Uruguay

Uruguay’s economy experienced a period of stability and growth in 2017, which was aided to some extent by improving situations in neighbouring jurisdictions, including Argentina. There is not a great deal for international brand owners to worry about when it comes to protecting and enforcing marks in the Oriental Republic: the trademark office performs well in terms of efficiency, with smooth-running online systems and clear examination guidelines; the customs and police authorities are well trained in detecting counterfeiting goods; and there are a number of excellent IP and law firms offering able assistance. As a small jurisdiction, Uruguay does not have a big problem with piracy locally; however, many counterfeit goods – particularly from Asia – are routed through the Uruguayan market on their way to larger countries in the region.

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
Cervieri Monsuarez & Associates
Cervieri Monsuarez is Uruguay’s leading IP enforcement specialist – and one of the best anti-counterfeiting firms in Latin America. The brilliant Virginia Cervieri has developed matchless expertise in the fight against fakes and is a resolute enforcer who protects her clients’ intellectual assets with uncompromising zeal. She always goes the extra mile, investing in sophisticated online monitoring systems and educating customs authorities, so that no act of infringement can escape attention or go without an appropriate response. Those with portfolio management needs are also well served by the firm, thanks to the sterling efforts of Natalia Paladino and Mark Teuten. Head of prosecution Paladino dispenses strategic protection guidance laced with litigation insight, equipping clients with impenetrable defences that are designed to be future proof. Teuten, a UK solicitor, is a down-to-earth counsellor; he has an easygoing style, but no detail escapes his eagle eye when it comes to locking down hermetic IP protection.
CIKATO Lawyers – Intellectual Property
CIKATO responds rapidly to any query with succinct advice and is in hot demand as a result; in recent years, the firm has consistently been at the top of the trademark filing table in Uruguay. The depth of local and international analysis in the firm’s search reports is also an excellent unique selling point. Notably, CIKATO is increasingly engaged as a regional hub; for example, one global household and consumer products company tasks it with prosecution in Argentina, Chile and Paraguay, alongside Uruguay. Growth on the litigation and enforcement front is another evolving storyline for the set. IP chief Matias Cikato injects great energy into the practice, motivating and inspiring those around him. A former Philip Morris litigation and regulatory section in-house counsel, he sees issues from his clients’ perspective and provides internationally relevant and commercially attuned guidance as a result. Moreover, when patrons would benefit from a less rigid approach at the trademark office, Cikato knows what buttons to push. Holding the reins of the litigation department is Mauro Marin, a “professional, reliable and creative” crowd pleaser who oversees multi-jurisdictional enforcement programmes with relish. He sits on the Uruguayan Anti-piracy Board of the chamber and is dedicated to combating the scourge of counterfeits. “Super smart” Diego Chijane leads the charge for prosecution and also demonstrates a particular penchant for administrative trademark disputes. A top IP scholar – he has written several oft-cited works on trademark law – he is nevertheless an approachable professional who eschews legalese for clear and concise counsel.
Fernández Secco & Asociados
Diligence, attention to detail and flexibility characterise Fernández Secco’s trademark offering. An IP-focused ensemble – it also provides accounting and tax and company law services – it can handle the full range of contentious and non-contentious instructions and is regarded as a first-rate and reliable one-stop shop by in-house professionals and associate firms across Latin America and further afield. Seasoned pro Gonzalo Fernández Secco captains the side and brings his full experience to bear for the benefit of his colleagues and clients. A member of an assortment of both domestic and international IP associations, he has an incredible network of practitioners with whom to share best practices and insights and therefore, his advice is extremely well informed and global in scope.

“FERRERE has the knowledge, experience, regional network and creativity to solve any IP problem. Its attitude is open and warm, so you always feel comfortable in its hands.” “The team gets deeply involved in clients’ concerns and has fine analytical expertise to go along with excellent communication skills.” A commercial firm with a substantial IP practice, it adopts a highly sophisticated approach; for example, it carefully tracks trademark office decision-making trends in order to identify the least resistant paths to a successful registration or opposition result. Agustín Mayer West and Stella Weng have been overseeing the Gloria matters and have also been busy defending MasterCard’s Maestro brand and its famous interlaced circle design. Mayer West heads the IP department and cultivates an outstanding reputation as a business-minded trademark expert. Incidentally, if a pharmaceutical patent and regulatory lawyer is needed, he is the man to call on. Weng’s 25 years of experience stand her in good stead for whatever mandate comes through the door. Her practice is a broad church, encompassing patent and trademark prosecution and IP commercialisation. Alejandro Alterwain has had a busy time in the profession of late, marked by his successful representation – together with Mayer West– of Uber against the Taxi Union, which was judged to have registered a trademark for anti-competitive reasons. His patrons simply describe his work as “exceptional”. On top of it all, “FERRERE is, for sure, the best option in Uruguay for data privacy matters”. Martín Pesce is the leading expert in this regard, and he makes his debut in the WTR 1000 this year on the back of emphatic endorsements from brand owners. “He is incredibly innovative and really takes the time to understand the business needs of his clients.”

Fischer Abogados
With its granular understanding of black-letter IP law and the Uruguayan trademark office’s rules, procedures and tendencies, Fischer Abogados files and prosecutes applications with a meticulous attention to detail. However, this is only half the story; the outfit really comes into its own when counselling clients strategically on how best to manage and leverage an IP portfolio internationally. Mattel, NBCUniversal, Caterpillar and DreamWorks Animation are just some of the names to capitalise on all that Fischer has to offer. Equally, the group is adept at litigation and has a reputation for cool and calm representation in the most convoluted and heated disputes. Much of this is down to Gustavo Fischer himself, a global thinker, first-class advocate and shrewd tactician whom many regard as among the best IP practitioners in the region. As one client comments: “Gustavo and his firm get a 10 out of 10 in terms of service, efficiency, responsiveness and litigation and registration expertise. We manage trademarks in over 30 countries worldwide, and Gustavo is one of the top professionals, if not the top professional, in those jurisdictions.” Debuting in the guide this year, Mercedes Castells is also deserving of much credit and with Fischer, the two form a dynamic duo when working on key files. A perspicacious all-round adviser, Castells’ expertise spans IP, technology, media and telecommunications law.
Fox & Lapenne
An “efficient”, high-volume filer which also pays fastidious attention to quality, Fox & Lapenne is an esteemed name in Uruguayan and Latin American IP circles, and is “always a pleasure to deal with”. In business since 1944, the firm has an enviable stable of domestic and international clients who rely on it for cost-effective but robust protection. Although most widely known for its prosecution prowess, it maintains a popular litigation and legal department and is able to go the distance when infringements occur. World-class leadership is provided by Victoria Fox and Marcos Lapenne, both of whom are thoroughly schooled in the art of trademark protection and enforcement.
Pittaluga & Associates
Pittaluga is a favourite of international brand owners with business interests in Uruguay and ensures that the sprawling portfolios of Unilever and Abbott Laboratories – among many others – are kept in the best of health. The squad’s contentious instincts are on point, too, enabling it to navigate through protracted and difficult cases with consummate ease. Acting for Swedish outdoor gear supplier Haglöfs Scandinavia against a local company, the group secured a favourable ruling in an opposition, which the trademark office doubled down on after the Uruguayan entity appealed. Again staying the course, it also netted success for FIFA in connection with a notable seizure and destruction of apparel items with forged FIFA logos. The driving force behind the firm’s continued success, Martin Pittaluga is a vigorous, young, yet experienced professional whose management and business awareness is matched by his outstanding IP skill set. “What separates Martin’s firm from others is the promptness, accuracy and good-natured service. Martin operates at a uniquely high level in terms of both customer service and giving business-relevant advice. The side also has strong relationships with firms throughout Latin America, which is a useful resource for international affairs.”
Vanrell IP
In the four years since its establishment, Vanrell IP has gone from strength to strength; its personalised approach to legal guidance and client service continues to attract a variety of punters. Maintaining intimate relations with top-quality associates overseas, the set stays abreast of international developments in trademark law and exploits this knowledge to great effect at home in a manner that contributes to the development of the local IP scene for the benefit of everyone. Juan Vanrell’s business background lends his advice a distinctly commercial edge. A former president of the Inter-American Association of Intellectual Property, he is extremely well connected.
Bacot & Bacot
Brand owners in search of quality representation, speedy service and cost-effectiveness find that Bacot & Bacot strikes just the right balance. The firm is best known for its trademark filing activities; the team, captained by Oscar Bacot Silveira, guides applications to registration with a minimum amount of fuss and is always on the lookout for opportunities to secure valuable intangible rights. However, the squad offers a diverse array of other services, encompassing patent and copyright protection, domain names, licensing and litigation.

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
Mercedes Castells - Fischer Abogados
Diego Chijane - CIKATO Lawyers – Intellectual Property
Matias 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
Martín Pesce - FERRERE
Martin Pittaluga P - Pittaluga & Associates
Mark Teuten - Cervieri Monsuarez & Associates
Stella M Weng - FERRERE
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Issue 74