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Laisha Mubarak

Associate / Peru
  • Practice areas / Intellectual Property - TMT (Technology, Media and Telecommunications)
  • Languages / English, Spanish

Principal associate member of the Intellectual Property team. Her professional practice focuses on information technology, unfair competition and protection of personal data. She has advised companies in the protection of their distinctive signs, inventions and copyrights, ensuring their interests by filing oppositions, cancellations, registration nullities and infractions. She has participated in the negotiation and drafting of franchises, licenses, purchase and sale of brands. In copyright she advised in the negotiation of the payment of royalties to collective societies, emission rights and television retransmission. In the protection of personal data, she has advised on the registration of databases, cross-border flow, preparation of consent clauses, audits, among others.

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Work experience

  • 2016 - a la actualidad Principal Associate

    Philippi Prietocarrizosa Ferrero DU & Uría

  • 2007 - 2015 Senior Associate

    Estudio Delmar Ugarte

  • 2015 - 2015 Lawyer

    Hogan Lovells International

  • 2013 - 2013 Lawyer

    American Tower

  • 2009 - 2010 Lawyer

    Sapet Development Perú Inc.

  • 2008 - a la actualidad Senior Associate

    Philippi Prietocarrizosa Ferrero DU & Uría

  • 2005 - 2007 Lawyer

    Rebaza, Alcázar & De Las Casas

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Awards

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Featured Cases

  • WSP Global Peru-Chile-Colombia-Mexico 2017

    Advised WSP, a Canadian construction and environmental consultancy, in the acquisition of the shares of Poch Perú S.A, Peruvian consultancy leader in Engineering, Environment and Sustainability. The intellectual property part was important since in Peru they were owned by a third company that was not part of the acquisition of shares. Therefore, a separate agreement was executed through which trademarks were transferred.

  • Banco Sabadell S.A. -Miami Branch Peru 2017

    Advised one of the largest Spanish banking groups, Banco de Sabadell SA, Miami Branch, in connection with a loan of US $ 9.6 million in favor of Maragogi SAC, funds for the construction of a new hotel in the district of San Isidro under the trademark "Dazzler". The Peruvian security package includes an asset trust on the hotel as a business in progress, which includes all its assets, being one of the most important license agreements to use the registered trademark "Dazzler". The loan will be secured with all assets and cash flows of the hotel, which are transferred to a trust for administration and which will serve as collateral for the loan.

  • Banco de Crédito del Perú Peru 2017

    Advised Banco de Credito del Peru, one of the largest banks in Peru, in the revision of its main software license agreements. As expected, some contracts were designed on the basis of foreign regulations, and many of them contained complex clauses with technical and specialized wording to regulate the scope and limitations in the use of the software, which had a significant impact on the Bank. The revision of the software agreements allowed us to identify some obligations whose non-compliance could imply high risks for the continuity of the use of the software and, therefore, for the Bank's operations. Likewise, we were able to identify certain situations that could be subject to penalties, as well as those cases in which the renewal or updating of contracts was necessary. As a result, the advice provided by our firm has allowed Banco de Credito del Peru to have updated information on its contracts, as well as allowing the bank to be in a better position to implement compliance or mitigation mechanisms.

  • Promotora de Turismo Nuevo Mundo S.A.C. Peru 2017

    Advised Nuevo Mundo, a well-known Peruvian travel agency for its most important brand "Nuevo Mundo", in class 39. In August 2016, the New World Tourism Promoter realized that the company Neomundo Internacional S.A.C. I was using a sign quite similar to the one registered in his favor. We advise them in the presentation of an action for violation of trademark law and unfair competition against Neomundo. We also request a preliminary court order for reasons of consumer confusion and acts of unfair competition. We obtained the preliminary injunction and later, in October 2016, the Distinctive Signals Commission declared the complaint based on violation of trademark rights and sanctioned Neomundo with an economic fine. Then we discovered that Neomundo was still breaking the law, so we filed a lawsuit against Neomundo for breach of the decision, which we won. We also requested Neomundo to pay the costs incurred in the procedure, which we obtained satisfactorily.

  • Civitano SAC Peru 2017-2018

    Advised on Intellectual Property to Civitano, owner of restaurants such as LaNacional, Pescados Capitales and Juicy Lucy. After the recent investment of Grupo Wiese, and acquisition of the last two restaurants, it has been fundamental to consolidate and manage its IP portfolio in Peru and other countries in the Americas, such as Panama, Chile, Ecuador, Mexico, etc. Also, advice on the development and negotiation of license agreements for use and participation in the development of the business of certain brands.

  • Oriflame Peru S.A. Peru 2016-2017

    Oriflame is an important company that sells beauty products through direct sales (catalog sales) with operations in more than 60 countries. We provided integral advice to Oriflame to comply with the requirements of the Peruvian Personal Data Protection Law, which included the gathering of information related to the processing of personal data by Oriflame Perú, registration of personal databases, preparation clauses of consent, political privacy and development of a Code of Conduct.

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Publications

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Studies

  • 2015 Master Universidad de Alicante Master's in Industrial & Intellectual Property (LL.M.)

  • 2012 Graduated Post Graduate School - Universidad Peruana de Ciencias Aplicadas Diploma in Energy & Hydrocarbons Law

  • 2009 Graduated Post Graduate School - Universidad Peruana de Ciencias Aplicadas Diploma in Mergers & Acquisitions

  • 2005 Lawyer Universidad de Lima Law

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Memberships

  • Interamerican Association of Intellectual Property (ASIPI), member of the IT Committee
  • International Trademark Association (INTA)
  • Lima Bar Association, Peru 2006
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Academic activities

  • Activity - 2014

    Conference in progress about Franchises. Explanation of the importance of intellectual and industrial property for a company, its market value and forms of protection

    Teacher's aide - Universidad Peruana de Ciencias Aplicadas
  • Academic Activities - 2008

    Assistant Professor in Family

    Teaching - Universidad de Lima
  • Academic Activities - 2007

    Assistant Chair of Civil Law I and Civil Law II

    Teacher's aide - Universida de Lima
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Seminars and Conferences

  • Panelist Data Privacy Protection Cámara Guatemalteca de la Propiedad Intelectual Guatemala 2017
  • Speaker Intellectual Property Rights for EU SMEs in Peru Webinar para la Unión Europea. Latin AMerica IPR SME Helpdesk Peru-Unión Europea 2017
  • Speaker Propiedad Intelectual AMCHAM Peru 2011