Rodrigo Bermeo Rosales

 

Senior 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
Doctor in Law, 1983, Catholic University of Quito

American and International Law, 1986, Southwestern Legal Foundation, UT Dallas

Transfer of Technology, 1988, International Law Institute, Rome

ADMISSIONS
Ecuador, 1983

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

LANGUAGES
English
Spanish

 

With over 30 years of experience in IP, he is the head of our firm. His main practice is focused in all matters related to Intellectual Property and Corporate Practice. Rodrigo has represented many of the Global 500 companies in the prosecution of their patents and trademarks, as well as in the exploitation of their IP rights through franchising, licensing, distribution agreements, or by incorporating local branches or acquiring companies.

Rodrigo handles complex IP litigation, and is often dealing with high profile cases. In Ecuador’s largest IP case he was counsel for British American Tobacco against Philip Morris in the dispute for trademark Belmont. This case not only involved trademark issues such as the local ownership of the mark but also addressed issues such as free trade in the Andean Community, and required lobbying, legal reforms, and media.

Leadership:
Lecturer of Patent & Trademark Law, Catholic University, 1985.

Past President of Licensing Executives Society LES ANDINA.

Secretary and Member of the Board of Directors of several multinational companies.

Publications:

  • The 85th. Decision of the Cartagena Agreement and Effects on the Distinctive Symbols;
  • Ecuadorian Chapters of Patents, Trademarks, Designs & Utility Models Throughout the World (Clark Boardman Publications);
  • Legal Systems of the World (Herbert M. Kritzer) Ecuadorian Chapters (2002).
  • Editorial writer for Diario El Tiempo, 1980's

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...

  • 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...

  • 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...

  • 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...

  • 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.

  • Telecommunication's infrastructure - Dec, 2018

    A North American company with operations in Central America invested US $150 Million in cellphone towers and infrastructure. 

  • 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...

  • 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...

  • 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...

  • 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...

  • 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...

  • 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...