What has been your most memorable case to date, and why?
The most important case and one of the first to involve counterfeiting in Uruguay was one related to Nintendo merchandise (ie, square cassette video games that were inserted into consoles) found in a warehouse in Zona Franca. The company hired me to study possible actions to take, since it was the first case involving the entry of counterfeit products; at the time, the term ‘pirate’ was not used in this context. It was one of the first seizures of counterfeit products in Uruguay.
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?
We work with several different industries. I am president of the Chamber for the Fight against Piracy and Smuggling of Uruguay (CALPYC). At CALPYC, we work together and join efforts with Customs, police, prosecutors, judges, chambers, local commerce and other authorities to fight against piracy and smuggling. The idea is to join efforts to address these issues. Our aim is to promote the discussion of measures to combat trademark and patent infringement, unfair competition and smuggling with Latin American authorities.
What are the main challenges your clients have faced in the last 12 months, and how have you helped them to overcome these?
One of the greatest challenges my clients have faced in the last year is related to the destination of merchandise that is seized due to trademark infringement. The law stipulates that counterfeit goods must be seized and consequently destroyed. Counterfeit merchandise is often discovered in large quantities.
Cervieri Monsuárez has been able to address this challenge by creating the Score Green project. This is a campaign focused on the sustainable destruction of counterfeit products, with the ultimate goal of creating and donating basketball backboards to Uruguayan schools and public spaces. To date, more than 2,000 children have benefitted. We are also working on a second campaign called ’Entre Manos’, which will involve recycling counterfeit and seized textile products.
What are the most frequent mistakes that foreign rights holders make at the local level in Uruguay – and how can they avoid them?
One of the most frequent mistakes is with regard to the registration of trademarks. Often, companies start selling their products without making corresponding registrations, as the Uruguayan market is not among the most attractive. The problem is that since parallel importation is allowed, there are many companies that bring in products and do not register their trademarks, or the trademark is registered by a third party. The company then not only has to go to Uruguay to oppose or request the cancellation of the trademark, but also cannot sell its products because the trademark is in the name of a third party. Therefore, it is essential not to underestimate any country and always protect one’s trademark portfolio.
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 of the most important recent decisions was the amendment of the Trademark Law concerning the destruction of counterfeit merchandise. Uruguayan law does not provide for the obligation to perform an expert determination of whether a product is counterfeit, previously the prosecution was obliged to do so. This often extended trials for years, with counterfeit merchandise left under the prosecution’s custody, stored by Customs or deposited at police headquarters where it could not be destroyed.
This change in the law allows the destruction process to begin once the result of the expert’s report is available. This action contributes to a more sustainable destruction and avoids several risks for the trademark holder.
Virginia Cervieri is a trademark and antipiracy law specialist, serving as senior partner at Cervieri Monsuárez, president of the Chamber of Antipiracy and Smuggling of Uruguay and for INTA, where she chaired the Anticounterfeiting Committee from 2016 to 2020. Ms Cervieri has a doctorate in law and social sciences, a postgraduate degree in commercial law and an IP master’s degree from the University of the Republic, Uruguay, where she teaches commercial law.