You were vice president and then president of INTA’s Global Committee on Trademark Counterfeiting between 2016 and 2020. You are also currently president of the Chamber for the Fight against Piracy and Smuggling, and of the Uruguayan chapter of the World Jurist Association. What does stellar leadership look like to you, and how should those at the top help to build the next generation of brand professionals?
It is great to know that the work of so many years has paid off and led me into leadership positions. I believe that, as a leader, the most important thing is to teach. The new generations need to learn to think by themselves, to follow strategies, to work together. A leader does not order, does not tell others what they have to do; they tell them when things are wrong and what they have to improve. A leader provides tools for improvement.
How can rights holders use different IP rights to protect their brands in Uruguay?
Protection is available at an administrative level, by registering the trademark or by registering copyrights or patent rights. Likewise, the protection available at customs level for the registration of trademarks in customs regarding counterfeit products is important. The protection of rights allows owners to exercise trademark actions, seize counterfeit products in criminal proceedings, claim damages and claim cease of use among other actions, which benefit those with the exclusive right to use a trademark or IP right in Uruguay.
Which recent decisions or legislative developments have had the biggest impact on IP strategy in Uruguay?
In 2015, there was an amendment to the Trademark Law that permitted destruction of merchandise, once expertise has been applied and before the sentence of conviction.
In 2017, the New Code of Criminal Procedure was approved, establishing an accusatory process where actions for copyright infringement may be brought at the request of a party, as well as trademark actions.
In 2018, the first court decision ordering Internet Service Providers to block the site Roja Directa for infringing IP rights took place.
The following year, the prison sentence for administrators of pirate websites that illegally retransmit films and series was clarified. This was significant in terms of antipiracy in both Uruguay and Latin America.
In 2021, more than 5,000 TV sets allowing illegal access to TV signals, films and series were destroyed.
The Budget Law was introduced, establishing an administrative process before URSEC to block illegal audiovisual content, in infringement of IP rights.
In 2022, over 200,000 counterfeit products were withdrawn from the market and five containers retained in the port.
How do you envisage the brand protection landscape in Uruguay evolving over the next decade?
We are transitioning to the sustainable destruction of counterfeit products. We are looking for merchandise to be destroyed, but simultaneously transformed into something that can be given back to society.
There are some standards that our national and international legislation on environmental policies raise about how these products must be destroyed. Our law firm has taken them into consideration in creating new and diverse destruction processes. Part of our job involves the seizure of infringing products that threaten the rights of a registered trademark or copyright. One of the main goals Cervieri Monsuárez has set is to move forward in the recycling of counterfeit products, thus focusing on a sustainable economy. To achieve this goal, we work with different environmentally friendly companies. Together, we developed a programme of conscious disposal, consisting of the destruction of infringing merchandise in new and diverse ways that do not damage our environment. The merchandise is reintegrated in the market as a different sustainable product, hence complying with circular economy.
Which aspects of your work do you enjoy most and why?
I enjoy the fact that the topics that I deal with in my work are all current issues, and that there is never one case identical to another. A client is never the same as another, and there are always challenges. When my career began 25 years ago, everything was done with pencil, paper and typewriters. Today we are facing a technological revolution, and have even seen the emergence of the metaverse. As lawyers and IP rights defenders, we have to adapt, and I personally find the challenges and having to constantly change very exciting.
Virginia Cervieri is a specialist in trademark and anti-piracy law. She is a trademark agent and president of the Chamber for the Fight against Piracy and Smuggling, as well as the president of the Uruguayan chapter of the World Jurist Association. Ms Cervieri was president of INTA’s global Committee on Trademark Counterfeiting between 2016 and 2020. She is a member of the board of the Uruguayan Association of Intellectual Property Agents.