Cervieri Monsuárez > Montevideo, Uruguay > Firm Profile

Cervieri Monsuárez > Firm Profile

Cervieri Monsuárez is a unique law firm in Latin America for different reasons:

• The firm specialises in the defense of intellectual property rights and has specialists in anti-piracy, trademarks, patents, copyrights, industrial designs, signal piracy and regulatory matters, among other specialties, with lawyers and notaries in all specialties and in all ranges. All areas are worked in teams by both senior and junior lawyers
• Each area of specialisation has its own team of senior lawyers, junior lawyers and paralegals, in each of the offices. This allows for a broad spread of specialization and for clients to receive very specific advice according to the subject matter
• In addition to its robust portfolio of clients, the firm stands out for its successful work and the fact that it constantly sets precedents in the country. This has meant international recognition for the firm and high positions at a global level of intellectual property for its partners
• Cervieri Monsuárez understands how to use the key location of Uruguay, a transit country for merchandise at a regional level, and from there to elaborate a regional strategy to combat brand counterfeiting. This element is highly valued by clients, who centralise work in Uruguay to control the entry of counterfeits into the rest of South America, Central America and the Caribbean
• Concepts of intellectual property such as ‘trade dress’ or ‘right to be forgotten’ were used in Uruguay for the first time by Cervieri Monsuárez, achieving successful outcomes which set a precedent. The same happened, for example, with infractions under the premise ‘Our version of …’, or the local administrative ruling that recognised the notoriety of the ‘three stripes’ of adidas, an element that was later used internationally by the company to defend its iconic brand
• Cervieri Monsuárez is the first law firm in the country to develop its own online monitoring system applied to all of Latin America, which in recent years has allowed the removal of millions of publications that violated the trademarks, patents or copyrights of dozens of companies that were being harmed by the growth of electronic commerce and the lack of control in on- line sales platforms and social networks

Main areas of practice
Litigation: 30%
Anticounterfeiting: 30%
IP prosecution (trademarks, patents, copyrights, domain names, regulatory affairs): 25%
Corporate: 15%

Litigation: The litigation team is led by Dr Pablo Monsuárez and Dr Virginia Cervieri, working with ten lawyers and ten paralegals, specialised in procedural, civil and criminal law. The work performed by this team has earned Cervieri Monsuárez worldwide recognition in cases such as the defense of the three stripes of adidas, the case of ‘trade dress’ that involved Ferrero Rocher, a case where damages of US$500,000 were awarded for perfume imitation or even blocking the access to one of the most recognised pirate sites in the world: RojaDirecta.

Anticounterfeiting: This team is led by Dr Virginia Cervieri, a reference specialist in anticounterfeiting at a regional level. Her 20+ years of experience has allowed her to occupy the most important position in the world in the fight against counterfeiting: ex-president of the ACC of INTA, to be a speaker in some of the most important events in the world, such as Unifab in Paris, IACC, WCO, ABPI and INTERPOL, among others. The team also benefits from the leadership of Dr Anabel Frachia, who coordinates anticounterfeiting actions in Uruguay, Paraguay, Bolivia and Latin America. This department is made up of 20 lawyers, paralegals and other professionals, among which the professional work of Dr Lucía Cantera stands out. Leading cases have been achieved by this team, such as the seizure of tens of thousands of counterfeit Puma T-shirts, luxury products and even several favourable outcomes in cases of transit containers which allowed the destruction of the items and reimbursement of damages.

IP prosecution (trademarks, patents, copyrights, domain names, regulatory affairs): IP in Uruguay is led by Dr Natalia Paladino, specialist in trademarks and patents who has more than 15 years of experience. As a lawyer she has led many cases at national and regional levels, being recognised for the importance of the success she has achieved. She is an expert in prosecution work and has represented several clients in trade dress, trademark and patent litigation cases which have set precedents in the country. Professionals Diego Cervieri and Andrea Oliva, who carry out issues relating to IP in Latin America and the world, stand out in her team. Some of the prominent cases are linked to the three-dimensional BIC brands, the distinctiveness of Crocs, Sony Computer and the worldwide defense of Aiwa, Dolby, Pop- Sockets and Cipriani brands, among others. This team recently incorporated the Regulatory Affairs area, led by Dr (DMTV) Viviana Cervieri.

Corporate: Led by Dr Pablo Monsuárez, the corporate team is formed of more than ten senior lawyers in Uruguay, Paraguay and Bolivia. Recently, he has led the team that carried out one of the most important businesses in Uruguay in the last decade, the purchase of the former Hotel San Rafael by the Cipriani Group for the construction of a luxury complex of buildings designed by renowned architect Rafael Viñoly. The team is completed with 20 other specialists, including junior lawyers and paralegals specialised in contracts, criminal procedural law, and civil law.

Languages: English, Spanish, Portuguese, Italian, French

Clients: Some of the most important companies in the world, such as: Adidas, Adobe, Aiwa, Apiter Limitada, S.A.B. de C.V., Apple, Babyliss SARL, Beats, Bulgari, Calvin Klein, Cartoon Network, Casio, Chanel, Cipriani, Conair, Crocs, DC Comics, Dior, Dolby, Eli Lilly, Federation of The Swiss Watch Industry, Fendi, Fingerlings,Fox International, Givenchy, GoPro, Goyard, Gucci, Harley Davidson, Hasbro, Honda Motor CO, Jansport, KG, Lacoste, Lego, Les Laboratoires Servier, Levi’s, Liqwd INC, Longchamp, Major League, MCM, Mercedes Benz, Michael Kors, MLB, Mont Blanc, NBA, New Balance, Nike, Nintendo, Northface, Payless, Philip Morris, Pokemon, Polo Ralph Lauren, Procter & Gamble, Puma, Reef, Sandisk, Sony Interactive Entertainment, INC, S.A. de C.V, Soulcycle INC, Spin Master, Spoiloisirs SA (Lacoste), Televisa, The Simpsons, UNIVERSAL (Minions), The smiley Company, Tiffany, Tommy Hilfiger, Tory Burch, Tous, Twentieth Fox Film Corporation, Under Armour, Warner, Western

Legal Developments

SONY PLAYSTATION DUALSHOCK 4: 3D trademark registration