Ximena is Managing Partner at CASTELLANOS in Bogotá, Colombia.
She specialises in commercial and administrative law and has particular expertise in trade mark prosecution and enforcement, strategic portfolio management across Latin America, handling provisional refusals across the Americas, and firm management.
The most satisfying aspect of being an IP attorney for Ximena, is what she calls “freedom to operate”, not in the legal sense, but in life. Ximena started CASTELLANOS 30 years ago.
“Running my own firm allows me to decide how we work, whom we work with, and the culture we maintain. I value that independence.”
“I do not see my practice as a business alone, but as a lifestyle business.”
This year, for the first time, CASTELLANOS was awarded Managing IP Firm of the Year for Colombia. Ximena is delighted and says,
“This shows that small teams can match and exceed larger organisations when they work with discipline and clear direction. We have built our practice with a strict client focus. This recognition reflects that approach and reinforces it.”
Adding value to clients
CASTELLANOS defines its value proposition through three principles: responsiveness, helpfulness, and effectiveness. Ximena explains:
“Responsiveness means we are available when it matters. Clients reach us and receive immediate attention. We do not wait to react, we move matters forward.
"Helpfulness means we go beyond what is expected. We listen, we stay patient, and we remain engaged even when the work becomes demanding. That is part of doing things properly.
"Effectiveness means we deliver results. Clients come to us because something needs to be achieved. Our work is not measured by how much we tried, but by outcomes.”
Best practices to share with FICPI members
During Covid, CASTELLANOS started what has proven to be a very simple but highly effective core operation: a daily team meeting.
Every working day at 3:30 pm, Ximena meets with the professional team for 30 minutes. They review ongoing work, discuss what is coming next, and identify where support or feedback is needed.
At the end of the meeting, they go through all instructions received in the previous 24 hours to ensure that nothing is missed and that each matter is clearly assigned to the appropriate team member. Once the meeting ends, they continue on a one-to-one basis with those who need further support or feedback. Ximena shares,
“We started this practice during the pandemic. It became an essential management tool.
“It keeps the team aligned, maintains pace, and creates space to address issues early.”
The importance of technology
Ximena believes that operating practices will change significantly for IP attorneys as a result of technological advancements, particularly in prosecution work.
Automation and AI already influence the way that applications are handled.
“It is not hard to imagine a future where applications are pre-assessed or decided before reaching a human examiner. This raises questions about privacy and interpretation.
“The role of independent practitioners will focus more on strategy, advocacy, and complex matters where sound judgment makes a difference.”
A recent interesting case
Ximena shares a fascinating recent case:
“I worked on an opposition against a figurative mark filed by a Chinese semiconductor company in Colombia. The sign closely resembled our client’s iconic jumping cat logo.”
The case required a clear application of the Andean trademark framework, in particular Decision 486. The key issue was whether protection for a well-known mark extended beyond Class 25 to unrelated goods and services in Classes 9 and 42.
“We focused on three points. First, we proved the well-known status of both the PUMA word mark and its figurative device. Second, we showed the risk of dilution and unfair advantage from the use of a similar sign in a different commercial field. Third, we supported the protection of the logo as both a trademark and a copyrighted artistic work under Andean law.”
The Colombian Trademark Office upheld the opposition and denied the application. It recognised the strong market presence and high level of consumer recognition of the PUMA signs, including the jumping cat logo.
“This matter reflects how protection for well-known marks in the region extends beyond the principle of specialty, especially for distinctive visual elements. It also required alignment between legal strategy, evidence, and timing. That combination led to a favourable result.”
Value of FICPI membership
Ximena has been a FICPI member since 1993 and is the Executive Committee delegate for the Andean Region. She is also an active member across many FICPI committees, including the Admissions Committee, DEIA Committee, Practice Management Committee, and PMC’s Group 3: Business Development & Marketing.
What she appreciates most about FICPI is the people. She declares,
“I participate in several associations. FICPI stands out because of the level of expertise and the quality of the relationships. It combines very high-level discussions with genuine personal connections.”
Final word – outside of work
For the last 29 years, Ximena has had a farm in a dry tropical forest. Very recently she was finally able to build a house there. She reflects,
“The project took me nearly four years and came with many obstacles and challenges. It has now become my favourite place.
“I spend my time there reading, hiking, cooking, hosting friends and family, and simply discovering the surroundings. It is also a place where I can work with clarity and focus.”
Education & training
- 1995: Universidad Externado de Colombia – Specialisation in Administrative Law
- 1994: Universidad Javeriana – Specialisation in Commercial Law
- 1991: CEIPI, Strasbourg – Diplomée en Droits des Marques (interrupted due to a family demise)
- Summer 1991: Franklin Pierce Law Center (New Hampshire) – Licensing of Intellectual Property
- 1985-1990: Universidad Javeriana – Law
Professional background
- 1992 onwards: Partner at CASTELLANOS
