Uruguay

Uruguay’s economy is robust and has been for over a decade, putting it in stark contrast to its neighbours Brazil and Argentina; it is a market in which brand owners have confidence. The performance of the National Directorate of Industrial Property appears to be generally satisfactory too, although practitioners would like to see more flexibility in terms of e-filing and expedited oppositions. One notable change for brand owners to be aware of is that Uruguay will be introducing non-use cancellations in 2019. The WTR 1000 firm rankings for Uruguay this year remain consistent with last year – albeit with several new inclusions at an individual level – which speaks to the stability of the market. Interestingly, some firms are expanding their regional activities; Cervieri Monsuarez & Associates now has offices in Paraguay and Bolivia; FERRERE is present in the same, as well as Ecuador.

Firms: enforcement and litigation

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

Firms: prosecution and strategy

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

Bacot & Bacot

Often brought in to advise companies in the early stages of brand ideation, Bacot & Bacot is not just a filing mill. Enthused by innovation, the team has lots to contribute before action is taken to get rights on the register. When the prosecution process begins, the group kicks on and navigates patrons through the trademark office efficiently and without error. Oscar Bacot Silveira is a key contact for interested parties.

Cervieri Monsuarez & Associates

“If you are looking for a reliable firm, Cervieri Monsuarez is the right choice.” This statement holds true whether you need to protect or enforce trademarks in Uruguay, in the notoriously difficult IP markets of Paraguay and Bolivia in which the firm has IP-specialised offices, or across Latin America. The set is most famous for its cutting-edge enforcement and litigation practice, which is spearheaded by senior partner Virginia Cervieri and regional anti-counterfeiting ace Anabel Frachia. Cervieri is a pioneer in the field and, without question, one of the continent’s top authorities. “She is responsive, clear, accurate and extremely proactive” and “her rates are very reasonable”. Frachia, who earns WTR 1000 stripes for the first time, is “a first-rate professional who answers questions rapidly and thoroughly”. Ascending to the gold tier for prosecution and strategy this year, the set is no less illustrious on the non-contentious side of the practice; its international portfolio management capability and general global outlook set it apart from competitors. Head of patent and trademark prosecution Natalia Paladino is a sage cross-border strategist and detail-oriented practitioner whose understanding of the fine details in the region’s trademark legislation make her an invaluable resource. English lawyer Mark Teuten’s knowledge of international trademark systems is another huge draw.

CIKATO Lawyers – Intellectual Property

A venerable name in Uruguayan intellectual property, CIKATO knows all the ins and outs of prosecuting trademark applications and is regularly at or very near the top of the country’s filing statistics tables. However, the side is not just about numbers; the team develops portfolios into coherent wholes, building commercial value for clients. Also engaged in litigation and anti-counterfeiting and exploiting expertise in advertising and corporate law, CIKATO can be counted on whatever is going down. Matias Cikato, Mauro Marin and Diego Chijane are key names for the address book. Cosmopolitan in his outlook, Cikato obtained his IP master’s at George Washington University in DC and then joined Philip Morris International in Switzerland, serving in both its trademark and litigation departments, before coming back to Uruguay. An expert in trademark, entertainment and copyright law, Marin takes the reins of the litigation department. Watching over the prosecution and administrative proceedings practice, Chijane is known for his erudition and scholastic attainments. Having had a stint at Uruguay’s trademark office, he knows how it all works and can navigate obstacles on the path of prosecution with ease.

Fernández Secco & Asociados

During 2017, IP, tax and commercial law outfit Fernández Secco increased its patent and trademark prosecution and litigation activities significantly. This, along with astute recruitment, created a great deal of momentum within the practice, which was then expertly capitalised on in 2018. Things are going well for the team, which comes down to its honest, direct and commercially relevant advice. Put simply, “it focuses on finding solutions”. Founding partner Gonzalo Fernández Secco sets the tone for his younger colleagues, including WTR 1000 first-time-flyer and “super-quick, experienced, reliable and highly proactive” practitioner Agustina Fernández Giambruno. She is at the top of her game right now and cultivates an excellent reputation at home and abroad by teaching on an IP postgraduate course, playing a key role in the Uruguayan Association of Trademark Attorneys and chairing the INTA Country Marks Committee. Another new entrant in the rankings this year is Isabel Fernández Requena who “gives good, efficient advice for a fair price”.

FERRERE 

For international companies seeking top-of-the-range IP services alongside a holistic corporate, commercial and dispute resolution offering, there is only one choice – FERRERE. Although it has recently experienced growth in traditional trademark areas – such as filing – its focus lies not on the more commoditised aspects of the practice but on solving the most legally complex conundrums. It pulls this off not just in Uruguay but also in Ecuador, Paraguay and Bolivia, where it maintains offices. The variegated skill sets of its lawyers enable it to address tessellated matters that some of the market’s more traditional boutiques struggle with. Alejandro Alterwain, for instance, has a fine-milled knowledge of IP and unfair competition law, while innovator Martín Pesce wields an all-encompassing understanding of data privacy and regulatory law. A lot of instructions also arise out of situations in which clients stand to gain or lose a great deal. Calm under pressure, Agustín Mayer West provides assured leadership. “He has this great ability to resolve conflicts and get the best outcomes. He responds quickly and gets right on top of problems, adopting a collaborative approach and constantly finding ways to add value.” He frequently links up with Stella Weng serving as a strategist, while Weng exercises her eagle eye for detail and quality in prosecution.

Fischer Abogados

Fischer Abogados loves to push the boundaries of the law and break new ground in terms of customer service. Ultra-sophisticated and commercially attuned, it focuses on quality without sacrificing on efficiency, making it the darling of a host of discerning marquee international rights holders. Heavyweight brands come in their droves for Gustavo Fischer and Mercedes Castells, a double act which receives some of the loudest applause of any team in the country. “They handle matters with speed and precision, give advice in the clearest and most concise way possible and achieve remarkable results. They are also respected and well-connected within the Latin American and worldwide IP community. Their passion for their clients and for intellectual property itself shines through.” Gustavo Fischer is particularly noted as a “prestigious academic whose legal knowledge goes well beyond the strict limits of intellectual property”.

Fox & Lapenne

“A major firm in Uruguay, Fox & Lapenne understands how to keep the most demanding brand owners satisfied and is very flexible and adaptable. The team knows exactly what it is doing on the prosecution and strategy side and is utterly proficient and trustworthy.” The firm’s litigation practice is also well established, so if things get heated there is no need to look for representation elsewhere. Faith placed in Victoria Fox and Marcos Lapenne always gets rewarded. The dynamic duo are “seriously focused”, have a loyal following of in-house trademark counsel and are frequently called on by foreign associates and domestic peers in conflict of interest scenarios.

Pittaluga & Associates

Pittaluga & Associates started out life two decades ago as an IP specialist and although it has since diversified into other fields of law including foreign investment and international business transactions, trademark practice remains near and dear to its heart. Ever vigilant, its practitioners monitor and promote the health of patrons’ IP portfolios internationally and react swiftly and decisively to any potential threats. Martin Pittaluga keeps his team focused on realising clients’ commercial objectives while maintaining the highest level of general responsiveness. He cultivates close relationships with those he represents and renders a personal service to every one of them.

Vanrell IP

Nimble boutique Vanrell IP “responds to trademark queries very fast with complete advice”. “Thanks to its excellent network of correspondents in Central and Latin America, it ensures its clients receive a consistent standard of service across the region.” Heading the outfit, Juan Vanrell is “well accustomed to taking care of international companies”. “He works in the most efficient manner and, simply, is someone you can trust to take care of things.” Described by foreign associates as “exceptional”, Veronica Vanrell joins him in the WTR 1000 guide for the first time this time round. Experienced in the anti-counterfeiting domain, she acts for a number of luxury goods brands from Italy and other international jurisdictions.

Individuals

  • Virginia Cervieri - Cervieri Monsuarez & Associates
  • Gustavo Fischer - Fischer Abogados
  • Agustín Mayer West - FERRERE
  • Juan Vanrell - Vanrell IP
  • Alejandro Alterwain - FERRERE
  • Oliver Bacot - Bacot & Bacot
  • Mercedes Castells - Fischer Abogados
  • Diego Chijane - CIKATO Lawyers – Intellectual Property
  • 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