The FERRERE Intellectual Property team obtained a landmark judgment at the Administrative Claims Court (TCA), annulling the resolution by the National Industrial Property Office and Software Registry (DNPIRS) that had rejected registration of the “TEQUILA” trademark for nightclubs and discos. Decision No. 476/2026 is a leading case, as the first time a Uruguayan court has recognized that a trademark may coexist with a designation of origin (D.O.) registered in Uruguay, in the event of clearly differentiated products and services.
The Argentine businessman Osvaldo Horacio Brucco —founder of the legendary Tequila disco in Buenos Aires, a leading figure in Argentine and Uruguayan entertainment for decades, and of the renowned establishments in La Barra, Maldonado— applied for registration of the mixed trademark “TEQUILA” for entertainment services. The application was rejected in November 2023, following opposition by the Mexican Tequila Regulatory Council, which invoked protection of “Tequila” as a designation of origin under Uruguayan law and the 2003 Free Trade Agreement with Mexico.
Legal challenge
The case posed a particular complexity: “Tequila” had a registration in place as a designation of origin in the alcoholic beverages category in Uruguay, which raised a major legal challenge. Previous decisions addressing this issue involved designations of origin that, although recognized internationally, were not registered in Uruguay.
FERRERE pursued an evidentiary strategy that accredited that the entrepreneur’s “TEQUILA” had an earlier trademark registration, and had thus coexisted peacefully with the designation of origin for alcoholic beverages, proving that there was no violation of third-party rights. Moreover, it was shown that Tequila is an emblematic referent in Argentine and Uruguayan entertainment, with overwhelming public recognition that transcends borders, both in Buenos Aires and along Uruguay’s coast.
Additionally, through exhaustive international research, it was shown that in diverse jurisdictions “Tequila” trademarks are registered for products and services other than alcoholic beverages, even with the presence of the designation of origin. This finding was key for arguing that the principle of specialty operates with full force even against protected designations of origin. In turn, neither the Mexican Regulatory Council nor the State were able to show real confusion among consumers between the entertainment services and the alcoholic beverage. It is important to note that while the TCA had decided a case with certain similarities regarding the “Ginebra” (i.e., gin) trademark (Decision No. 490/2020), that case posed lesser difficulties in that the term was not a registered designation of origin. This decision goes beyond that precedent by resolving the matter in the case of a designation of origin with registration in place.
Precedent
With these elements, the TCA resolved that the “Tequila” designation of origin exclusively protects the alcoholic beverage and that its extension to other classes has no regulatory basis. For the first time in Uruguay, a court has affirmed that the specialty principle prevails even when there is a registered designation of origin, provided no real confusion or infringement of third-party rights has been shown. No previous decision had reached this conclusion regarding a designation of origin with current registration in the country.
The case was led by Eugenia Contreras, senior attorney, and Alejandro Alterwain, counsel to the FERRERE Intellectual Property team, along with Agustín Mayer, partner in the firm.
“The evidentiary work was key in this case. We managed to construct a solid line of argument based on the pacific coexistence of the trademark in Uruguay and on an international survey that showed that the specialty principle is recognized in multiple jurisdictions, even in cases of protected designations of origin,” noted Eugenia Contreras.
“It was a case without direct precedents in Uruguayan jurisprudence. The key was to articulate local trademark law with international practice and to show that there was no real confusion for consumers, a point that ultimately was not challenged during the proceedings,” added Alejandro Alterwain.
In turn, Agustín Mayer, FERRERE managing partner and leader of the Intellectual Property practice, underscored that, “This outcome reflects what we seek as a firm: that our clients feel they are supported with depth and creativity, especially when the road in uncharted. The fact that the trust placed in our team translates into a precedent of this magnitude fills us with pride.”