practice areas
Intellectual Property
Our department, created in 2002, offers services relative to intellectual property rights in Guatemala, as well as in other countries in the Americas, which is centralized from our headquarters to other jurisdictions.
Currently, we are a recognized firm for the practice and expertise in this field, which has led us to have high prestige directorates, such as Chambers & Partners and Legal 500, consider us as a leading firm in Intellectual Property.
““The firm is known as one of the leading intellectual property firms in Guatemala. Clients entrust their cases related not only to trademarks and patents, but also to other very new areas of intellectual property including the transfer of technology, licenses and knowledge of unfair competition, fight against counterfeiting, copyrights, litigation and application. The firm is able to meet client needs because the culture of the company is one of continuous growth, learning and proactive preparation at all times. One of the key skills of the intellectual property team is careful strategic planning and the application of intellectual property portfolios. The firm is known for its ability to aggressively litigate and enforce intellectual property rights in the complex Guatemalan market, as well as throughout Central and South America”. ”
In 2020, our Intellectual Property department was recognized as “Guatemala Trademark Firm of the Year” by IAM (Intellectual Assets Management) and World Trademark Review (WTR).
“Local trademark counsel for Apple, Starbucks, Gilead Sciences and Giorgio Armani (to name but a few), Palomo is fully deserving of its tier 1 spot in the WTR 1000 rankings this year. “Thorough, direct and well organised,” its internationally renowned trademark practice collects the best reviews in the whole jurisdiction, a sign of true patron satisfaction. One comments: “Palomo’s attorneys are reliable, client-oriented, responsive and have a deep knowledge of intellectual property; the firm is really the best we have been working with in the whole Latin American region.” International superstars Sandra Iriarte and Héctor Palomo run the show at this cost-efficient boutique. Iriarte, co-founder of the IP department, has a knack for large multinational portfolio management, deftly helping patrons to “navigate around pitfalls and obstacles”, but is also “hugely successful at defeating opponents in complicated disputes involving multiple applications, registrations and competing products”. Another referee remarks: “Our correspondence with her has always revealed thoroughness and profound knowledge of the subject matter; the quality of her work is really outstanding.” The other half of the dynamic duo, Palomo is the current co-director of the IP practice, standing out for “the quality of his arguments, proactive services and prompt responses”.”
Distinctive signs
Our department provides legal services for the prosecution, registration, renewals and recordals such as licenses of use, assignments, relative to distinctive signs (trademarks, advertising expresions, tradenames, appellations of origin, geographical indications).
We have a software system for control, monitoring and case alarms that allows us to effectively manage clients, the distinctive signs of our clients, as well as portfolios of large companies in Latin America.
We offer our clients the service of monitoring and reporting on distinctive signs and patents filed by third parties and published by the Intellectual Property Registry, in order to send warnings to our clients about any request that may affect their rights.
Patents of invention, utility model and industrial designs (national and PCT)
We evaluate and advise on the best method of protection in Guatemala and other countries, for patents of invention (national phase or PCT), utility models and industrial designs; for which we conduct state-of-the-art searches, where we give our technical and legal opinion on patentability. We make applications to obtain the registration, the response to form requirements and we advise and assist in the defense of any possible opposition or rejection. We also take care of the maintenance (payment of annuities) of patents of invention, utility models and industrial designs.
We are experts on drafting, drawing up and negotiating contracts for the use of licenses, knowledge transfer and technology transfer in relation to patents. We also conduct and advise on the best way to record changes of the holder’s name, address changes, division and mergers for invention patents, utility models and industrial designs.
Copyright and related rights
In our firm we provide legal advice on copyright and related rights, in matters related to the different types of works: literary, artistic and scientific, for naming a few. We service a variety of authors, performers and producers, among others, with different needs within this field, giving them the best solutions to protect their rights in this branch.
We have successfully handled the protection of computer programs (software), which has been positioning us as a leading firm in the legal advice of these rights in the face of the accelerated growth of this type of creations nowadays in Guatemala and the rest of the world.
Intellectual Property Contracts
Our advice concerning contracts ranges from the due diligence and analysis of the portfolios of intellectual property, review and drafting of the necessary documents for the sale, distribution, merger, transfer, transfer of knowledge or industrial secrets (know-how), copyright, confidentiality clauses, and generally, all kinds of acquisition of intellectual property assets for a wide variety of industries.
Intellectual Property Litigation
We advise on any dispute related to intellectual property rights of trade names, trademarks, advertisement signals, patents of invention, utility models and industrial designs and corporate secrets, in both administrative and judicial matters. This includes objections, oppositions, unfair competition lawsuits, infringements, cancellation due to non-use and nullities.
We also advise and represent clients before the Public Prosecutor's Office against Intellectual Property Crimes, in relation to piracy, counterfeiting and the implementation of border measures at customs office.
Our advice to clients contemplates an innovative and responsible legal strategy which we provide starting from our legal opinion on each matter, where we recommend the actions to be taken, up to the beginning and completion of any legal action that takes place.
We focus on performing the analysis and process of the trial together with the litigation department which provides comprehensive, technical and more efficient counseling that guarantees a correct defense of the intellectual property rights of our clients.
Given the exponential growth of national and international trade, it is inevitable that there is an increase in activities that seek to damage the intellectual property of our clients. Counterfeiting, piracy and smuggling, among others, are actions that have become more common and have been an essential part of the needs we have solved for our clients.
Our firm grants a great interest to the enforcement of intellectual property in the country, carrying out training programs to related authorities (Public Prosecutor’s Office, Superintendence of Tax Administration, Judges, Magistrates, Intellectual Property Registry), also, we are responsible for conducting market surveillance. We also conduct online research on product sales platforms to detect violations. This plan has been successfully developed in our country and also in countries of Central America and South America.
SANITARY REGISTRATION
Counseling in Guatemala and Central America in obtaining new licenses and sanitary registries, their modifications and renewals for the commercialization of food, cosmetic, hygienic, and pharmaceutical products before the Ministry of Health and phytosanitary, veterinarians, and others before the Ministry of Agriculture, Livestock and Food (MAGA, for its initials in Spanish) as well as regulatory advice for the import and export of products to Guatemala from other countries and vice versa.
In this area, we also advice our clients in administrative and judicial actions relative to licenses and permits.
