Uruguay

Following the implementation of Section 6 of Decree 277/2014 on 1 January 2019, Uruguay has introduced a trademark use requirement, allowing for cancellation actions to be filed after five years of alleged non-use. The development, which brings domestic legislation in line with that of most Latin American countries, has changed the national approach to legal counselling in the area – practitioners are now more cautious about filing and more likely to recommend it only where clients intend to make genuine use of their marks. Besides this change, Uruguay remains economically, politically and legally stable, which is reflected in the WTR 1000’s rankings this year, where the market’s key players have stayed the same.

Firms: enforcement and litigation

  • Cervieri Monsuarez & Associates
  • Ferrere 
  • Fischer Abogados
  • CIKATO Lawyers – Intellectual Property
  • Fernández Secco & Asociados
  • Pittaluga & Associates
  • Vanrell IP

Firms: prosecution and strategy

  • Cervieri Monsuarez & Associates
  • CIKATO Lawyers – Intellectual Property
  • Fernández Secco & Asociados
  • Fox & Lapenne
  • Bacot & Bacot
  • Ferrere 
  • Fischer Abogados
  • Pittaluga & Associates
  • Vanrell IP

Bacot & Bacot

Since 1988, when the firm set up shop in Montevideo, Bacot & Bacot has been providing top IP prosecution and strategy to a mixed clientele of domestic and international patrons. Covering everything short of litigation, the boutique successfully guides brand owners through each step of their trademark filing journey, from offering feasibility analyses at early stages to defending their rights at the Customs Office. Interested parties should contact founding partner Oscar Bacot Silveira.

Cervieri Monsuarez & Associates

A full-practice oufit with a strong innovation focus, Cervieri Monsuarez & Associates continues to grow year by year, routinely attracting new high-calibre clients. The secret? First-class, value-adding service combined with enviable geographical coverage – not only in its Uruguay, Paraguay and Bolivia offices, but across the whole of Latin America and beyond. In the IP practice, this holds true for prosecution and strategy, but also for contentious work. In fact, it is best known in the region as “a leading firm in trademark enforcement and litigation”, partially due to name partner Virginia Cervieri’s anti-counterfeiting superpowers. Joining the enforcement heavyweight in the litigation strategy front, Natalia Paladino oversees all contentious IP cases and handles some of the group’s finest trademark portfolios in the region. Anabel Frachia takes charge of the anti-counterfeiting practice across Uruguay, Bolivia and Paraguay, coordinating a 30-strong team of industry stalwarts. Last but not least, English lawyer Mark Teuten complements the side with his shrewd knowledge of global legal systems.

CIKATO Lawyers – Intellectual Property

Described as “one of the best IP firms in the country and the most experienced in trademark issues”, CIKATO remains one of the most prominent names in the Uruguayan IP landscape. One of the largest filers in the country, if not the largest, the boutique’s capabilities also include enforcement and anti-counterfeiting – an area successfully led by the “fantastic litigator” Mauro Marin. “An expert in customs actions,” he has recently coordinated a large operation for a marquee electronics entity, guaranteeing the seizure of 150,000 counterfeit articles. Leading the prosecution and administrative conflict department, Diego Chijane doubles up as a shrewd IP lawyer and highly respected academic, being recognised as a nationwide authority in the field. Another safe pair of hands on the trademark prosecution front, Matias Cikato “is a very knowledgeable trademark attorney who delivers great, timely and cost-effective advice”, and whose past experience as in-house counsel is deemed to be “extremely valuable”.

Fernández Secco & Asociados

A highly integrated team, Fernández Secco & Asociados’s professionals draw from each of the ensemble’s IP, accounting, and commercial departments to offer eminent fashion and pharmaceutical companies quick, efficient and comprehensive services. One of the country’s top filers, the boutique’s competences stretch far beyond IP prosecution and plans to transform the practice into a full-service outfit are now well underway. Isabel Fernández Requena and Gonzalo Fernández Secco lead these efforts on the trademark side, delivering a service that is “excellent at all levels”. When disputes arise, all-rounder Agustina Fernández Giambruno takes over, having recently put her enforcement attributes to good use tackling an important anti-counterfeiting action around patron Alpargatas’s well-known HAVAIANAS mark.

Ferrere 

Brand owners looking for a full-service Latin American powerhouse should look no further than FERRERE – the 250-strong team, conveniently scattered across four South and Central American countries is sure to meet and exceed expectations. When it comes to IP matters, the legal giant boasts a top-notch line-up of litigators, advisers and prosecutors, starting with Agustín Mayer West – a wise regional manager who crafts decisive advice for FERRERE’s leading IP cases. “Very talented and always available” Stella Weng manages local portfolios of global top-tier clients, having recently partnered with West to defend Apple’s famous IWATCH mark against an opposition brought by Swatch AG. All-rounder Alejandro Alterwain, recently ascending to counsel, adds value with his advanced knowledge of trademark and unfair competition litigation, overseeing most of the key cases handled by the department. Lastly, data privacy wizard Martín Pesce brings in a deep understanding of the food, entertainment and sports industries, handling plenty of IP negotiations and agreements in these areas.

Fischer Abogados

Previously an IP-focused outfit, Fischer Abogados has redefined itself as a technology law, innovation and litigation boutique, “providing excellent quality, caring and efficient services” across all fields of technology. In doing so, it has maintained a quality over quantity approach that never fails to impress competitors, who keep referring to the outfit as “a pleasure to work against”. With Gustavo Fischer and Mercedes Castells in charge, this comes as no surprise. Uruguay’s “king of intellectual property”, Fischer has taken on some of the world’s most prominent companies, routinely litigating his way into groundbreaking victories on their behalf. Castells, for her part, leads the way in the licensing and strategy fronts, handling some of the finest trademark portfolios at the firm.

Fox & Lapenne

Home to the largest translation department in Uruguay, Fox & Lapenne certainly speaks its patrons’ language. Operating as an IP and commercial boutique since 1944, the outfit has long offered complete, business-savvy advice to patrons in the pharmaceutical, entertainment and banking industries, though its highly sought-after trademark filing practice remains its defining feature. Ensuring that the ship runs smoothly, partners Victoria Fox and Marcos Lapenne form a powerful duo, capable of tackling any IP case that comes their way and serve as the first point of contact for interested brand owners.

Pittaluga & Associates

From the outset, renowned IP boutique Pittaluga & Associates focuses on providing top-class trademark and patents assistance to a select list of domestic and international names. To meet the latter’s increasingly complex needs, it is now expanding into adjacent legal fields, covering all aspects of commercial, tax and real estate law. Nevertheless, intellectual property remains the ensemble’s key priority and managing partner Martin Pittaluga takes it upon himself to guarantee the group’s continuous growth in this area. With over 15 years’ experience solving complex IP cases, born problem-solver Pittaluga handles some of the firm’s priority matters on both sides of the contentious/non-contentious divide, being responsible for managing Unilever’s trademark portfolio – one of the largest in the country, comprising more than 700 marks.

Vanrell IP

Some brand owners call Vanrell IP their “preferred firm in Uruguay” and it is not hard to see why – its “responsiveness, efficiency and ability to swiftly handle work across various jurisdictions in South America” are attractive traits for patrons with regional portfolios. This client satisfaction is significantly increasing the outfit’s workload and the small boutique has recently doubled its staff in order to tackle this steep growth. Overseeing these changes, as well as most prosecution matters at the practice, general director Juan Vanrell is a regional authority in IP strategy, possessing a global, forward-looking vision that is hard to match. With regard to customs actions, fashion law and enforcement expert Veronica Vanrell is the name to call; with her characteristic dynamism, brand owners can expect their anti-counterfeiting matters to be sorted swiftly and effectively.

Individuals

  • Virginia Cervieri - Cervieri Monsuarez & Associates
  • Diego Chijane - CIKATO Lawyers – Intellectual Property
  • Gustavo Fischer - Fischer Abogados
  • Agustín Mayer West - Ferrere
  • 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
  • Gonzalo Fernández Secco - Fernández Secco & Asociados
  • Victoria Fox - Fox & Lapenne
  • Anabel Frachia - Cervieri Monsuarez & Associates
  • 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
  • Veronica Vanrell - Vanrell IP
  • Stella M Weng - Ferrere