Intellectual property in Uruguay

Cervieri Monsuárez

The ‘flexible, strong and well-prepared’ team at Cervieri Monsuárez is a strong choice for counsel on patents, industrial designs, trade marks, copyrights and domain names. Described by one source as ‘always at the forefront on IP matters in the industrial sector’, the practice also has market-leading expertise in anticounterfeiting matters. The firm has teams based in Bolivia and Paraguay, with whom the Montevideo-based lawyers collaborate on IP matters. Practice head Virginia Cervieri focuses on trade marks, IP strategy and anticounterfeiting, along with trade mark, patent and copyright lawyer Natalia Paladino. One client considers the pair to be ‘totally trusted advisors’. Pablo Monsuárez and Lucía Cantera specialise in IP litigation, while Anabel Frachia is of key importance on anticounterfeiting matters.

Practice head(s):

Virginia Cervieri


Testimonials

‘A very strong and prepared team, always at the forefront of industrial property protection issues. They meet the demands of clients with great flexibility’.

‘Virginia Cervieri and Natalia Paladino enjoy my complete confidence.’

‘The team is always available, with very talented staff.’

‘Virginia Cervieri and Anabel Frachia are great professionals’

Key clients

Prada


Converse


Off-White


Levi’s


New Era


Superdry


Vans


100%


Adidas


Gilette


Limited Brands


Scott


Vintelux


GA.MA


Braun


Starbucks Corporation


Audio Mobile Americas


Work highlights


  • Assisted a group of luxury goods manufacturers with the seizure and destruction of counterfeit goods sold online that had been recovered in an Interpol operation.
  • Assisted with the destruction of counterfeit clothing seized in a raid on a shop in Salto.
  • Assisted sunglasses manufacturer 100% with the destruction of counterfeit eyewear seized at the Port of Montevideo.

Ferrere

The ‘first-class’ team at Ferrere offers the complete range of IP services, including trade mark filing, litigation and anti-counterfeit work. Clients benefit from the firm’s presence in Montevideo, Tacuarembó, Colonia and the free zone in Aguada Park, Montevideo, as well as its international offices in Bolivia and Paraguay. The firm has a track record advising companies in the pharmaceuticals, food and drink, cybersecurity, media and advertising sectors, as well as Uruguay’s burgeoning domestic cannabis industry. A recent work highlight saw the ‘extraordinary’, ‘solid’ and ‘responsive’ team advise audiovisual company Cimarrón on IP-related matters that arose in the production of several series for Amazon and other platforms. Regional managing partner Agustín Mayer heads the practice and a particular focus on patents, with niche expertise in pharmaceutical product patents. Martín Pesce takes care of data privacy-related matters. Alejandro Alterwain and Stella Weng are highlighted as ‘excellent and hands-on’; Alterwain has participated in key cases involving litigation before the Supreme Court, and Weng specialises in patent and trade mark filing, as well as prosecution.

Practice head(s):

Agustín Mayer


Testimonials

‘An extraordinary firm, without a doubt, with a solid, experienced team.’

‘Top-level professionals with an extraordinary human touch, namely Agustin Mayer, Alejandro Alterwain and Stella Weng.’

‘The Ferrere team members complement each other very well, and Stella Weng, Alejandro Alterwain and Maria Eugenia Contreras are excellent professionals.’

‘Highly experienced, short response times, reachable at all times; a team of professionals with a proven track record.’

‘It is a very good practice in trademark filing and prosecution, they are fast, efficient, they understand what the client needs in that aspect.’

‘It seems to me that the lawyer who stands out the most from the office in the area is Stella Weng.’

‘It is a team of professionals that adjusts to the needs of companies and their business realities, which makes the work dynamic very easy.’

‘Excellent team of professionals.’

Key clients

Bayer


Meta Platform


Chery Automobile


CMPC – Softys


Continental


Directv


H&M


Haribo


NBA


Starwoods


Stihl


Abercrombie & Fitch


Issey Miyake


NIO (ANHUI) Holding


Oddity Tech


Equifax


Vertex


FNC (Anheuser-Busch InBev)


Uber


Work highlights


  • Acted for Haribo in an objection procedure in sound trade marks.
  • Represented German manufacturer Andreas Stihl in an opposition regarding the imitation of its trade mark.
  • Assisted a multinational manufacturer of paper products for domestic use in a dispute with Brazilian competitor Santher over a toilet paper trade mark.

Fischer Abogados

Renowned market figure Gustavo Fischer leads the IP practice at boutique Fischer Abogados and is lauded as doing ‘excellent work’ and ‘directing cases clearly from the very beginning’. His expertise encompasses litigation and tech-related matters. His ‘trusted, efficient and accurate’ team offers ‘quick responses’ in its handling of trade marks, copyright, patents, plant varieties, and domain names, protecting intellectual property with both advisory and litigation work. Clients come from a range of sectors, namely automotive, pharmaceutical, food and drink and banking. Co-leading the practice alongside Fischer is Mercedes Castells, who focuses on copyright law, patents and trade marks. Associate Federico Fischer Castells covers patents, trade marks, copyright, entertainment and litigation on behalf of both international and local companies.

Practice head(s):

Gustavo Fischer; Mercedes Castells; Federico Fischer Castells


Testimonials

‘Federico and Gustavo Fischer do an exceptional job, managing cases clearly from the beginning and following up regularly.’

‘The firm’s lawyers are highly experienced and respond quickly.’

‘Gustavo Fischer is experienced, responsive and trustworthy.’

Key clients

UPM Kymmene


Coca-Cola


Accor


Subway


Scotiabank (The Bank Of Nova Scotia)


Caterpillar


Novartis


NBC Universal Media


Mattel


Honda


Work highlights


Fernández Secco & Asociados

Boutique Fernández Secco & Asociados is a sound choice for trade mark and patent portfolio management, and its capabilities span the gamut of IP issues. Practice co-head Agustina Fernández Giambruno leads the firm’s IP litigation department and also handles portfolio management. Associates Paula Porteiro and Sofia Sierra left the firm in August 2022.

Work highlights


Cikato Lawyers - Intellectual Property

Boutique Cikato Lawyers - Intellectual Property specialises in domestic trade mark filing and also frequently represents clients in anti-counterfeiting and enforcement matters. Entertainment law is a particular strength of the team, covering copyright issues among others. Matias Cikato focuses on trade mark portfolio management, prosecution and regulatory litigation. Other key contacts include Marcela Cikato and Diego Chijane.

Work highlights


Fox & Lapenne

Well-established IP boutique Fox & Lapenne supports local and international clients with the range of registration and application services to safeguard intellectual property rights. The practice also has expertise in anti-counterfeiting measures and customs law. Victoria Fox and Marcos Lapenne are among the key names to note.

Work highlights


Pittaluga Abogados

Pittaluga Abogados has over 30 years of experience in the Uruguayan IP market and supports local and international clients, among them start-ups and Fortune 500 companies. The team has a particular track record acting for clients in the life sciences, food and beverage, energy and natural resources sectors. Martín Pittaluga and Manuel Pittaluga are the key contacts.

Work highlights


Bergstein Abogados

The IP group at Bergstein Abogados provides copyrights and trade mark counsel in addition to handling patent registration. Senior associate Silvina Vila co-heads the practice and leads on all matters for local and foreign clients, with particular specialism in intellectual property portfolio management, IP litigation and protection of patent and trade mark rights. Vila and fellow co-head Leonardo Melos, who focuses on litigation, are praised by clients as being ‘top-level professionals, responsible, helpful and ethical’.

Practice head(s):

Silvina Vila; Leonardo Melos


Testimonials

‘In IP and entertainment they have updated us on the news produced in Uruguay.’

‘Silvina Vila has shown herself to be very competent, both in advice and in claims that clients of our firm have had to make in Uruguay.’

Work highlights


The team at specialist intellectual property firm ClarkeModet registers patents and trade marks and carries out litigation to defend intellectual property for clients from a range of sectors. The practice is supported by more than 500 colleagues in thirteen other countries, and the firm has a permanent presence in 12 Latin American jurisdictions. Fabiana Penades leads the practice, bringing extensive experience in patents and trade marks portfolio management, strategy and contentious work. Associate Martín Hermida assists across all matters, and Milena Badalamenti specialises in IP prosecution.

Practice head(s):

Fabiana Penades


Key clients

Universidad de la República


Work highlights


Dentons Jiménez de Aréchaga

The practice at Dentons Jiménez de Aréchaga specialises in IP infringement claims, due diligence and IP-related litigation and arbitration. The group has experience advising clients in the tech sector. Héctor Viana, whose background is in corporate real estate and finance law, handles IP issues related to clients he regularly manages, among them Amazon, Volkswagen and Facebook. At senior associate level, Mariana Lartigau has experience with trade marks and copyright issues, and also supports with IP-related due diligence. Maite Gaynicotche focuses on data protection and cybersecurity matters.

Practice head(s):

Héctor Viana


Key clients

Google


Youtube


Nextleaf Solutions


Amazon


Fox


Tiktok


Disney


European Union


PagoNxt


Facebook


Volkswagen


Work highlights


  • Advised Google on the privacy considerations of the collection of new imagery in Uruguay for their street view product available in Google Maps.
  • Represented Fox after a lawsuit was brought against its affiliates under the alleged infringement of IP rights in a TV programme.
  • Advised Vesta on the IP due diligence for its acquisition of Uruguayan company Datalogic Ingenieros.

Guyer & Regules

The expertise of the practice at Guyer & Regules is focused on litigation, copyright registration, protection against unfair competition and personal data protection. The team works closely with the firm’s data privacy and technology departments and regularly counsels individuals and companies in the FMCG and finance sectors on IP issues. Sole practice head Javier Berdaguer leads the group of five associates and has experience in corporate, copyright and right of publicity law.

Practice head(s):

Javier Berdaguer


Testimonials

‘The Guyer & Regules team is excellent. Their professionalism, knowledge of the subject and the quality of the professionals that make it up make it a privilege to have their support.’

‘Javier Berdaguer is excellent not only for his knowledge of the subject but also for his ability to quickly and accurately understand the needs of the business. His advice has always been accurate and has helped us navigate situations in a very effective way.’

‘Very professional team. Coordinated work. Subject specialists.’

‘Javier Berdaguer – excellence and professionalism.’

‘The best thing about Guyer’s team is that you feel like your own team. They treat each challenge as their own, and get 100% involved.’

‘For me by far the best thing is that, being one of the best professionals in the country, they are also the best professors of law. Because they explain everything to us, each advice, each document, in a language and in a way that we can understand exactly what we are signing or deciding. That gives us a lot of peace of mind and confidence, because we know that we are in the best hands and we understand each issue that we work with them.’

‘Excellent team.’

‘Lawyers stand out for their knowledge and experience. I mention Javier Berdaguer in the area of intellectual property.’

Key clients

Jorge Drexler – Warner Music Spain


Diego Fischer


Atlantis (Intradevco Industrial Subsidiary)


Coca Cola – Femsa


Ikusi


Mutual Uruguaya De Futbolistas


Bankingly


In Capital


Pan American Energy


Axion


BKO


BLK


Zitarrosa


Overactive


Work highlights


  • Assisted Academy Award-winning composer Jorge Drexler with a copyright claim.
  • Assisted author Diego Fischer with copyright issues.
  • Represented Atlantis in a trade mark dispute.

Vanrell Propiedad Intelectual

The team at Vanrell Propiedad Intelectual manages the portfolios domestic and international clients and assists with registering and protecting trade marks, patents and copyright. Juan Vanrell co-leads the practice; alongside him, Fabiana Mateos specialises in anti-counterfeiting matters. Carla Piccardo is the name to note at associate level.

Work highlights