3 Apr
2019

Argentina IP Firm of the Year: Marval, O’Farrell & Mairal

The Marval, O’Farrell & Mairal team

Q: Can you tell us about your team (size, practice focuses, key individuals, etc)?

A: Marval has the largest IP department in Argentina with more than 40 professionals – including nine partners and three of counsel – and an administrative team of 50 people, including paralegals and secretaries. Marval is the only law firm in Argentina with in-house employees covering all technical fields (eg, biotechnology, chemistry, pharmaceuticals, engineering, telecoms and oil), with six technical specialists.

The firm provides comprehensive services for the registration and protection of IP rights – including patents, industrial designs, trademarks, copyrights, domain names and plant varieties – and handles dispute resolution, border measures, highly complex transactional matters, IP due diligence, technology transfer, data exclusivity, advertising and entertainment law, internet and information technology, and unfair competition.

Marval has also developed a strong regional patent and trademark prosecution practice, which provides substantial benefits in terms of both cost efficiencies and quality.

Our key individuals include Iris Quadrio, Sergio Ellmann and Juan López Mañán in the trademark department; Martín Bensadon, Ignacio Sánchez Echagüe and Cristian Bittel in the patent department; and Gustavo Giay, Martin Chajchir and Diego Fernández in the IP litigation and IT departments.

Q: Which recent case has been your most memorable and why?

A: From a patent perspective, we are currently representing Gilead in what might be the most important patent infringement case in Argentina, relating to the enforcement of a patent covering a product for the treatment of Hepatitis C against several local generic companies. The case has different high-profile angles, from patentable subject matter to personal jurisdiction and issues involving agreements among the parties.

Regarding trademarks, we recently obtained a favourable decision in the landmark case Adidas v Juan Carlos Chillemi SRL, whereby the use of two and four stripes on footwear was considered an infringement of adidas’s three-stripe mark. We also obtained damages of Ps2 million plus interests, which was the highest award granted by a court in 2018 and ranks among the highest damages award ever granted by an Argentine court in a trademark infringement case.

Q: What are the main IP challenges facing rights holders in Argentina?

A: From a trademark perspective, 2018 was a hectic year due to significant changes to the Argentine Trademark Law, which had a high impact on the opposition system and introduced the partial lapsing of trademarks.

The new opposition system was implemented in the fourth quarter of 2018 and trademark owners are having to adapt to a completely new system, which aims to be in line with international standards. The changes are still underway.

With regard to patents, the main challenge for applicants today is probably the fact that Argentina is not yet a member of the Patent Cooperation Treaty. Other major challenges arise in the fields of pharmaceuticals, biotech and chemistry, as the Patent Office has issued new sets of guidelines, which severely restrict the patentability of many of the inventions that regularly fall within those areas.

Q: How are client demands changing, and what impact has that had on your practice?

A: Clients are requesting high-level opinions within a shorter timeframe and continuing to press for more competitive fees.

More and more clients are demanding in-depth legal analysis that takes into consideration the commercial perspective. We need to understand clients’ businesses and their fields of industry to provide an accurate assessment. In addition, with massive amounts of information available online, clients are demanding that this additional information be factored in.

Over the past few years, we have seen an increase in the interaction between our teams and our clients’ internal systems (eg, docketing, internal communications and e-billing platforms). In order to manage this additional backoffice work, we have invested in systems that allow us to meet our clients’ needs without incurring additional administrative costs.

Juan López Mañán, partner

Q: What are the main IP challenges facing rights holders in Argentina?

A: From a trademark perspective, 2018 was a hectic year due to significant changes to the Argentine Trademark Law, which had a high impact on the opposition system and introduced the partial lapsing of trademarks.

The new opposition system was implemented in the fourth quarter of 2018 and trademark owners are having to adapt to a completely new system, which aims to be in line with international standards. The changes are still underway.

With regard to patents, the main challenge for applicants today is probably the fact that Argentina is not yet a member of the Patent Cooperation Treaty. Other major challenges arise in the fields of pharmaceuticals, biotech and chemistry, as the Patent Office has issued new sets of guidelines, which severely restrict the patentability of many of the inventions that regularly fall within those areas.

Q: How are client demands changing, and what impact has that had on your practice?

A: Clients are requesting high-level opinions within a shorter timeframe and continuing to press for more competitive fees.

More and more clients are demanding in-depth legal analysis that takes into consideration the commercial perspective. We need to understand clients’ businesses and their fields of industry to provide an accurate assessment. In addition, with massive amounts of information available online, clients are demanding that this additional information be factored in.

Over the past few years, we have seen an increase in the interaction between our teams and our clients’ internal systems (eg, docketing, internal communications and e-billing platforms). In order to manage this additional backoffice work, we have invested in systems that allow us to meet our clients’ needs without incurring additional administrative costs.

Juan López Mañán, partner

Q: What is the biggest challenge currently facing IP law/attorney firms?

A: The biggest challenge is probably how to keep providing a high-quality service while being cost-efficient in an environment where clients’ legal departments are facing budget restrictions.

Q: How does your team keep abreast of the latest legal developments in the IP world?

A: We hold an internal monthly meeting with all our teams to discuss local and international developments. Partners and senior associates are deeply involved in local and international IP associations and attend the most relevant IP and IT conferences and seminars.

We also assist international and local trade associations in their interaction with government officials.

Our active participation in international and local IP associations has enabled several of our partners to participate and discuss with law makers in key legislation relating to the IP and IT industry.

Q: The firm was established in 1923, meaning that is fast approaching a century of practice. How do you ensure that it continues to remain at the cutting edge of IP practice in an ever-changing world?

A: We closely follow new legal trends in the developed world in order to foresee how they will affect our jurisdiction. We do this through active participation in the study committees of international associations. Our partners are also regular lecturers in local law schools.

Our hiring policy of retaining a diverse group of the best practitioners in the market has provided us with excellent results over the years. We interact with all Argentine law schools to identify students not only with high academic achievements, but also with soft skills that allow them to collaborate across disciplines with experts in other areas.

Twenty-five years ago we implemented a highly successful trainee programme enabling law school graduates to work in different practice areas of our firm. More than 700 young attorneys have participated in the programme so far.

In terms of technological development, the firm has invested heavily in technology to remain at the forefront of the legal profession. Technology plays, and will continue to play, a decisive role in a highly interconnected world.

Martin Chajchir, partner

Q: What are your main priorities for your firm’s development over the next five years?

A: The main priority is to continue providing the highest quality at competitive rates. In this respect, the firm has incorporated state-of-the-art software and developed artificial intelligence to tackle the needs of our clients in both current and non-traditional markets.

Q: One interesting initiative is the MarvalArt exhibition. Can you tell us a little more about that and why it is an important part of the firm’s DNA?

A: With strong ties to the art world, the firm reinforced its cultural values by launching an initiative called MarvalArt in 2017. MarvalArt is a temporary art exhibition that is renewed every year. The exhibition is displayed in our offices together with our permanent art collection and includes paintings, photographs and sculptures by artists from Argentina and other South American countries.

In 2018 we organised an internal contest, inviting Marval employees and family members to submit their own amateur artwork. The eight selected artworks are currently exhibited at the firm, together with the artwork of the 13 artists who took part in MarvalArt 2018.

Through this initiative, which is closely linked to our pro bono practice, an important percentage of the sale of the artwork is donated to sponsor one of the non-governmental organisations that the law firm supports.

With this proposal, we align two valuable aspects that define our firm: support of artistic expression and promotion of pro bono work.

Q: Finally, if you were to give one piece of advice to practitioners starting their career in IP, what would it be?

A: Apart from focusing on achieving the highest educational excellence and developing soft skills to apply their knowledge in other areas of expertise, we would encourage young attorneys to actively participate in local and international associations as early as possible in their careers.

The active participation in major international associations allows young practitioners to interact with many brilliant IP professionals around the world and provides them with different perspectives on the latest IP issues.