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.
Intellectual property in Uruguay
Cervieri Monsuárez
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
Amazon
Fox/Disney
TikTok
PagoNxt
Vesta Software Group
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.