Rodrigo V. Bermeo-Andrade

Partner

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World Trade Center B-12
Av. 12 de Octubre y Cordero
Quito, 170517, ECUADOR

+593 (2) 255-6028
+593 (2) 256-4620
LinkedIn Profile

 

EDUCATION

LL.M. in American Law, 2009; Boston University, Boston
Concentrations:

  • International Business Practice
  • Intellectual Property

Lawyer; B.A. in Law, 2007, Universidad San Francisco, Quito

ADMISSIONS

New York, 2011
Ecuador, 2007

Ecuadorian Supreme Court
Andean Court of Justice
Intellectual Property Office
All Courts in Ecuador

LANGUAGES

English
Spanish
French (basic)

 

Rodrigo formally joined our firm in 2005. He obtained his LLM in Boston University and is also admitted to practice in the State of New York. Before re-joining us in 2010, he worked at a top tier law firm in Washington, DC.

His main practice is trademark prosecution in Ecuador and Latin America. He handles IP matters such as trademark clearance, trademark applications and TM oppositions in all Latin America. He overviews and organizes regional trademark portfolios and handles regional litigation or oppositions.

In Ecuador, Rodrigo handles oppositions and trademark litigation and clients seek him for complex matters that require thorough and creative strategies.

Rodrigo also assists our clients in the commercial aspects of licensing or franchising, reviews international contracts for Ecuadorian law compliance, and counsels in matters relating taxation, and tax planning.

Leadership:

- International Trademark Association (INTA) Famous & Well Known Marks Committee, 2014-2015

- International Trademark Association (INTA) Famous & Well Known Marks Committee, 2016-2017, Case Law Practice Workgroup Leader

- International Trademark Association (INTA) INTA Bulletin, 2018-2019

- Contributor to the Trademark Working Group for its submissions to the U.S. Trade Representative, Direction for Innovation and Intellectual Property

Publications:

  • Effects of the VAT's zero-rate in the Ecuadorian productive industry, 2007.

Experience:  

  • Manchester United scores against #hashtag - Dec, 2018

     #Hashtags protected as trademarks have been arising uncertainty worldwide, Manchester United Limited opposed to the registration of #WE ARE UNITED EC.

  • A combination of two registered marks is still an infringement - Apr, 2018

    In Consolidated Artists B.V. v. Marroquinera S.A. the IP Office held that a combination of two registered marks resulting in a confusingly similar mark is not subject to registration.

  • Boomerang Protection - Sep, 2017

    SPEEDO Holdings B.V. filed an opposition against a local textile manufacturer who seeked protection for a similar boomerang device. The IP Office decided that even though the counterparty set out very detailed differences between the designs, the examination needed to see the marks as a whole, from the consumer's point of view, and rejected the application.

  • Subway vs Surfway - Nov, 2015

    In Doctors Associates Inc. v. Surfway, a riptide of C&D letters, and an administrative infringement action was needed to confirm the removal of the infringing SURFWAY restaurant in one of Ecuador's main surf villages, Montañita.

  • Chopin Vodka Secures TM Protection - Feb, 2012

    Polmos Siedlce secured registrations for its well-known marks CHOPIN VODKA after an initial rejection for alleged violation of Frédéric Chopin's name and likeness. The IP Appeal Board reversed the decision, granted the registrations and sets a new precedent in Ecuador.

  • Pisco Chile vs Pisco Peru - Feb, 2012

    The legal battle between Chile and Peru over the appellation of origin PISCO involves discussions regarding the fabrication process, quality, flavour and of course trademarks. Should the Ecuadorian Trademark office cancel the mark PISCO SOTAQUI from a Chilean company if the government of Peru challenged it?  

  • Rolling Stones v. Boca del Pozo - Jul, 2011

    Bermeo successfully represented Musidor B.V., the Dutch agent of the Rolling Stones, in an opposition against Boca del Pozo for an infringing trademark application on the Stones’ famous “Tongue and Lips” trademark.

  • Lego Group v. Consorcio del Pichincha - Aug, 2010

    Bermeo successfully represented the Lego Group in an opposition against Consorcio del Pichincha for infringing trademarkapplications of a design consisting of a car completely built by LEGO Blocks.

  • Telefonica v. Telefonica Ecuaphone - May, 2010

    In an unprecedented case in Ecuador, TELEFONICA from Spain files suit to change the company name of TELEFONICA S.A. ECUAPHONE. The IP Office ordered the Companies' Superintendence and the defendant to cease use of the name and set a deadline to adopt a new company name. On the risk of being terminated, the company had to amend its charter of incorporation and since May 19, 2010 is called Ecuaphone S.A.