Headrick Rizik Alvarez & Fernández‘s ‘organised, efficient’ team is regularly engaged to handle complex IP litigation, including annulment and infringement actions relating to patents, trade marks and industrial designs, in addition to providing pre-litigation advice. The department also has extensive experience in the prosecution of IP rights and in obtaining marketing approvals for pharmaceutical and food and beverage products. The trio leading the team is founding partner Mary Fernández and senior associates Miguelina Figueroa and Gabriella Villanueva; Fernández has a broad practice encompassing patent, trade mark and copyright matters, while Figueroa’s work ranges from due diligence and assistance with IP rights in sales transactions to data protection and privacy issues, and Villanueva's core strength lies in the life sciences and healthcare industries.
Intellectual property in Dominican Republic
Headrick Rizik Alvarez & Fernández
Practice head(s):
Mary Fernández; Miguelina Figueroa; Gabriella Villanueva
Testimonials
‘The willingness to collaborate and use all their resources to meet the needs of their clients is an element that differentiates them from other firms.’
‘Response times are short and their work is professional. They have been collaborative and understanding our of projects in Dominican Republic, and set out advice clearly.’
‘Headrick’s service is top notch. The team is very strong and there is always someone on the lookout for follow-up. The degree of knowledge to deal with complex issues is also remarkable. They are above the standard services in the country.’
‘Mary Fernández is a leader in the Dominican Republic with extensive knowledge in various branches of law and experience in IP. Miguelina Figueroa also shows strong leadership in complex issues and great skill in litigation. Gabriela Villanueva is very quick to respond and stands out for her impeccable handling of trademark issues.’
‘It is a team made up of and led by lawyers who have extensive knowledge of intellectual property. They are extremely well-prepared lawyers and creative in the legal strategies they propose. In addition, it is an organised, efficient team, which is reflected in the work they do, and this, in turn, makes the work much easier. Working with Headrick’s intellectual property team is always a pleasant and satisfying experience.’
‘Communication is always fluid and prompt, expectations are clear and deadlines met. They have a lot of expertise in their line of work. Compared to other firms, Headrick has the capacity to support clients in various legal matters.’
‘This practice already has a very solid reputation in the Dominican Republic and also regionally. I particularly enjoy how they bring together very well-prepared professionals with a long history of achievements in different fields.’
‘They stand out for the speed and quality of the answers to our queries.’
Key clients
Johnson & Johnson
Grupo SID
Merk Sharp & Dohme
Mejía Arcalá
Laboratorios Armstrong
Productos Farmacéuticos
Mapfre Salud
Pfizer
Caesars Entertainment
Grupo Puntacana
Productos Farmacéuticos Dr. Gray/Anest
Hilton Worlwide
Editora SM
Hersheys
Plaza Lama
Del Monte Foods
Autozone
Playa Hotel & Resorts
Argelia International
Upfield
Miniño Abogados
Miniño Abogados has recently been involved in precedent-setting work in the IP space, advising on the first-ever multimedia trade mark filed in the Dominican Republic. The group stands out for its expertise in trade mark and copyright-related litigation, but is also skilled in patent prosecutions, data protection, and regulatory and compliance matters. Its impressive client base includes household-name corporations from the pharmaceutical, entertainment and technology sectors, such as Meta Platforms. Urko Ochoa and managing partner Orietta Blanco, who lead the team, offer clients experience which spans the full scope of IP matters and also have ‘extensive knowledge of local and Caribbean regulations’. Pamela Hernández, who is an expert in trade mark prosecutions, as well as contentious IP matters, is another key name.
Practice head(s):
Urko Ochoa; Orietta Blanco
Testimonials
‘They stand out for the quality of all the work they deliver, giving results beyond what we expect. This is something that makes them unique in the sector.’
‘Orietta Blanco and Urko Ochoa, as well as the rest of the team, provide timely and accurate advice on extremely complex matters, giving the results expected.’
‘The detail in the information they provide is flawless.’
Key clients
Netflix
Amazon
Meta Platforms (formerly Facebook)
Philip Morris
Sanofi
E. & J. Gallo Winery
The DirecTV Group
Mondelez International
Starbucks Corporation
Edwards Lifesciences
Western Digital Technologies
Syngenta
Medtronic Logistics
Boehringer Ingelheim
Energizer
Ontier Holdings
Red Bull
Fresenius
Moroccanoil
BioMerieux
Staedtler
Haribo
Work highlights
- Assisted Ontier Holdings with the first-ever multimedia trade mark application in the Dominican Republic.
- Representing Philip Morris in a case which has moved before the Supreme Court of Justice relating to an opposition filed against the trade mark MARBLE in the Dominican Republic on the basis of the MARLBORO trade mark.
- Representing HBO in a signal piracy case against one of the main local cable TV providers.
Messina International
Messina International, whose diverse client base ranges from the technology to the life sciences sectors, is frequently instructed on traditional IP matters such as trade mark and copyright registration, but is also highly active in IP litigation and the IP aspects of licensing, distribution and supply agreements, regulatory compliance, technology transfers and advertising contracts, with notable strength in matters related to new technologies. Versatile IP specialist Ana Messina leads the team alongside Adelin Villalobos, who was promoted to partner in November 2023, and is praised for her knowledge of IP prosecution and litigation.
Practice head(s):
Ana Isabel Messina; Adelin Villalobos
Testimonials
‘The lawyers are efficient and accessible. Each answer involves a comprehensive explanation of the procedures.’
‘They stand out for their personalised service and attention to detail in the management of cases. We received excellent customer service and communication from Adelin Villalobos.’
‘Agility and commitment are displayed by Ana Messina and Adelin Villalobos.’
‘Adelin Villalobos is a professional who knows intellectual property, responds quickly and follows up on the procedures. An excellent lawyer.’
‘The Messina International team is exceptional, and I don’t say that lightly. They are our point of reference for doing business in the Dominican market. I have worked with other firms and this one stands out for the quality of its service and its impressive responses, no matter how complex the matter is. They compare to other international firms, living up to their name.’
‘They stand out for the quality of the customer service and their experience. Adelin Villalobos is a star – she handles all matters in an impressive way. Ana Messina leaves us speechless – she is the most experienced lawyer in the entire region.’
‘It seems to me that they are very efficient with the responses and follow-up they give on each of the cases in their charge, and they have a very orderly billing system. When they send communications about deadlines that must be met, they follow up very closely until they obtain instructions to proceed. They achieve all this because they have a good IT platform that allows them to keep strict control of their clients’ issues.’
‘In my particular case, I have had a direct relationship with Adelin Villalobos. I think she is an excellent lawyer – she gives very accurate advice when handling clients’ matters, she always stays very up to date regarding the criteria of the Trademark Office and she maintains good relations with its officials, which is important for be able to provide good monitoring of the processes. She is a proactive lawyer and very dedicated to her work, who has earned enough merit to become a partner in the firm.’
Key clients
Viafirma
JJ Martin Group (Salutti USA)/ John Ra
Brandstock Services
Alfaro, Ferrer & Ramirez (AFRA)
Deutsche Transnational Trustee Corporation/Empresas Polar
Insecticidas Internacional Dominicana/Agroser
Herrero & Asociados
Industrias San Miguel
Perfetti Van Melle
Work highlights
- Advising Deutsche Transnational Trustee Corporation/Empresas Polar on cancellation actions brought against two of their most important brands (Cervezas Polar and Maltin Polar), their flagship trade marks in the Dominican Republic.
- Advising Industrias San Miguel on regulatory affairs and compliance related to the manufacturing and commercialisation of products/goods in the Dominican Republic and foreign jurisdictions.
- Represented a major luxury brand in a trade mark infringement case, procuring the declaration of notoriety of the client.
Castillo y Castillo
With notable ‘experience in trade mark issues and coordinating legal matters in the Caribbean‘, Castillo y Castillo‘s intellectual property team is particularly active in advising on the management of IP portfolios for clients the consumer goods and food and drink sectors, although the group advises a range of multinationals and banks (major retail bank Banco Popular Dominicano remains a standout client). The group’s practice head is senior associate Carimer Guzmán, who is able to advise clients on a myriad of IP issues including administrative and contentious trade mark proceedings.
Practice head(s):
Carimer Guzmán
Testimonials
‘The firm has a lot of experience in trade mark issues and coordinating legal matters in the Caribbean. We have been working with them for many years and we consider them to be one of the best firms in the Dominican Republic.’
‘Carimer Guzmán has an extensive knowledge of the subject and impeccable case management skills.’
Key clients
Yildiz Hondling
Industrias Banilejas (Induban)
Belcorp
Danone North America
Banco Popular Dominicano (BPD)
UPL
Grupo Bimbo
Pattishall, Mcauliffe, Newbury, Hilliard & Geraldson
AJE Group
Ecolab
Work highlights
- Representing Yildiz Holding in the prosecution and maintenance of its large trade mark portfolio.
- Representing Induban in the prosecution and maintenance of its large trade mark portfolio.
- Representing AJE Group in the prosecution and maintenance of its large trade mark portfolio.
Guzmán Ariza
Guzmán Ariza is well versed in advising on the management of trade mark, patent, copyright and industrial design portfolios for large multinationals and major regional companies, particularly those in the retail, food and drink, and pharmaceutical sectors. The team is also skilled in infringement and anti-counterfeiting litigation. Senior counsel Leandro Corral runs the team and is experienced in the management of IP portfolios and health registrations.
Practice head(s):
Leandro Corral
Key clients
Gold Star Tobacco
Sunwing Travel
Senninger Irrigation
Agrovet Market Animal Health
Rud Starcke GmbH & Co
SMA Solar Technology
XPonential Fitness
Productora de Capsulas Gelarina (Procap)
René Schönefeld Industries
DLA Piper
Celltrion
Zimpro
Work highlights
- Assisting Foton International with the IP due diligence relating to establishing their own dealership in the Dominican Republic and the Caribbean.
- Assisting Salvatore Ferragamo in the review and management of the IP aspects of the distribution contract for its products in the Dominican Republic and the Caribbean.
- Advising Domino’s Pizza on data protection issues related to its franchisee in the Dominican Republic, Caribbean Management Group.
JJ Roca & Asociados
JJ Roca & Asociados‘ IP practice often operates in a cross-border fashion, and has a strong presence in the food and drink sector, where it often manages IP portfolios for major clients. Sharin Pablo de Roca, who heads up the team, offer expertise which extends to IP matters in the life sciences and healthcare sectors.
Practice head(s):
Sharin Pablo de Roca
Key clients
The Coca-Cola Company
Kerry
Aerovias Del Continente Americano (AVIANCA)
Biofarma
Medtronic
Colombina
Western Digital Technologies
Next Level Authentic
Chery Automobile
Denk Pharma
LG Chem
Laboratorios Vizcaino
Laboratorios Pisa Bago Group
SwatchBravo
Les Laboratoires Servier
Work highlights
- Represented Swatch in litigation against Apple concerning the IWATCH trade mark in the Dominican Republic.
- Advising the Coca-Cola Company on the management of its entire IP portfolio for the Caribbean region, which includes 26 different jurisdictions.
- Representing Biofarma in numerous opposition and cancellation actions against similar pharmaceutical trade marks in the Dominican Republic.
OMG
OMG is highly proficient in trade mark registrations and administrative IP procedures. The group often assists clients with IP due diligence in relation to corporate transactions, as well as with IP issues relating to commercial contracts. Practice head Luis Eduardo Aquino has a strong track record in providing advice on trade mark registrations, among other IP issues. Senior director Angeannette Tejeda is notable for her advice to both local and international clients on the administration of their IP assets.
Practice head(s):
Luis Eduardo Aquino
Testimonials
‘It is a great team of lawyers.’
‘They have lawyers specialised in different areas. They are always willing to help and assist with whatever is necessary.’
Key clients
GD Midea Heating & Ventilation Equipment
Inter IKEA Systems
SICPA
Industrias San Miguel del Caribe
Cámara de Comercio y Turismo Domínico-Suiza
Corporación Andifar
CISA Dominicana
Alimentos Heinz de Costa Rica
Ourfo fino Saude Animal
GCS Investments
Work highlights
- Assisting SICPA with the IP aspects of a services contract, and its amendments, executed with the Tax Administration of the Dominican Republic (DGII) for the control, traceability and security system on alcoholic beverages and cigarettes in national production or being imported into the Dominican Market.
- Assisting Cámara de Comercio y Turismo Domínico-Suiza with the defence of nullity actions of the THINK sign filed by a counterparty before the Dominican IP Office (ONAPI).
- Assisting GD Midea Heating & Ventilation Equipment with IP issues relating to a distribution agreement for its products in the Dominican market by a new distributor, Oldach.
Pereyra & Asociados
Pereyra & Asociados‘ core strength lies in advising on local trade mark applications and registrations for clients ranging from start-ups to multinationals. Key sectors of expertise include technology, pharmaceuticals and tourism, among many others. Practice head Lorena Pereyra, who 'approaches IP issues with practicality and thoroughness', stands out for her advice to both Dominican and international clients on the management of their trade mark and patent portfolios.
Practice head(s):
Lorena Pereyra
Testimonials
‘Their level of IP expertise is outstanding. Their speed in attending to clients’ queries and focus on clients’ business needs is really impressive.’
‘Lorena Pereyra approaches IP issues with practicality and thoroughness. She understands clients’ business needs and focuses on them when addressing any IP issues.’
Key clients
Patrix IP Services
Nova Skin Products
Behrens Laboratories
Bbraun Medical
Winkler Partners (Giant Manufacturing)
McDonald’s
Yellow Pages – Caribe Servicios de Información
Mondelez International (Cadbury-Kraft)
Hanesbrands
Esso República Dominicana
CF Hotels (Marriott)
Centromoda
Hospira – Pfizer
Microtek (Ecolab)
Essity Hygiene and Health
Mary Kay
Fiduciaria Duit Capital
Xolver
Russin, Vecchi & Heredia Bonetti
Russin, Vecchi & Heredia Bonetti harnesses its firm-wide cross-border expertise and international network to assist local clients seeking IP protection in the US, Europe, the Caribbean, and Central American jurisdictions. Practice head Rosa Campillo Celado epitomises the group’s deep understanding of trade marks, patents and copyrights, and their associated administrative and judicial processes. Mónika Fiallo Paradas is highly experienced in IP matters and is a key point of contact for clients in relation to anti-counterfeiting cases.
Practice head(s):
Rosa Campillo Celado
Key clients
Goya
Volvo Bus Corporation
Hormel
LivOn
Bosch
Evliya Şekerleme
Array Technologies
Tetra-Pak
Oracle
Airbnb
Work highlights
- Advising a client in the storage rental sector on the IP aspects of a potential acquisition.
- Advised a major global food and beverages company on the IP aspects of its advertising campaign in the Dominican Republic.
- Advised a global company in the medical sector on the registration of the IP rights of a newco following its corporate reorganisation.
Ulises Cabrera
The IP and new technologies department at Ulises Cabrera predominantly advises on trade mark registrations, but the team is also skilled in handling opposition, cancellation and nullity actions, anti-counterfeiting cases and unfair competition claims. Its broad client base of both local and international clients continues to expand, with the team recently adding new clients such as Hersheys International. Group head Magdalena Almonte stands out for IP work in the consumer goods, food and beverages, life science and technology sectors. Managing partner José Cruz Campillo is another notable team member.
Practice head(s):
Magdalena Almonte
Testimonials
‘Great job in helping us navigate the Dominican procedures so that as a US firm, we could complete the necessary procedures.’
‘Magdalena Almonte was always aware of the processes and sought to offer practical and pragmatic solutions for our needs.’
Key clients
Grupo Familia
Cardinal Health
Cámara de Comercio e Industria Franco Dominicana
Inversiones & Negocios (INESA)
Novo Nordisk
Localpayment
Haleon
Pancommercial Holdings
Grupo Disagro
Xiaomi
Biologische Heilmittel Heel
Fresenius Medical Care
Inaru Valley
BGI Genomics
Quirch Foods
Alister
Avso Dominicana
Pangeo
Altian Farma
Piege
Holiday Club
IRIS
Zhejiang Geely Holding Group
PT Selamat Sempurna
Avianca
Incofe
Dixon Comercializadora
Jaleel & Company
American Outlet USA
Hershey International
Inversiones Hilasal
47 Brand
Jiangsu Chengxing Phosph-Chemical
Delixi Electric
Dutch Farms
Antonio P. Haché & Co
Wellspring Pharmaceutical Corporation
Arab Beverages Est
Internacional de Cerámica
VFS Global Services
Químicos y Lubricantes
Tuteur S.A.C.I.F.I.A.
Dismart
Emcure Pharmaceuticals
Inversiones Tunc
Suzhou Dake Investment Consultation Co
Productos Alimenticios Bocadeli
Work highlights
- Representing Productos Familia in a criminal action against Importadora Yingya for counterfeiting and border measures.
- Assisted 47 Brand with an opposition against the trade mark application for NY 47 ST NEW YORK ESSENTIAL BRAN, by the applicants Christian Trujillo and Modesto Quevedo.
- Represented Biologische Heilmittel Heel in an action for annulment filed by Laboratorios LAM against the registered trade mark NEURAX-HEEL.