What has been your most memorable case to date, and why?
A foreign client got in contact with us because they had a conflict with a competitor in their country of origin and wanted to develop a worldwide defence strategy. From Uruguay, we designed the entire strategy and coordinated actions around the globe. We won in many of the countries, which led to a rapprochement with the other party and a worldwide coexistence agreement.
The interesting thing about this case is that since we coordinated all the actions, we knew what the competitor’s reaction was in all of the countries and could therefore foresee developments. This strengthened our defence, the competitor came closer to us and we closed a successful agreement for both parties.
Real-world counterfeiting is on the rise again as the effects of the pandemic ease. How is your firm collaborating cross-industry to combat this growing threat?
Our firm provides training and demonstrations to all authorities involved in actions against piracy. These sessions inform and update users on IP issues and help authorities and trademark owners to develop an approach that allows them to better combat trademark infringements. These are enriching experiences, as they make it easier for attorneys and trademark owners to act quickly and efficiently.
What are the main challenges your clients have faced in the last 12 months, and how have you helped them to overcome these?
Infringers are developing more and more strategies involving copying or infringement, and we help trademark owners to better protect themselves. In order to do this, we try to create a shield of IP rights, so that they are highly protected at the time of taking action. Sometimes, protection actions are taken depending on the different types of trademark (ie, traditional and non-traditional marks) and also from the point of view of industrial designs. We have achieved double – and even triple – protections by using trademarks, copyrights and industrial designs together. Therefore, the rights holder is well protected and can take action against an infringer who tries to circumvent any of these protections.
What are the most frequent mistakes that foreign rights holders make at the local level in Uruguay – and how can they avoid them?
Although Uruguay has a small market, it is a transit country; protection is of the utmost importance to taking corresponding actions and preventing infringing goods from entering circulation. Uruguay does not usually attract foreign attention, so they do not often protect their rights. This encourages third parties to register the trademark or commit infringement by using it without the rights holder’s authorisation. It is advisable to register trademarks in Uruguay as it is not an expensive country. This makes taking action easier once infringement is detected.
Which recent decisions or legislative developments have had the biggest impact on the trademark and brand landscape in Uruguay in the past few years?
One relevant legislative amendments was the mandatory use of trademarks. Previously, Uruguay did not require the use of a trademark to maintain registration, but this legislative amendment has made it necessary to take measures to seek protection in the event that the trademarks are not in use. If they are, it is key to gather all necessary evidence to ready a defence for eventual lack-of-use cancellation by a third party.
Dr Natalia Paladino holds a doctorate in law and social sciences from the University of the Republic, Uruguay, and a postgraduate degree in intellectual property. She is an industrial property agent and member of INTA, among many other organisations. Dr Paladino is an alternate national delegate for Uruguay for the 2021 to 2023 period of the Inter- American Association of Intellectual Property, its pro bono programme and diversity and sustainability committee.