
Ferrari
Studio Torta
Pfizer
Camelier Advogados Associados
Becerril, Coca & Becerril
Janssen Sciences Ireland
Godiva Belgium
The Walt Disney Company
Grupo Hilasal (Inversiones Hilasal, Textiles San Andrés, Exportadora TSA, Fundación Sagrera Palomo)
Work highlights
- Providing portfolio management services for IP provider Brandstock, including renewal procedures for around 180 trade marks of different owners such as GAP, BASF, Reckitt Benckiser, 3M and the Kraft Heinz Company.
- Handling all of Productos Alimenticios Bocadeli’s trade mark searches, new filings, prosecution, renewals, and IP strategies in El Salvador, Guatemala, Honduras, Costa Rica, Nicaragua, Panama, Belize, Dominican Republic, Peru, and the US.
- Advising Proyecciones y Administración Empresarial, PAE Global and Arch Resources Group on registering its trade marks across Central America, according to the IP Offices’ different criteria.
Arias
The experienced team at Arias leverages the bench strength of seven offices throughout the region to advise prominent multinationals such as Procter & Gamble, Philip Morris and Chevron on the safeguarding and management of their international IP portfolios. With a client base spanning the food and beverages, pharmaceuticals, retail, tech, and manufacturing sectors, the group assists with the full spectrum of trade mark and patent matters, including high-stakes infringement actions, registrations, renewals and post-registration changes. In addition, the team has notable expertise in handling the IP due diligence for major M&A transactions. Morena Zavaleta, who brings 25 years' experience in the IP space to the group and serves as the firm’s regional director of IP and life sciences, steers the team. She is supported by senior associate Marcela Canjura, whose skill set extends to cover clearance searches, trade mark registration proceedings, oppositions, trade mark assignments, licensing agreements and voluntary cancellations.
Practice head(s):
Morena Zavaleta
Testimonials
‘What sets Arias’ attorneys apart from their competitors is their hard work and great sense of loyalty and commitment.‘
‘Arias is a regional firm, which allows for the standardised management of processes in different countries. This translates into a competitive advantage.‘
‘Morena Zavaleta has extensive experience in the intellectual property area, which makes it easier for her to provide practical and efficient solutions to her clients.‘
‘Marcela Canjura is our direct contact within the team and she has always provided us with excellent service. She is proactive, assertive and highly professional in all the matters in which she supports us. She always goes the extra mile.’
‘Morena Zavaleta does an exceptional job and follows up on all issues.‘
‘Marcela Canjura is a star lawyer and is essential for us as a company. She is very proactive and always goes the extra mile.‘
‘Their response time is short, they provide detailed explanations and have good availability. Morena is always willing to answer our questions, even by phone.‘
‘The service provided by the Arias intellectual property team is highly efficient. They are always willing to help their clients and constantly provide solutions to make our business more efficient.‘
Key clients
Procter & Gamble
Philip Morris
Inditex
Chevron
Rolex
H. Lundbeck
Natura & Co (Avon, The Body Shop, Aesop)
Sanofi
AB InBev
BASF
Work highlights
- Filed an opposition on behalf of Colombina against the trade mark application for Arcor Natural Break, based on the client’s trade mark Break.
- Filed changes of address for the entire trade mark portfolio of Tommy Hilfiger in El Salvador.
- Filed an opposition for retailer Rocco Donna Holding against the trade mark application for Rocco Donna Professional.
Espino Nieto & Asociados
The intellectual property group at Espino Nieto & Asociados provides a comprehensive service to clients, advising on trade mark searches and audits, filings, renewals, changes of name, patent prosecution and the IP aspects of franchise agreements, in addition to handling IP litigation. Danilo Rodríguez is the key contact.
García & Bodán
The intellectual property group at García & Bodán maintains a strong regional presence, coordinating with the firm's other offices in Guatemala, Honduras, Nicaragua and Costa Rica to advise global brands such as PepsiCo, Mattel and Kraft Heinz on the safeguarding and management of their international trade mark, copyright and patent portfolios. The practice’s broad spread of sector specialisms ranges from food and beverages, aviation and telecoms to fashion, hospitality, pharmaceuticals and apparel. In addition to providing a comprehensive service in administrative and judicial IP litigation and enforcement strategies, the practice handles patent matters for entities engaged in scientific research and development, including advising the Ministry of Education, Science and Technology, through the Direction of Educational Technology and the National Centre for Scientific Research of El Salvador (CICES). Experienced litigator Julio Vargas heads the team; he also has expertise in health registrations and domain names matters. Other key figures include senior associate Fermina Bolaños Meardi, who brings to the table strength in patent and trade mark management and regulatory issues related to chemical, veterinary and hygienic products, and associate Rodrigo Benítez Nassar, who manages complex data protection issues.
Practice head(s):
Julio Vargas
Testimonials
‘Julio Vargas is very diligent and always sends reminders regarding trade marks that are about to expire. When requesting their advice on the registration of brands, his analyses are concise and realistic. For all these reasons, we trust him with our affairs in the jurisdiction.‘
Key clients
PepsiCo
The Kraft Heinz Foods Company
Grupo Televisa de México
Grupo Lala de México
Crocs
Sky/DirecTV
Converse/All Star
Mattel
PedidosYa (Delivery Hero)
Hurley
Work highlights
- Advised Mattel on anti-piracy measures to enforce its IP rights against imports from China that infringe its copyright over the Barbie doll and its trade mark over the Uno game.
- Advised PedidosYa on the registration of its trade mark portfolio in El Salvador and defending the brand against infringement through oppositions proceedings against similar trade marks.
- Representing Sky International in administrative trade mark litigation in defence of its Sky trade mark.
Consortium Legal
The experienced team at Consortium Legal works closely with the firm’s other regional offices in Costa Rica, Guatemala, Honduras and Nicaragua to manage and safeguard the intellectual property of domestic, regional and multinational corporations across such sectors as pharmaceuticals, banking, healthcare, food and beverages, and cosmetics. The firm’s comprehensive service extends to matters involving copyright, patents and trade marks, sanitary and pharmaceutical registrations, and litigation. The practice is headed by Suzane De Tablas, who has over 22 years’ experience in the practice area, advising on border actions, trade mark nullification and cancellation for non-use, copyright infringement, licensing, franchise contracts and IP due diligence on corporate transactions. The team is supported by senior associate Francisco Medrano, who specialises in trade mark proceedings before the Trademark Department of the Intellectual Property Registry of El Salvador and assists clients with matters related to unfair competition and anti-piracy through advising on border measures and the cancellation and nullity of trade marks.
Testimonials
‘Suzane De Tablas and Francisco Medrano have always known how to give quick answers and they are correct in their assessments. When objections arise, they take care of finding the best solution.’
Key clients
Zuffa
Banco Bilbao Vizcaya Argentaria
World Vision (Visión Mundial El Salvador)
AIDS Healthcare Foundation
Procaps
Zodiac Intenational Corporation
Mercadona
Heca Global
Digicel Caribbean
Rappi
Work highlights
- Successfully resolved for Unipharm trade mark cancellation processes due to non-use to protect the client’s pharmaceuticals products in El Salvador.
- Assisted AIDS Healthcare Foundation with IP issues relating to the opening of its operations in El Salvador, including the registration of trade marks and distinctive signs.
- Assisting in the maintenance and defence of trade marks such as Pollo Campero for CMI, as well as advising on brand negotiation processes relating to the expansion of its operations.
CENTRAL LAW El Salvador
Counting major multinationals from the aerospace, fashion and automotive sectors, among its clients, CENTRAL LAW El Salvador harnesses the combined bench strength of seven offices across the region (in Guatemala, El Salvador, Honduras, Nicaragua, Costa Rica, Panama and the Dominican Republic) to advise on the management, registration and safeguarding of intellectual property portfolios. The practice is headed by Sandra Cabezas, who specialises in IP disputes in the medical devices sector and matters involving patents, copyrights, health regulations, franchising, licensing and consumer rights; experienced IP litigator and arbitrator José Manuel Argüello, who routinely assists companies in the food, agriculture and pharmaceutical industries; and associate Fernando Argumedo.
Practice head(s):
Sandra Cabezas; José Manuel Argüello; Fernando Argumedo
Testimonials
‘What sets Central Law apart is the truly personalised service and the quality of their handling of each matter. They strive to validate the client’s requirements and align or intervene with the authorities if necessary, so as to expedite or clarify the evaluation criteria.‘
‘Cordial and polite treatment, agility and proactivity in the management of our matters.‘
Key clients
Almacenes Vidrí/Novex
Olympus
Abbott Laboratories
Pricesmart El Salvador
Grupo Profarmaco
Distribuidora Liverpool
Alcon/Novartis
Pan Sinai
Alura Animal Health and Nutrition
Abbvie
Editorial Santillana
Grupo Cuantico
Faesfarma
Global Farma
Work highlights
- Assisted with the registration of over 60 trade marks across El Salvador, Guatemala and Costa Rica for Almacenes Vidrí (in El Salvador) and Novex (Guatemala and Costa Rica).
- Assisted Olympus with obtaining more than 170 registrations of medical devices.
- Providing continuous assistance to Abbott Laboratories with the development of strategies to maintain its current sanitary registrations and the authorisation of its products, adapting to changes in local regulations and criteria.
ECIJA
The intellectual property group at ECIJA benefits from the firm's extensive regional and international presence (made up of 33 offices in 16 countries across Central America, Europe and Asia and strengthened by the firm’s March 2023 alliance with Anglo-German firm Taylor Wessing LLP) to develop brand protection strategies for major multinationals. With a client base spanning such sectors as consumer goods, manufacturing, and food and beverages, the team offers a comprehensive service covering brand litigation, trade mark oppositions and appeals, copyright matters, and trade mark registrations and management. Drawing on firm-wide expertise in the TMT space, the team also handles the transfer of economic rights, source code and software protection, and confidentiality and non-compete agreements in this area. The group is headed by experienced managing partner Alfredo Navas, a specialist in the legaltech and industrial and audiovisual media areas; Carlos Gil, who has strength in a wide range of TMT-related matters; and associate Alejandra Gómez, who is well versed in blockchain matters.
Practice head(s):
Alfredo Navas; Carlos Gil; Alejandra Gómez
Key clients
Motocity
City Express
Academia Europea
Church and Dwight
Toto
Villareal División de Equipos
Laca Laca
Mediprocesos
Novalaser
Corporacion Saint Germain
Grupo Decoarte
Work highlights
- Assisted Toto with the implementation of a trade mark protection strategy throughout the Central American region.
- Assisted Church & Dwight with the implementation of a trade mark protection strategy in El Salvador, including the registration of trade marks and advertising signs.
E-Proint
Following the the launch of its Salvadoran office with the October 2020 arrival of IP head Edy Guadalupe Portal and her team from Portal & Asociados, IP specialist E-Proint (which has a network across Central America and the Caribbean) continues to advise on the management, expansion and protection of the trade mark portfolios of major multinationals such as Moderna, GlaxoSmithKline and Red Bull. The team has notable strength in the pharmaceuticals, beverages, sports and fashion sectors. The firm provides a comprehensive service which ranges from advising on copyright, patent, trade mark and industrial design matters to handling IP litigation and assisting with due diligence and cybersecurity issues. The team is supported by senior associate Helen Menjivar, who assists clients with patent prosecution and anti-counterfeiting matters.
Practice head(s):
Edy Guadalupe Portal
Testimonials
‘Eproint stands out for its quality to price ratio.’
‘Eproint’s team is very responsive and is capable of providing advice at a high level without any delays.’
‘The firm offers a centralised service. The communication is excellent and they are very efficient.‘
Key clients
Bayer
Moderna
Sandoz
GlaxoSmithKline
Eli Lilly
Red Bull
Cartoon Network (Warner Bros Discovery)
Puma
Davivieda
Mattel
Work highlights
- Advised Colombian bank Davivienda on the management of its trade mark portfolio.
- Successfully acted for Mattel in anti-counterfeiting cases.
LatinAlliance El Salvador
Coordinating with offices in Nicaragua, Guatemala and Costa Rica, the experienced team at LatinAlliance El Salvador benefits from a regional presence when advising on the management and protection of the intellectual property portfolios of domestic and regional companies across such sectors as healthcare, pharmaceuticals, food and beverages, and retail. The firm's expertise ranges from trade mark oppositions, transfer contracts and licensing agreements to patent matters, cease and desist letters, and trade mark litigation related to cancellation for non-use. The group is headed by regional IP director Fabiola Torres, who also leads the firm’s innovation and development practice. Associate Daniela Noyolas, who advises on trade mark registrations and post-registration procedures, joined from Arias in August 2022.
Practice head(s):
Fabiola Torres
Testimonials
‘The team is efficient and effective. Their willingness to collaborate with us on everything necessary, to fulfil all our requirements and go that extra mile to achieve the results expected always stands out.‘
‘Speed and efficiency in responses.‘
‘The team is quite fast in responding to queries, which demonstrates an important sense of urgency in meeting the needs of their clients.‘
Key clients
Altian Pharma (part of InsudPharma Group)
Grupo Carval
Laboratorios Medikem
Super Repuestos
SuKarne
Industrias La Popular
Pharmalat
Exell Business
Alutech
International Justice Mission
Winzzer Medical Corporation
Evenflo Company Holdings
Work highlights
- Acted for Panamanian company Industria La Popular in an opposition action to protect the Espumil trade mark, which is related to products such as soaps and detergents.
- Filed an opposition on behalf of Industrias la Popular to protect its rights to the Ambar and Ambarmatic trade marks.
- Acted for Industria La Popular in an opposition action to protect the Terso trade mark, which relates to products such as detergents.
Mayora IP
The team at Mayora IP (the specialist IP arm of Mayora & Mayora, S.C.) advises financial institutions and prominent multinationals in sectors ranging from pharmaceuticals, hospitality and food to banking, fashion, real estate and chemicals. The firm handles a steady stream of opposition actions, registrations and copyright licensing agreements. The team is headed by Edna López, the firm’s country manager for El Salvador, who has 15 years' experience in the practice area, with notable expertise in administrative litigation and matters involving anti-counterfeiting, copyright and patents.
Practice head(s):
Edna López
Testimonials
‘The Mayora team is made up of highly qualified and expert professionals, who coordinate their work perfectly to provide fast, quality responses.‘
‘Mayora’s lawyers have extensive experience and value in the field of industrial property. They manage important portfolios and matters and are perfectly aware of all the latest legislation and details that allow all types of matters to be resolved favourably. We would like to highlight the work carried out by Edna López, a specialist with a great reputation in the field.‘
‘This team handles everything from simple to more complex cases and has an exceptional ability to clearly communicate the alternatives and courses of action in each case, which is not very common in the local market.‘
Key clients
Deposito de Telas
Lenzing
McDonald’s
CEAT
Laboratorios Vijosa
Castel (Dimarti)
Ufinet
Optima Servicios Financieros
Banco Cuscatlán
Gruma
Panda Restaurant Group
Beiersdorf
Arochi & Linder
Akerman
Associated Milk Producers
Stemline Therapeutics
FitSpo Global
Cristiani Bukard
Inversiones Pragma
Haynes & Boone
Work highlights
- Assisting pharmaceuticals company Laboratorios Vijosa with a nullity action and oppositions to a counter party’s trade mark registration.
- Resolved a dispute over the unauthorised use of Panda Restaurant Group’s design trade mark.
- Assisted Keola with the trade mark registration process to expand its business in El Salvador.