For brand owners, counterfeiting can be a significant headache in Uruguay, as the country is a major transit route for fake merchandise destined for the Brazilian and Paraguayan markets. A lack of specialised prosecutors and low prioritisation of the counterfeiting problem at government level are negatively affecting enforcement efforts – making the high-level specialist expertise provided by the practitioners recognised in our rankings even more invaluable.
Firms: enforcement and litigation
- Cervieri Monsuarez & Associates
- Fischer Abogados
- CIKATO Lawyers – Intellectual Property
- Fernández Secco & Asociados
- Pittaluga & Associates
- Vanrell IP
Firms: prosecution and strategy
- Fox & Lapenne
- Bacot & Bacot
Cervieri Monsuarez & Associates
“Practical and responsive in any trademark scenario, Cervieri Monsuarez is highly recommended as a strategic partner for regional business development.” Its integrated approach means that efficiency is a hallmark: the specialised team shares work among five offices in three jurisdictions, ensuring that each brief is optimally serviced. Another USP is cutting-edge in-house monitoring software which expedites responses and allows it to more easily “maintain close and cordial client relationships”. Widely reputed managing partner Virginia Cervieri steers the ship. Operating across the IP spectrum, she is a reference in the anti-counterfeiting field and has built an impressive enforcement and litigation practice alongside Anabel Frachia. With an outstanding contentious pedigree of her own, Franchia oversees the firm’s regional anti-counterfeiting efforts, advising world-leading sportswear and fashion brands such as Adidas, Nike and Levi Strauss. Natalia Paladino is another assured enforcer, but also captains the stellar prosecution department. As testament to her versatility and astute management of important accounts, she ascends to the gold tier for 2021. Finally, dual-qualified English lawyer Mark Teuten is the first port of call for cross-border briefs and ensures that international standards are not only met, but exceeded.
CIKATO Lawyers – Intellectual Property
An esteemed boutique with a highly focused team, “CIKATO has a longstanding and undeniable ability to produce outstanding results” in all aspects of trademark practice. On the contentious front, department head Mauro Marin sets the tone, with a glittering record in must-win disputes. With Diego Chijane and Matias Cikato on deck, the prosecution team is also one of Uruguay’s most prolific. Chijane – a top IP scholar with over 20 years in the game – takes charge here; a stint at the Uruguayan Trademark Office has given him insider insight into how best to navigate around registration barriers. Having previously worked in the United States and Switzerland, Cikato brings a valuable cosmopolitan perspective to the mix. Both Chijane and Cikato provide commercially aware counsel aimed squarely at the optimisation of IP value.
Fernández Secco & Asociados
“Blending a thorough understanding of IP, tax and commercial law, Fernández Secco renders branding advice from a pragmatic, business-oriented perspective.” Its “commercially savvy” IP squad has filing down to a tee and – thanks to the drive and vision of founding partner Gonzalo Fernández Secco – makes adding value its mission, particularly in litigation and transactional scenarios. As director of trademark management records, Isabel Fernández Requena is also instrumental to the smooth operation of the ensemble. Working alongside her is rising star Agustina Fernández Giambruno, who “remains responsive and clear to clients in complicated matters” and is often sought out by start-ups.
At Ferrere, the experienced and versatile IP team operates within a full-service structure spanning South and Central America, and comfortably deals with all prosecution, enforcement and licensing issues thrown at it. Eminent all-rounder Agustín Mayer West directs both the Uruguayan and the wider regional practices; an “outstanding and widely respected professional, as well as a genuine person”, he has cultivated a team which is equally at home fighting legally complex cases as at managing extensive portfolios. On the non-contentious front, recent highlights include a successful registration for Apple and an annulment action for Bayer – instructions on which prosecution pro Stella Weng played a key role. When high-stakes disputes arise, the cool-headed Alejandro Alterwain steps up to the plate; he has taken hotly contested suits all the way up to the Supreme Court. An IP authority with ancillary data protection expertise, Martín Pesce designs astute branding strategies with aplomb.
Focused on technology and innovation, Fischer Abogados consistently prioritises quality over quantity, with superb results. With a flair for building nascent brands into valuable intangible assets, it is particularly popular with start-ups, although it also has a strong following among multinational rights holders. One of the jurisdiction’s foremost IP and legal minds, Gustavo Fischer has occupied leadership positions in various international IP associations and is a professor of public law litigation on the University of Montevideo master’s programmes. He is a go-to for high-level strategic advice. Supplementing deep IP know-how with insight into technology, media, telecommunications and privacy law, renaissance woman Mercedes Castells is a great fit for sophisticated companies with wide-ranging legal concerns.
Fox & Lapenne
Considered “the largest and most complete Uruguayan law firm, both in general practice and in intellectual property”, Fox & Lapenne has been safeguarding, enforcing and monetising brands since 1944. The IP and commercial outfit has an enviable stable of local clients, but stands out for its international dexterity: advanced in-house translation capabilities make it a cost and time-efficient choice for multinationals. Marcos Lapenne and Victoria Fox are the leading lights, well versed not only in trademark protection, but also in enforcement and anti-counterfeiting matters.
Pittaluga & Associates
An unswerving commitment to client care and an intuitive grasp of how best to establish and maintain a foothold in the Uruguayan market set Pittaluga & Associates apart from the competition. Initially an IP boutique, it has since extended its offering into commercial, corporate and tax law, making it ideally placed to devise joined-up solutions to the most demanding challenges faced by Fortune 500 companies. Managing partner Martin Pittaluga holds things down on the trademark front, monitoring portfolios with an eagle eye and enforcing rights in a decisive and timely manner.
Vanrell IP enjoyed a landmark year in 2020 – its incorporation of venerable IP firm Barbosa & Caravia brought it a slew of new clients and deepened its bench. This development is characteristic of the boutique’s drive and dynamism; sophisticated management tools ensure that even the most complex assignments are a breeze, while a reliable network of international associates ensures that it can operate flawlessly on the global stage. General director Juan Vanrell has woven the firm’s narrative; he is also highly engaged in the international IP community and an exceptional strategist to boot. When it comes to enforcement, Veronica Vanrell is the person to call; her anti-counterfeiting nous has won her many fans in the fashion industry.
Other recommended experts“Bringing great energy and passion to all aspects of IP practice, Silvina Vila has sophisticated knowledge of the law and produces strong displays in judicial litigation.” She co-heads the IP practice at Bergstein Abogados.
- Virginia Cervieri - Cervieri Monsuarez & Associates
- Diego Chijane - CIKATO Lawyers – Intellectual Property
- Gonzalo Fernández Secco - Fernández Secco & Asociados
- Gustavo Fischer - Fischer Abogados
- Agustín Mayer West - Ferrere
- Natalia Paladino - Cervieri Monsuarez & Associates
- Juan Vanrell - Vanrell IP
- Alejandro Alterwain - Ferrere
- Oscar Bacot Silveira - Bacot & Bacot
- Mercedes Castells - Fischer Abogados
- Matias Cikato - CIKATO Lawyers – Intellectual Property
- Agustina Fernández Giambruno - Fernández Secco & Asociados
- Isabel Fernández Requena - Fernández Secco & Asociados
- Victoria Fox - Fox & Lapenne
- Anabel Frachia - Cervieri Monsuarez & Associates
- Marcos Lapenne - Fox & Lapenne
- Mauro Marin - CIKATO Lawyers – Intellectual Property
- Martín Pesce - Ferrere
- Martin Pittaluga P - Pittaluga & Associates
- Mark Teuten - Cervieri Monsuarez & Associates
- Veronica Vanrell - Vanrell IP
- Stella M Weng - Ferrere