Montaury Pimenta, Machado & Vieira de Mello

WTR Research

The WTR 1000 focuses exclusively on trademark practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal trademark expertise.

Gold - Firms

With an unparalleled understanding of the inner workings of INPI, Montaury Pimenta, Machado & Viera de Mello is one of the most prolific prosecution outfits in Brazil. “Amazingly responsive and flexible with fees, it gives the impression of exclusivity to its clients.” Leading by example is trademark chief Eduardo Magalhães Machado, who has a flair for the fine print of brand management and licensing agreements. He has built up a first-rate team, including Clarissa Jaegger, a trusted portfolio adviser on many key accounts. With a professional command of five languages, she is well equipped to provide cross-border counsel – as are Joana de Mattos Siqueira and Luiz Edgard Montaury Pimenta. The firm’s foreign department head and president of ASIPI’s Trademark Committee, Mattos Siqueira is a truly well-connected practitioner whose constructive relationships with governmental and judicial authorities deliver benefits for multinationals such as Uber. The same may be said of Montaury Pimenta, the current president of the Brazilian Intellectual Property Association. He is a vital cog in the firm’s litigation practice alongside Ana Paula Affonso Brito, who proposes “business-minded, creative solutions in a fast manner”. Finally, Marianna Furtado de Mendonça makes her first entry in the WTR 1000 for 2021, having put in polished contentious performances for the likes of Hard Rock Café. “She really cares for her clients, putting in extra hours without ramping up ridiculous billing rates. Her legal, practical and commercial acumen results in balanced and successful strategies.”

Firm Profile

Montaury Pimenta, Machado & Vieira de Mello is a leading Brazilian IP law firm, working with national and international clients across the private and public sectors. With its head office in Rio de Janeiro and a satellite office in São Paulo, the firm provides advice across all aspects of IP rights and related areas. The firm’s services include strategic advice, legal analyses, searches, registrations, oppositions and administrative disputes; it also covers IP litigation, including invalidity and infringement actions, and the drafting of franchise contracts, and transfer of technology and licensing agreements.

The team handles both contentious and non-contentious IP matters and is engaged in many industry sectors, including telecom, electrical engineering, electronics, mechanical engineering, physics, life sciences and healthcare, biotechnology, chemicals and pharmaceuticals, software and computer sciences, nanotechnology, fashion, food services, cosmetics, footwear and sports.

Expertise

Montaury’s commitment to results, its expert knowledge in all industries sectors and its multi-disciplinary approach make it one of the best choices to protect IP assets in Brazil.

In addition, the firm’s professionals are members of several national and international IP associations. This engagement is extremely important because it enables the firm’s professionals to deepen their IP education, keep abreast of the Brazilian Patent and Trademark Office’s (BPTO) practices and decisions, and develop personal discussions with government and judicial authorities.

Montaury’s highly trained technical staff provides reliable, high-quality support at all stages of the trademark process, from the preliminary administrative level to the courtroom.

Main areas of practice

Trademarks

The trademark department is made up of experts responsible for managing large trademark portfolios and providing the best possible strategies for the protection of trademarks, in both the domestic and international markets.

The services include trademark searches; preparing and filing applications; monitoring and advice regarding conflicting marks; tracking the registration process before the BPTO and corresponding international entities; administrative motions including oppositions, replies to oppositions, appeals and compliance with office actions; nullity actions; data alteration before the BPTO and corresponding international entities; renewals; and drafting trademark legal opinions.

Advertising and marketing law

Montaury has skilled professionals experienced in the preparation of contracts and other documents related to advertising and marketing activity; legal analysis of advertising campaigns to ensure compliance with applicable regulations and potential conflicts with the rights of third parties; and drafting regulations for cultural competitions, sales promotions, and loyalty and incentive programmes.

Licensing/agreements

The firm’s attorneys have broad and diverse expertise in preparing and negotiating contracts pertaining to IP portfolios. The firm has deep knowledge of the recordal requirements for licensing and transfer of technology agreements before the BPTO, as well as providing clients with consultation on licensing, franchising and transfer of technology issues and agreements.

Litigation

Montaury enjoys an enviable reputation for resolving disputes before Brazilian IP courts. The firm’s experienced patent and trademark lawyers have a successful track record in handling disputes before federal and state courts.

The litigation team is composed of experienced, specialised and highly committed professionals who provide clients with tailored services in the defence of their IP rights, as well as in the areas of trademark infringement and invalidation, including unfair competition; digital law; advertising law disputes; patent infringement; and patent invalidation, including pharmaceutical patents.

The firm’s work is based on four principles: agility, ethics, commitment and results. Furthermore, the litigation group is well known for its high rate of success, its combativeness and approaching each case with fresh eyes – whether it is for a legal opinion or the resolution of a legal dispute. The firm has also a team dedicated to online brand protection and anti-piracy programmes.

Montaury and the community

In addition to its commitment to providing excellence in IP services, Montaury believes in the importance of a diverse and inclusive working environment where differences are not obstacles to professional development.

The female participation in the firm is substantial, representing 61% of the firm’s workforce.

The firm is constantly working to overcome diversity and inclusion barriers by recruiting, training and developing a diverse workforce that reflects the diversity of the different communities it works in.

Get unlimited access to all WTR content