Intellectual property in Uruguay

Cervieri Monsuárez

Full-service IP boutique Cervieri Monsuárez covers the registration and protection of IP rights such as patents, industrial designs, trade marks, copyrights, domain names and plant varieties. With satellite offices in both Bolivia and Paraguay, the firm offers additional support to clients with operations across the region, and has a brand protection offering that further distinguishes it in the market. Virginia Cervieri is the department head and an expert in anti-counterfeiting matters, while Natalia Paladino leads the IP prosecution department. Anabel Frachia supports the practice head on regional anti-counterfeiting, and is also the contact to note for anti-piracy issues. Lucía Cantera stands out at the senior associate level and is well versed in IP litigation.

Practice head(s):

Virginia Cervieri

Key clients

Espacio Aroma

Sporloisirs

MGA Entertainment

Levi’s

Cipriani

Babyliss

Borishka

Braun

Importadora e Inversiones Espacio Magma

Premiumbevs

Work highlights

  • Advising Espacio Aroma on a trade mark design dispute in China.
  • Acted for MGA Entertainment in a copyright infringement action regarding its L.O.L. Surprise! IP.
  • Acted for Babyliss in a trade dress violation case.

Fernández Secco & Asociados

Fernández Secco & Asociados is a go-to firm for trade mark and patent portfolio management, and handles the full gamut of other IP matters, from copyrights and domain names to industrial designs and unfair competition. Litigation is also routinely handled in each discipline; practice co-head Agustina Fernández Giambruno's advice to Bayer on a dispute with the patent office was a recent highlight in that respect. Fernández coordinates the IP litigation department and handles portfolio management, while strong support comes from associates Paula Porteiro and Sofía Sierra.

Practice head(s):

Gonzalo Fernández Secco; Isabel Fernández Requena; Agustina Fernández Giambruno

Testimonials

They have a very experienced and focused team, which provides clear and practical advice.

The team responds immediately to our issues, which we value very much. In addition, the service is really excellent, as well as the human warmth with which they attend us permanently. Even when colleagues from abroad ask for references, we do not hesitate to recommend them.

I have a fluid relationship with Agustina Fernández, Gonzalo Fernández Secco and Isabel Fernández. All of the professionals are always available for our consultations, which they attend with speed and professionalism. In addition, they adapt to subjects of different degrees of complexity and always offering their service of excellence. I would also highlight Paula Porteiro.

Gonzalo Fernandez Secco is very experienced, responsive and practical.

Key clients

Natura

Asos

The Body Shop

Georgio Armani

Mango

PedidosYa

Hershey Chocolate & Confectionery

Televisa

Uber Technologies

Havaianas

Peugeot Citroen Automobiles

Urufarma

Work highlights

  • Assisting Giorgio Armani with its IP filings in Uruguay, and acting for the company in anti-counterfeit issues.
  • Representing the producers and musicians of Uruguayan pop band Mano Arriba in solving internal disputes concerning copyright, trade mark and management issues.
  • Representing Bayer in litigation against the patent office before the administrative tribunal for the rejection of two patent applications.

Ferrere

Ferrere‘s regional managing partner Agustín Mayer heads its IP practice, and lends his extensive experience in patent matters to a department that offers support on the full range of matters in the field. The client base has an international flavour typical of the firm, and its domestic offices in Montevideo, Tacuarembó, Colonia del Sacramento and free trade zone Aguanda Park, combined with its Bolivia and Paraguay branches, offer local contact to a wide variety of companies. Alejandro Alterwain is a leading IP litigator, and Martín Pesce is the name to note for privacy matters. Experienced senior associate Stella Weng also stands out, and is often the main contact for trade mark and patent registrations and administrative defence. Key associate Manuel Graña left the firm in August 2020 to work as a sole practitioner.

Practice head(s):

Agustín Mayer

Testimonials

They have extensive knowledge of trade mark matters. The Uruguay team is very prepared and quick in its response. They have a great ability to put themselves in the customer’s shoes.

They understand the client’s needs by providing a legal solution but also taking into account their commercial needs.

Ferrere was able to provide decisive answers and guidance to help us navigate situations in Uruguay, which I have not seen another firm do comparably. Moreover, Ferrere was able to address variations that would come into play if we travelled to another country and had to study the data privacy issues from that perspective. Being based internationally, I also appreciated their flexibility with time zones and how prompt they were during our business day.

I would highlight Martin Pesce. He is exceedingly patient.

Key clients

Bayer

Chery Automobile

CMPC

Continental

Directv

H&M

Haribo

NBA

Starwoods

Stihl

Abercrombie & Fitch

Work highlights

  • Assisted Turner and DirecTv with several criminal anticounterfeiting actions related to illegal streaming and IPTV services.
  • Assisted Haribo with registering its marks in Uruguay, Bolivia and Paraguay.
  • Acted for Bayer in an annulment action at the administrative court against a PTO decision that rejected the registration for trade mark K-OBIOL.

Fischer Abogados

Boutique firm Fischer Abogados is regarded by one client as 'a solid strategic partner in all areas of action', and is equally adept at advising multinationals and start-ups, having notable, broad experience in technology and related sectors. Gustavo Fischer is a reference in the market for complex IP litigation and he co-heads the practice with Mercedes Castells, a trade mark and patents expert with additional experience in copyright matters. Federico Fischer Castells offers support across the full range of work.

Practice head(s):

Gustavo Fischer; Mercedes Castells

Testimonials

Mercedes Castells, Gustavo and Federico Fischer are a source of certainty for the development of our business within the audiovisual field.’

‘Fischer Abogados is a solid strategic partner in all areas of action. The attention is always with the three key lawyers present, with the ease of a team that knows each other well. It is impressive that they arrive at the meeting very prepared and with a common front. I really appreciate their kindness and humor, and their ability to translate complex legal concepts into accessible examples. They are smart and diligent.

I would say their closeness, the feeling of safety and calm that they convey. The three stand out at par: Mercedes Castells, Gustavo and Federico Fischer.

Key clients

Red Bull

Dreamworks Animation

Edenred

Gilead Sciences

UPM Kymmene

Scotiabank (The Bank Of Nova Scotia)

Caterpillar

Novartis

NBC Universal Media

Mattel

Honda Motor

Cikato Lawyers - Intellectual Property

Experienced, full-service IP boutique Cikato Lawyers - Intellectual Property is a mainstay in the domestic trade mark filing market and also has strength in litigation, particularly anti-counterfeiting and enforcement. The firm also operates an entertainment law department, which frequently acts in copyright matters. Matias Cikato is the practice head and primary contact, focusing on trade mark portfolio management and regulatory litigation.

Fox & Lapenne

Founded 75 years ago, IP boutique Fox & Lapenne has built a strong reputation assisting local and international clients with filing trade mark, patent and utility patent applications; industrial designs; copyrights; IP litigation; and plant varieties. Victoria Fox leads the practice and Marcos Lapenne is a further contact to note.

Pittaluga Abogados

The intellectual property practice is the cornerstone of Pittaluga Abogados, which serves domestic and multinational clients, ranging from start-ups to Fortune 500 companies. The life sciences, food and beverage, and energy and natural resources sectors are notably strong areas for the team, which is jointly led by Martín Pittaluga and Manuel Pittaluga.

Vanrell Propiedad Intelectual

The young but experienced group of IP professionals at Vanrell Propiedad Intelectual manages and defends the intellectual property portfolios of a broad client base that includes a number of multinational companies in various sectors. A trio of lawyers lead the practice: Juan Vanrell acts in trade mark and patent matters; Fabiana Mateos is noted for anti-counterfeiting work; and Verónica Vanrell has a particularly strong knowledge of IP matters relevant to the fashion industry.

Practice head(s):

Juan Vanrell; Fabiana Mateos; Verónica Vanrell

Testimonials

Agility and adaptability are two terms that make this firm different.

Juan Vanrell is in everything. His coordination is excellent. With Verónica Vanrell and Fabiana Mateos, it is more complete and an almost perfect team.

Bergstein Abogados

Full-service firm Bergstein Abogados has a longstanding presence in IP and offers trade mark and patent registration services, while leaning on its strong litigation practice to act in IP disputes. Senior associate Silvina Vila is the key contact and dedicated IP expert, and focuses on portfolio management. Disputes partner Leonardo Melos lends his support in IP litigation.

Practice head(s):

Silvina Vila; Leonardo Melos

Testimonials

They are punctual and responsible, reliable and attentive.

A very solid team of lawyers, who support each other and beyond the specific one in charge of a task, there is always another aware of the subject.

Dynamics is a difference, in my opinion. The team’s attorneys serve clients directly, with painstaking dedication. It does not give the client the feeling that it is “one more” among many others. This, beyond the quality of the service in terms of their knowledge of course, which is remarkable.