Intellectual property in Uruguay

Cervieri Monsuárez

A respected name for trade mark law, Cervieri Monsuarez climbs a tier on the back of its impressive client list and its ‘problem-solving attitude’. The team also advises on patents, industrial designs, copyrights and plant protection from its two offices in Uruguay — it additionally leans on international outposts in Bolivia and Paraguay. Department head Virginia Cervieri is an anti-counterfeiting expert. Anabel Frachia co-ordinates regional anti-piracy strategy. Senior associate Lucía Cantera, who recently supported on several high-profile trials, is also recommended.

Practice head(s):

Virginia Cervieri

Testimonials

The team is comprised of highly trained people with a problem-solving attitude.’

Virginia Cervieri and associate Agustina Viera manage to create far-reaching strategies, across various countries, for their clients.’

Key clients

Levi Strauss

Fox International Channels

Crocs

PopSockets

SKF — Schaeffler

Audio Mobile Americas

Chanel

Nike

Puma

Christian Dior

Hugo Boss

LVMH

Tommy Hilfiger

Adidas

Reebok

Work highlights

  • Acted for Levis Strauss & Co in a trade mark infringement case against a prominent fashion store.
  • Successfully represented several luxury perfume brands (including Chanel, Christian Dior and LVMH) in precedent-setting trade dress infringement litigation
  • Advised Crocs on trade mark protection matters.
  • Assisted Popsockets with anti-counterfeiting matters.

Fernández Secco & Asociados

The ‘very proactive team’ at Fernández Secco & Asociados is valued by sources for its ‘great teamwork’ and ‘client-oriented approach’. The boutique covers the waterfront on IP matters, with standalone skill sets in both trademark and patent law. Agustina Fernández Giambruno heads the litigation department and handles IP portfolio management and litigation with an emphasis on retail, new technologies and pharmaceuticals. The firm also fields an impressive second line of associates, with Paula Porteiro and Sofía Sierra both well versed in a broad range of IP matters.

Testimonials

It is a very proactive team, which provides immediate responses. If the issue is not a matter of quick resolution, they acknowledge receipt and then return with the complete information.’

They have given us support in local and international issues, with excellent command of languages.’

The reality is that we have worked with them for many years and we have never had a problem. They have always handled our affairs adeptly.

It is a very competent firm, which provides agile and complete answers. It is a pleasure to work with them.’

Their great teamwork is obvious; if the lawyer assigned to serve the company is not available, a substitute will contact us right away. At the same time, when we need to meet with other external consultants, the lawyer appointed is always accompanied by a more technical professional in the subject at hand.’

People are cordial and make us feel important and well cared for. They always demonstrate a very kind and client-oriented approach.’

Agustina Fernández Giambruno is an excellent professional, with exceptional and very broad experience.’

Gonzalo Fernández Secco monitors and controls all issues closely.’

Isabel Fernández Requena is very meticulous.’

Key clients

Natura

Asop

The Body Shop

Georgio Armani

Mango (Consolidated Artist)

PedidosYa

Hershey Chocolate & Confectionery

Televisa

Uber Technologies

Urufarma

Work highlights

  • Represented a local client in litigation brought by fashion group Inditex (Zara), relating to the ‘lara Jeans’ trademark.
  • Successfully acted for the National Geographic Society in trade mark litigation against a local retailer using the trademarks ‘NATGEO’, ‘NGEO’ and ‘NG’ for outdoor clothing.
  • Represented Acrilex Tintas Especiais, a Brazilian manufacturer of stationery and plastic arts supplies, in an action brought by a local seller of industrial paints regarding the use of the ‘VITRO 150’ trade mark.
  • Advised Latin American delivery app, PedidosYa, on trade mark portfolio management in 12 countries.

Ferrere

FERRERE impresses with its ‘magnificent team of professionals’ and its ‘geographical scope’. The comprehensive practice is recognised for its broad industry focus, with notable expertise in the life sciences, agribusiness, retail, media and entertainment, and food and beverage sectors. A popular choice for patent and trade mark litigation, the team also handles non-contentious matters. Regional managing partner Agustín Mayer is a high-profile figure and possesses extensive patent experience. Other recommended names include Alejandro Alterwain, whose practice spans IP and antitrust matters, and increasingly active associate, Manuel Graña.

Practice head(s):

Agustín Mayer

Testimonials

Adequate rates and exceptional service characterise Ferrere.

I highlight the geographical scope of its portfolio of services that transcends Uruguay.

Agustín Mayer and senior associate Stella Weng are key names in a magnificent team of professionals, who are all talented and helpful in IP.

Stella Weng, Agustín Mayer and associate Manuel Graña, among others, are always attentive and willing to answer the queries that are presented to them.’

Alejandro Alterwain and Stella Weng are fantastic to work with. Always ready to assist and with the ability to connect us with whoever is needed to a particular project.’

Key clients

H&M

Haribo

Abbvie Pharmaceuticals

CMPC

DirecTV

Nike

Samsung

Equifax

Bayer

Abbott Laboratories

Work highlights

  • Assisted Apple with registering the ‘IWATCH’ trade mark, successfully overcoming opposition from Swatch.
  • Represented Savant in several legal actions, including injunctions and private litigation, against Spefar.
  • Defended Rigo in an ex-officio challenge against the registration of a sound trademark.
  • Advised Haribo on registering its marks in Uruguay, Bolivia and Paraguay.

Fischer Abogados

Fischer Abogados delivers ‘precise information in a timely manner’, according to sources. The highly regarded boutique remains a force in the market and regularly advises start-ups through to major multinationals on the full scope of IP issues. The firm is best known for its record in patents, where it represents major domestic and international life sciences, agribusiness and technology clients in all phases of patent protection. Leading light Gustavo Fischer is highly sought after for complex litigation. Associate Federico Fischer Castells is also recommended.

Testimonials

Fischer Abogados delivers good quality and precise information in a timely manner. Furthermore, they provide important commercial strategies for the market in Uruguay.’

The team is comprised of excellent professionals, who are fully knowledgeable about the topics they are entrusted with.

Gustavo Fischer addresses all legal matters and problems in a positive and structured way, always finding ways to solve problems in the best and most effective manner, without jeopardising the position of the client.

Mercedes Castellos is very much involved in patent prosecution and also gives quality advice on trade mark filing in Uruguay – she is reliable and a pleasure to work with.

Key clients

DreamWorks Animation

Accor

Merial

Scotiabank

Caterpillar

Novartis

NBCUniversal Media

Mattel

Red Bull

Honda Motor Company

Gianni Versace

UPM-Kymmene

Petrobras

Cikato Lawyers - Intellectual Property

Trade mark law is a key pillar of Cikato Lawyers - Intellectual Property’s IP practice, which is particularly sought after by clients operating within the apparel industry. Other areas of activity include patents, copyrights and entertainment law. Key contact Matias Cikato focuses on trade mark portfolio management and regulatory litigation.

Practice head(s):

Matias Cikato

Key clients

Motorola Trademark Holdings

Vans

Inditex (Zara)

Maison Battat

Luxottica Group

Asics

Work highlights

  • Represented Magya in a cancellation action against several well-known trade marks filed by a China-based individual who registered trademarks in Uruguay.
  • Selected by Luxottica to manage all of its enforcement cases in Uruguay and Paraguay.
  • Advised Vans on IP enforcement issues.

Fox & Lapenne

Long-established IP boutique Fox & Lapenne handles the full scope of IP law, with particular experience in trade marks. The firm is well versed across a wide range of industries, with its recent experience spanning the life sciences, entertainment, clothing, and food and beverage spheres. Victoria Fox is highly regarded for trade mark litigation.

Practice head(s):

Victoria Fox

Pittaluga Abogados

Pittaluga Abogados’ emphasis on intellectual property translates into a broad practice, which secures a strong market share of trade mark filings. The firm acts for a mix of domestic and multinational clients, particularly from the life sciences, food and beverage, and energy and natural resources sectors. Managing partner Martín Pittaluga handles both patent and trade mark work.

Key clients

Unilever

Kimberly-Clark Worldwide

Boehringer Ingelheim

FIFA

Exxon Mobil

Motorola

OATH  (Yahoo!)

Burger King

Beiersdorf

Conair

Work highlights

  • Represented Unilever before the High Administrative Court in seeking an annulment of the the ‘BALLERINA’ trade mark.
  • Advised Schwan-Stabilo Schwanhäusser on obtaining the removal of imitation pens sold by a Uruguayan store.
  • Acted for Fidia Farmaceutici in trade mark litigation.

Vanrell Propiedad Intelectual

In a significant development, Vanrell Propiedad Intelectual boosted its offering with the absorption of two-partner IP boutique Barbosa & Caravia during 2020. Over the past year, the team kept busy advising on trade mark, copyright and patent matters, with an emphasis on IP portfolio management. Senior partner Juan Vanrell advises on both trade mark and patent matters.

Practice head(s):

Juan Vanrell

Bergstein Abogados

BERGSTEIN leverages its solid litigation practice to specialise in contentious IP matters, with its recent cases spanning trade mark, patent and copyright issues. The firm also houses an active trade mark and patent registration practice. Impressive associate Silvina Vila is ‘professional, knowledgeable, and quick to respond’.

Practice head(s):

Silvina Vila

Testimonials

A friendly, efficient and professional team – it is a pleasure to work with them.

Silvina Vila is the attorney I work with the most. I find her very professional, knowledgeable, and quick to respond to any queries we have.

Silvina Vila and litigator Leonardo Melos differentiate themselves by quickly following up on issues and staying on top of all developments.