Next Generation Partners

Intellectual property in Uruguay

Cervieri Monsuárez

Cervieri Monsuárez‘s IP team stands out for its counterfeit investigations practice, and the team leads the market in terms of the seizure and sustainable destruction of counterfeit goods. It also has an experienced brand protection department, working in tandem with the firm's offices in Paraguay and Bolivia to represent global brands across Latin America. The group excels in the registration and protection of the full range of IP rights, from trade marks, copyrights and patents to industrial designs and domain names. Also of note is its expertise in specialist areas, such as geographical indications, health registrations and plant varieties. The practice is experienced in online monitoring, as well as data protection matters. Virginia Cervieri leads the sizeable IP team, while Pablo Monsuárez specialises in IP litigation. Anabel Frachia also plays a key role in the team as regional anti-counterfeiting director, and Natalia Paladino is the firm’s IP director. At the senior associate level, Viviana Cervieri is a key contact, as is Lucía Cantera, who focuses her practice on anti-counterfeiting and IP litigation. Associate Daiana Pereira heads the anti-counterfeiting practice, and Andrea Casale, associate, is active in IP prosecution and enforcement.

Responsables de la pratique:

Virginia Cervieri


Les références

‘CM is a very good firm, and all individuals are at the top of their profession.’

‘Virginia Cervieri is an extremely good lawyer, with great negotiation and litigation skills.’

‘The Cervieri Monsuarez team works in a very coordinated way to protect the same patent family simultaneously in Uruguay, Bolivia and Paraguay.’

Principaux clients

Colgate


Ruben Diaz


Crocs


Daiso


Natriche


Converse


Off-White


Levi’s


New Era


Nike


Superdry


Tommy Hilfiger


Vans


Warner Bros


Adidas


Puma


Apple


Gilette


The Polo/Lauren Company


Principaux dossiers


  • Coordinated the sustainable destruction of products that infringed on Colgate copyrights.
  • Defended Crocs against annulment actions, achieving the full protection and the Crocs three-dimensional trade marks in Uruguay.
  • Carried out an investigation on an Instagram account that commercialised suspicious ‘POLO’ footwear, leading to the presentation of a criminal complaint and requesting the seizure of infringing products.

Ferrere

Ferrere’s specialised practice encompasses the full range of IP services, including patents, copyright and trade marks. The team’s full-service offering ranges from filing to litigation, and the firm is regularly called upon to handle high-profile IP disputes. It has a dedicated privacy practice, advising on data protection and cybersecurity matters. It specialises in a wide range of sectors, from the pharmaceuticals and food and beverage to the media and entertainment industries, and the team is particularly prominent in the advertising and media planning market in Uruguay. IP expert Agustín Mayer leads the team, advising on the gamut of IP matters, with a particular focus on patents; he is experienced in pharmaceutical product patents and pharmaceutical regulation. Martín Pesce has an established data privacy and new technologies practice and is regularly sought out by technology companies to advise on privacy matters. Experienced litigator Alejandro Alterwain plays a key role in IP disputes, especially in matters with competition components, and co-heads the filing department alongside associate María Eugenia Contreras. Senior associate Stella Weng retired from the firm in December 2023.

Responsables de la pratique:

Agustín Mayer


Les références

‘The Ferrere firm closely monitors our needs and maintains an up-to-date update on all the latest developments in IP and corporate law.’

‘Ferrere is certainly the best IP firm in Uruguay. Composed of a very solid, agile and highly experienced team.’

‘María Eugenia Contreras and Alejandro Alterwain are just some of the exceptional lawyers who are part of this firm. They have a lot of experience and solidity in the matters they are consulted on.’

Principaux clients

Bayer


META Platform


Chery Automobile


CMPC- Softys


Continental


Directv


H&M


Haribo


NBA


Starwoods


STIHL


Abercrombie & Fitch


Issey Miyake


NIO (ANHUI) Holding


Oddity Tech


Equifax


Vertex


FNC (Anheuser-Busch InBev)


Uber


Vivara Participações


Vrio


Grupo Lequio


Inmobiliaria e Inversiones Colina Boreal


Principaux dossiers


  • Assising Haribo in the registration and defense of its sound trade mark.
  • Advising Cimarrón on the production of several series for Amazon and other platforms.
  • Assisting PETRIND (whose trade name is Escuela de Enfermería) in a suit brought against it by CRUZ ROJA DEL URUGUAY (Uruguayan Red Cross).

Fischer Abogados

At the forefront of innovation in the market, Fischer Abogados advises on IP protection and enforcement in the metaverse, and copyright, data protection and trade mark portfolio management in relation to Web 3.0. Its expertise in both IP and technology also sees the team active in projects in the engineering, biotechnology and chemical sectors. The group has experience before IP offices, customs and courts at various levels, representing clients from the technology, media and entertainment industries. The practice manages IP portfolios for a stellar client base across the full range of sectors, as well as building and protecting governmental IP assets. It has experience in launches in the IP space, such as new trade mark and patent freedom-to-operate project launches. An established figure in the sector, with a wealth of IP experience, Gustavo Fischer co-leads the team. In addition to her knowledge of music and film producers’ rights, practice co-head Mercedes Castells is an expert in copyright matters and litigates in unfair competition, trade mark, trade name and industrial design infringement cases. Associate Federico Fischer Castells excels in both local and cross-border transactions, advising an impressive roster of clients on the takeover of IP assets and conducting due diligence of IP rights.

Responsables de la pratique:

Gustavo Fischer; Mercedes Castells; Federico Fischer Castells


Les références

‘Federico Fisher is extremely knowledgeable and professional when addressing intellectual property issues.’

‘Great knowledge, depth of topics.’

‘Personalised attention.’

Principaux clients

UPM Kymmene Corporation


The Coca-Cola Company


Accor


Subway IP


Scotiabank (The Bank Of Nova Scotia)


Caterpillar


Novartis


NBC Universal Media


Mattel


Honda Motor


Bergstein Abogados

Bergstein Abogados has a strong track record in IP disputes, with specialised knowledge of areas such as parallel imports, competition law aspects of IP protection, counterfeit goods and corporate name protection. With an established trade mark and patent registration practice, the group also excels in IP strategy development. The team assists a roster of national and international players, as well as cultural, social and religious institutions, in trade mark, patent and copyright matters. Senior associate Silvina Vila leads the team and is experienced in IP portfolio management, from the registration and protection of trade marks and patents to IP litigation to data privacy matters. Leonardo Melos, as head of the firm’s litigation team, also plays an active role in IP matters.

Responsables de la pratique:

Silvina Vila


Les références

‘They are lawyers with theoretical knowledge but at the same time great practical experience.’

‘They are very effective for trade mark registration processes since they simplify the information request or the steps to follow for the client.’

‘I work directly with Silvina Vila and she simplifies the process for both me and my clients. She is very professional and proactive, as well as friendly.’

ClarkeModet

Drawing on its global network, ClarkeModet manages foreign trade marks and international patent applications. The team demonstrates prowess in patent applications, as well as prosecution and litigation. With a clientele spanning the full range of industries, the group is experienced in trade secrets and blockchain matters, and the implications of new technology on IP matters. Bringing extensive experience in IP portfolio management to the team, Fabiana Penades also advises on the acquisition of IP rights, guiding clients through due diligence processes. IP prosecution specialist Milena Badalamenti plays a key role in the prosecution of trade mark applications. Joining the team in September 2023, associate Ana Laura Peralta specialises in IP and new technologies, advising clients on the protection of IP assets.

Responsables de la pratique:

Fabiana Penadés


Dentons Jiménez de Aréchaga

From registration and acquisition to protection and litigation, Dentons Jiménez de Aréchaga advises an impressive list of international players on the protection of IP rights. The team’s IP litigation practice is noted for its cross-border capabilities and also encompasses unfair competition matters and alternative dispute resolution. It excels in the technology space, handling crypto assets, technology procurement, development and licensing, and digital media and software protection. Privacy and cybersecurity are other areas of expertise, including the use of electronic signatures. Héctor B. Viana heads the firm’s TMT team, focusing his practice on the IP aspects of technology matters, as well as copyright and data protection advice. Senior associate Mariana Lartigau is experienced in trade mark applications and due diligence of IP assets. Lucía Aguerre, associate, specialises in trade secrets and unfair competition matters.

Responsables de la pratique:

Hector B. Viana


Les références

‘The experience with Dentons was excellent in a transaction where the assets were intellectual property. They are very experienced and creative when it comes to finding solutions to problems that arise. We have had a relationship with them for years, and they have always been up to the task.’

‘They always take the initiative and present problems with solutions. They are very proactive.’

Principaux clients

Google


Amazon


Fox/Disney


TikTok


PagoNxt


Vesta Software Group


Facebook


Volkswagen


DLF Seeds


European Union


Principaux dossiers


  • Advising TikTok on a copyright matter related to the launching of a new product named Smart Script.
  • Assisting DLF Seeds in the event of a possible claim for breach of a plant variety licence contract, advising on plant variety registration and licensing issues before INASE, reaching a settlement agreement with the counterparty.
  • Advising a client on the IP aspects of an acquisition.

Fernández Secco & Asociados

With a strong trade mark and patent practice, Fernández Secco & Asociados advises clients on prosecution, litigation and anti-counterfeiting. In addition to trade mark and patent filing, the team also advises on industrial designs, plant varieties and domain names. Alongside Isabel Fernández Requena, Agustina Fernández Giambruno heads the litigation and notarial team, overseeing the prosecution department; her practice focuses on IP portfolio management, and she brings particular expertise in the retail, pharmaceutical and innovative technologies sectors to the team. At the associate level, Elisa Martínez Maruri is an experienced IP litigator and advises on copyright and image rights. Camila López is another associate to note.

Responsables de la pratique:

Agustina Fernández Giambruno; Gonzalo Fernández Secco; Isabel Fernández Requena


Les références

‘They are an excellent firm, which provides valuable assistance and guidance.’

‘Gonzalo Fernandez Secco and Isabel Fernandez are great professionals who provide excellent services and prompt communication.’

Principaux clients

AUTOMOBILI LAMBORGHINI INI


LEADER MUSIC


XIAOMI


Natura


Asos


The Body Shop


Georgio Armani


Mango


PedidosYa


Hershey Chocolate & Confectionery


Uber Technologies


Alpargatas (Havaianas)


Peugeot Citroen Automobiles


Urufarma


Laboratorio Gador


Laboratorio Libra


Ceva Sante Animale


Lojas Renner


Principaux dossiers


  • Represented the Uruguayan Futsal Federation in a successful lawsuit against the South American Football Confederation (CONMEBOL) for the unauthorised use of the “FUTSAL” trade mark.
  • Represented Speed Publicidad in a successful case in which the High Administrative Court granted the firm’s petition and annulled the resolution of the Industrial Property National Office, which had rejected the “POMELADA TERMA” trade mark.
  • Represented Lojas Renner in a case in which the High Administrative Court granted the petition and annulled the resolution which denied the registration of the trade mark RENNER in class 36 due to a pre-registered trade mark in the same class.

Guyer & Regules

In tandem with the firm’s corporate, data privacy and technology teams, Guyer & Regules‘ IP practice is involved in the transfer of trade mark portfolios, due diligence of IP assets, and e-commerce, software, media and digital content matters. With a background in the protection of intellectual and industrial property rights, the team advises on acquisition, enforcement and commercial exploitation. Its expertise extends beyond trade mark registration and renewal to encompass patents of inventions and utility models, industrial models and designs, and industrial and trade secrets. Specialising in copyright and right of publicity law, Javier Berdaguer advises clients from the media, entertainment and sport industries and provides representation in the defence of trade marks and in unfair competition claims.

Responsables de la pratique:

Javier Berdaguer


Les références

‘Excellent advice and support. Agile response and solution to situations. Strategic partner.’

‘Extremely organised.’

‘Disposition and immediate response. Monitoring of topics.’

Principaux clients

Moove It, December Labs and Recognize


Diego Fischer


Atlantis (Intradevco Industrial Subsidiary)


Coca Cola / Femsa


Ikusi


Uruguayan Association Of Footballers (Mutual Uruguaya De Futbolistas)


M Dias Branco


In Capital


Zitarrosa


Axo Group


L’Oreal


Pan American Energy / Axion / BKO – BLK


Salus – Danone


Warburg Pincus


ENJOY (Baluma)


Principaux dossiers


  • Assisted private investment funds managed by Recognize in the acquisition of two Uruguayan developing Companies: December Labs and Moove-It.