Uruguay

While the recent struggles endured by neighbouring Argentina and Brazil have had a ripple effect in Uruguay, the economy is nonetheless in a relatively healthy position, with significant growth recorded over the past decade. The backlog at the trademark office has reduced such that it now takes approximately nine months to register a trademark unopposed. However, increased resources are needed to cut this further and ensure that these improvements do not result in increased filing times for other IP rights. With a fast flow of infringing products entering the Montevideo port from Asia – either to be sold locally or in transit to Paraguay and Brazil – counterfeiting is a perennial concern for brand owners with interests in this market. The government has the issue on its radar, however, and some excellent lawyers are on hand to address the problem.

Firms: enforcement and litigation

1
Cervieri Monsuarez & Associates
Fischer Abogados
2
CIKATO Lawyers – Intellectual Property
Fernández Secco & Asociados
Fox & Lapenne
Pittaluga & Associates
Vanrell IP

Firms: prosecution and strategy

1
CIKATO Lawyers – Intellectual Property
Fox & Lapenne
2
Bacot & Bacot
Cervieri Monsuarez & Associates
Fernández Secco & Asociados
Fischer Abogados
Pittaluga & Associates
Vanrell IP
Bacot & Bacot
Portfolio management is the metier of Bacot & Bacot, a boutique established in 1988 by the redoubtable Oscar Bacot Silveira. Efficiency and a high degree of automation are hallmarks of the practice, although these never come at the cost of close client contact and personalised advice. The set offers a broad range of legal services in addition to prosecution, and is also proficient at litigation and the negotiation of IP transactions.
Cervieri Monsuarez & Associates
A robust litigation and enforcement practice is the jewel in the crown of Cervieri Monsuarez & Associates’ A-to-Z IP service. For top international brands looking to stamp out counterfeiting across Latin America, there is no better choice; it is the only Uruguayan outfit with an online monitoring system and is continually adding value and building IP awareness in the wider community through comprehensive training provided to the customs and police authorities. Gutsy litigator Virginia Cervieri pulls no punches when defending clients’ corners; adidas is just one marquee brand that relies on her for results. She regularly sets precedents in civil infringement suits, too – most notably of late in the trade dress area, where she has been representing Ferrero Rocher. The firm runs a quality prosecution operation which, like its contentious practice, is international in scope. Through recently established local offices in Paraguay and Bolivia, it provides a joined-up service across the region. Head of trademark and patent prosecution Natalia Paladino debuts in the WTR 1000 this year. The versatile practitioner also lends wisdom and insight on contentious affairs, and worked closely with Cervieri and other team members on the Ferrero Rocher matters. English lawyer Mark Teuten is another valuable contact for portfolio management, given his detailed knowledge of international trademark protection systems.
CIKATO Lawyers – Intellectual Property
Gold-rated, long-established boutique CIKATO regularly ranks top of the filing tables, but quality invariably takes precedence over quantity; the group shines when it comes to the strategic management of local and international trademark portfolios and the provision of legal opinions. Group head Matias Cikato – a Uruguayan lawyer with an IP LLM from George Washington University and in-house experience at Philip Morris on his résumé – is as internationally informed as they come. He and prosecution and administrative disputes ace Diego Chijane have chalked up a striking success rate in the High Administrative Court. Although primarily responsible for overseeing the team’s patent prosecution efforts, Andres Cikato is another name for brand owners’ address books. Spearheading the increasingly impressive litigation practice is Mauro Marin, a shrewd enforcement tactician and founding member of the Uruguayan Anti-piracy Chamber. Of late, he has handled many seizures for Crocs. Foreign associates “love to work with CIKATO – you can always count on it because of the quality of its representation, its responsiveness and its cost effectiveness”.
Fernández Secco & Asociados
“One of the best” when it comes to trademark filing, this “respected firm” is “very responsive” and produces “excellent results for reasonable fees”. Gonzalo Fernández Secco is the talisman and a popular figure in the international trademark community. Active participation in a range of IP associations has enabled to cultivate an extensive network of contacts; he also leverages his knowledge of best practices in other jurisdictions to continually hone his own firm’s offering. Sophisticated and cosmopolitan commercial outfit Ferrere has a highly specialised IP department which functions independently, much like a boutique. It makes light work of even the most complex cases: it recently recovered a domain name through a preliminary injunction – a first in the market – for a worldwide leader electronics and technology leader; and also scored a win for Grupo Gloria against Nestlé, overcoming an opposition filed against its client’s registration for GLORIA CRUNCH. “Any relationship with Ferrere is always productive – the firm is quick to respond and process new requests, and its highly qualified professionals produce outstanding outcomes.” IP head Agustín Mayer West has “exceptional management skills and leadership abilities”, and has driven year-on-year growth in the IP area. He has surrounded himself with first-rate talent, including the “truly helpful and efficient” Stella Weng and Alejandro Alterwain, who “always exceeds expectations”. Weng has abundant experience of prosecution and administrative proceedings; while Alterwain blends IP and competition expertise in a compelling way.
Fischer Abogados
Fischer Abogados has won the enduring loyalty of “excellent international clients” because it “responds fast and gives a high-quality service” – and knows how to litigate in a challenging market. “Outstanding academic” Gustavo Fischer is “the perfect professional and attorney”. “He is very focused on the customer and knows just what to do in any situation.”
Fox & Lapenne
“Fox & Lapenne is a great organisation and definitely belongs in the top tier for prosecution in Uruguay.” “It performs its role with amazing efficiency and is a pleasure to deal with.” “You can quickly lose a valuable client because of the mistakes committed by a peer firm, but you can rely on Fox & Lapenne because of the quality of its work,” reports one foreign correspondent. Versatile duo Victoria Fox and Marcos Lapenne anchor the prosecution and litigation practices.
Pittaluga & Associates
“A compact firm which is really passionate about intellectual property, Pittaluga has a great international client base and top-notch communication skills.” Its seasoned prosecution team understands exactly what works and what doesn’t before the National Directorate of Industrial Property – know-how which has seen it entrusted with the stewardship of Unilever’s 700-plus portfolio in Uruguay. Its litigators are unflinching when oppositions or infringement suits are filed, and have lately achieved favourable results for Macy’s Merchandising Group and Danish design house BoConcept. Dynamic operator Martin Pittaluga manages the firm with a deft touch and applies his commercial savvy to furthering patrons’ business objectives.
Vanrell IP
Vanrell IP’s experienced team includes more than 20 staff members with legal, technical and administrative expertise. Customising its service to fit the individual needs of its diverse clientele, it can field any question relating to the protection or enforcement of brand rights – and give the correct answer. The organisation was established by IP agent Juan Vanrell, a former president of the Inter-American Association of Intellectual Property. With a business administration background, he instinctively grasps what companies want to achieve commercially and cleverly deploys his IP knowledge to make this happen.

Individuals

Virginia Cervieri - Cervieri Monsuarez & Associates
Gustavo Fischer - Fischer Abogados
Agustín Mayer West - Ferrere
Juan Vanrell - Vanrell IP
Alejandro Alterwain - Ferrere
Oscar Bacot Silveira - Bacot & Bacot
Diego Chijane - CIKATO Lawyers – Intellectual Property
Andres Cikato - CIKATO Lawyers – Intellectual Property
Matías Cikato - CIKATO Lawyers – Intellectual Property
Gonzalo Fernández Secco - Fernández Secco & Asociados
Victoria Fox - Fox & Lapenne
Marcos Lapenne - Fox & Lapenne
Mauro Marin - CIKATO Lawyers – Intellectual Property
Natalia Paladino - Cervieri Monsuarez & Associates
Martin Pittaluga P - Pittaluga & Associates
Mark Teuten - Cervieri Monsuarez & Associates
Stella M Weng - Ferrere
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Issue 68