Intellectual property in Uruguay
Fernández Secco & Asociados
Ranking among Uruguay’s elite band of IP boutiques, Fernández Secco & Asociados packs a punch across the full spread of trade mark, patent, industrial design, copyright and domain name-related matters. Agustina Fernández Giambruno (‘a very good lawyer’) is highly recommended for trade mark and patent litigation and prosecution; she represented Bayer Schering Pharma in an annulment action against the Patent Office — associate Sofía Sierra, who recently joined from Guyer & Regules, provided support on that case.
At Ferrere, regional managing partner Agustín Mayer leads the IP department and brings to bear broad regulatory expertise. Among Mayer’s recent highlights, he represented DirecTV in a trade mark infringement case brought by the owner of the VTV brand. Counsel Alejandro Alterwain is also a key figure and paired up with Mayer to advise Urbana FM in a complex ambush marketing-related case brought by Uruguayan rock band NTVG. Other representative clients include H&M, AbbVie and Nike.
IP powerhouse Fischer Abogados handles the full gamut of contentious and non-contentious IP matters, with its prowess in complex patent matters impressing. Firm founder Gustavo Fischer, noted for his ‘encyclopaedic knowledge of IP law’, recently represented a global healthcare company in patent litigation. The firm’s client base includes an enviable spread of multinational companies from the life sciences, automotive, consumer products, and food and beverage sectors, and representative names are DreamWorks Animation, Gilead Sciences and Red Bull.
Fox & Lapenne
The consensus is that Fox & Lapenne is ‘a force in the market’ and ‘knows its stuff’. In particular, sector specialist Victoria Fox is an ‘extremely strong lawyer’ and brings to bear a robust record in trade mark matters — both contentious and non-contentious. Younger partner Marcos Lapenne is also recommended for his experience in anti-counterfeiting and copyright matters. The firm’s comprehensive IP expertise also spans patents, utility models, industrial designs and plant protection.
Regional IP specialist Cervieri Monsuárez y Asociados has a strong international-facing practice, which benefits from well-staffed offices in Bolivia and Paraguay. Senior partner Virginia Cervieri is ‘very client oriented and proactive’ and recently paired up with Anabel Frachia to advise Levi Strauss on trade mark protection actions. Co-founder Pablo Monsuárez (‘an outstanding litigator’) is also a key contact in a group that counts Adidas, Chanel and Nike among its core clients.
Cikato Lawyers - Intellectual Property
Long-established IP boutique Cikato Lawyers - Intellectual Property enjoys a particularly prominent reputation for trade mark law. It also advises on patents, industrial designs, copyrights and domain names. Best known for its expertise in portfolio management, it is also well versed in litigation and anti-counterfeiting matters. Matias Cikato is the name to note.
Pittaluga Abogados, which leans on offices in both Montevideo’s business district and its free trade zone, handles a broad scope of trade mark, patent, copyright and franchising law. María Fernanda Alonso Durán is a key contact and acts for an array of local, regional and multinational clients, including Cisco Systems, Editora Abril and Petrobras.
Vanrell Propiedad Intelectual
Vanrell Propiedad Intelectual continues to pack a punch in trade mark matters, particularly in terms of filings, where it handles a significant volume of applications for both local and foreign companies. Senior partner and intellectual property agent Juan Vanrell heads a team that also includes Verónica Vanrell and Fabiana Mateos.
Bacot & Bacot
Bacot & Bacot is best known for its close relationships with domestic clients and it ranks among the top two teams in Uruguay for local trade mark application renewals. The firm, which also acts for foreign clients, brings to bear additional experience in patent and copyright matters. Oscar Bacot Silveira leads the group.
BERGSTEIN’s IP department has a strong contentious bent and it has recently handled cases relating to patents, trade marks and copyright issues — for both domestic and multinational clients. The practice continues to grow under the leadership of talented associate and IP litigator Silvina Vila, who is particularly well versed in IP infringement matters and corporate support issues.