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Uruguay (UY)

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11-11-2014 (Newsletter Issue 17/14)
Use of Trademarks Mandatory Now
On 7 October 2014 Decree No. 277/2014 has been published. The same regulates Law No. 19.149 effective since 1 January 2014, concerning to the mandatory use of trademarks in Uruguay.

According to sections 187 to 189 of the previously mentioned law the use of trademarks is mandatory in Uruguay and cancellation actions may be filed as of 1 January 2019.

As consequence, trademarks in Uruguay can be cancelled for non-use before the National Office of Industrial Property in the following cases:

A) When a trademark had not been used by the owner or other authorized person within five years following the granting date or the renewal date or
B) When the use was interrupted for more than five years

The law does not provide for partial cancellation. It meets the requirement to use when any of the products or services included in the trademark are commercially available in Uruguay, in the amount and manner normally appropriate, considering the size of the market, the nature of the products or services in question and its forms of marketing.

In addition, the use of a trademark in relation to goods to be exported from Uruguayan territory, or services rendered abroad, from Uruguay will also suffice the requirements of use.

Finally, the use of the mark as a trade name registration preserves the trademark as long as the same is used on products, their packaging or in a way directly related to those protected by the trademark registration services.

Use of the mark must be public and effective and the proof thereof corresponds to the titleholder.

Source: Fernandez Secco & Asociados, Uruguay


12-17-2013 (Newsletter Issue 18/13)
Use of Trademarks No Longer Optional
On October 24, 2013, the Uruguayan Congress passed Law No 19,149, known as Ley de Rendición de Cuentas (Accountability Law), which, among other provisions not related to trademarks, establishes that trademarks are now subject to non-use cancellation actions. This provision will be effective January 1, 2014.

Until now, use of trademarks was optional pursuant to Article 19 of the Trademark Law, and, therefore, trademarks were not subject to cancellation based on non-use. Under Article 187 of the Accountability Law, which substitutes Article 19, a trademark registration may be cancelled when the mark has not been used by the trademark owner, a licensee or an authorized person within five consecutive years following its registration date or following the renewal date, or when use has been interrupted for more than five consecutive years, except in cases of force majeure or when the trademark was used to identify products or services covered by other classes, even though they are not related.

To request the cancellation of a trademark based on non-use, the claimant must prove a direct, personal and legitimate interest. The burden of proof of use is on the trademark owner, who may rely on any type of evidence to prove that the trademark has been publicly and actually used. The action will be decided by the Dirección Nacional de la Propiedad Industrial (the National Directorate of Industrial Property).

In addition, the new law provides that it will not be necessary to submit evidence of use when applying for the renewal of a trademark.

The changes introduced by the Accountability Law will have an impact on the commercial strategy of trademark owners, who must use their trademarks to avoid having them cancelled based on non-use.

Source: INTA Bulletin, Vol. 68 No. 23, December 15, 2013 from Cikato Abogados, Montevideo, Uruguay


01-18-2013 (Newsletter Issue 1/13)
Accession to the Hague Apostille
The Hague Convention Abolishing the Requirement for Legalization for Foreign Public Documents, known as the Apostille Convention, has entered into force on October 14, 2012 in Uruguay.

Uruguay deposited its instrument of accession to the Hague Convention in February, and thus became the 103rd Contracting State.
With this addition, currently the Latin-American countries members of the Apostille Treaty are: Argentina, Belize, Costa Rica, Colombia, Dominican Republic, Ecuador, El Salvador, Honduras, Mexico, Panama, Peru, Trinidad and Tobago, Uruguay and Venezuela.

The Apostille Convention is a method that simplifies the legalization of foreign documents in order to verify its authenticity, reducing time and costs.
Section 1 of the Apostille Treaty establishes that the Convention applies to the following public documents: court documents, administrative documents, documents issued by a notary and official certifications in documents signed by private persons.

Source: Moeller IP Advisors, Argentina


02-04-2011 (Newsletter Issue 2/11)
Official Fees for Trademark Renewals Changed
The Uruguayan PTO has modified the official fees for trademark renewals effective from January 1st, 2011.
Among the main changes it is important to highlight that in the case of the renewal of trademarks during the grace period the Official Fees of a new application apply. Before this amendment, the renewal during grace period had the same Official Fees than any renewal.
Please note that official fees are adjusted monthly according to the local level of prices, therefore, there might be some additional variations.


Source: www.moellerip.com and Fernandez Secco & Asociados

05-03-2010 (Newsletter Issue 10/10)
E-Filing System Available
The Uruguayan Trademark and Patent Office has established an e-filing system for trademark applications available only to Uruguayan trademark and patent attorneys.


Source: www.fernandezecco.com

The regulation on Trademarks established is Uruguay’s Trademark Law Nº 17.011 of September 25th, 1998.
Accession to the Hague Apostille Convention since October 2012.
Trademark protection is obtained by registration, under the "first-to-file"-System.
Nice classification, 10th edition
Any distinctive signs, such as words, names, acronyms, letters, numbers, devices, slogans, named advertising phrases, combination of colours, three-dimensional forms, the three-dimensional form of a good or its packaging, sound marks (musical notations), position marks and any combination of the mentioned signs can be registered as a trademark.
The following trademark types are registrable: trade marks, service marks, collective marks and certification marks.
The application is filed with the Trademark Office.
Multiple-class applications are possible.
Foreign applicants need a local agent.
A simple signed copy (non-notarized nor non-legalised) power of attorney is sufficient.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior marks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
The time frame from first filing to registration (if no oppositions have taken place) or to the notification of oppositions (either third party opposition or office action) is nowadays approx. 14-18 months. The timeframe from the reply to oppositions to a decision is approximately 8 additional months.
Prior to registration, the trademark application is published in the Official Gazette (approx. 2 months after the application date).
National:
The opposition period is 30 days as of the publication of the application at the Official Gazette.
A trademark registration is valid for 10 years from the date of registration. The registration is renewable for periods of 10 years.
There is a 6 month grace period after the expiration date of a trademark in which the titleholder may renew the trademark preserving its priority.

Further practical details are available in our publication on this topic here
From January 1, 2014 a trademark registration may be cancelled when the mark has not been used by the trademark owner, a licensee or an authorized person within five consecutive years following its registration date or following the renewal date, or when use has been interrupted for more than five consecutive years, except in cases of force majeure or when the trademark was used to identify products or services covered by other classes, even though they are not related. Pursuant to Decree 277/2014 cancellation actions can be filed as of January 1, 2019.

Further practical details are available in our publication on this topic here
The official fee for filing a trademark (word) is UYU 5,621 in one class and UYU 2,085 for each additional class.
The official fee for filing a design trademark in one class is UYU 9,589. The official fees are adjusted according to an official index reflecting the local level of prices every month.

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Practical details on licensing procedures, requirements and effectiveness are available in our publication on this topic here.
Search type First class Add. class
Word Mark Search (availability) 260,00 € 230,00 € 
Word Mark Search (identical) 230,00 € 190,00 € 

The Prices above are SMD Group Search Fees
Country Index is a free service of SMD Group. We thank the following law firms for their assistance in updating the information provided.

Country Survey
09-07-2016
Fernandez Secco & Asociados, Montevideo, Uruguay

07-27-2015
Fernandez Secco & Asociados, Montevideo, Uruguay

09-10-2014
Clarke, Modet & Co Uruguay, Montevideo, Uruguay

06-26-2013
Cikato Lawyers, Montevideo, Uruguay

01-05-2012
Clarke, Modet & Co Uruguay, Montevideo, Uruguay

12-15-2010
Fernandez Secco & Asociados, Montevideo, Uruguay



Ministry of Industry, Energy and Mining. National Direction of Industrial Property (DNPI)
Rincón 723
Piso 3º CP
11100 Montevideo
Tel +598 29 02 57 71
Fax +598 29 03 02 91
Mail infomiem@miem.gub.uy
www.miem.gub.uy