News Archive (11)Jul 01, 2021 (Newsletter Issue 13/21)IP Office Aligned with CP5On June 22, 2021, the National Directorate of Industrial Property under the Ministry of Industry, Energy and Mining of Uruguay (DNPI) has published a practice paper under the Common Communication (CP5) — Relative grounds of refusal - Likelihood of confusion (impact of non-distinctive/weak components).
The Practice Paper provides a clear and comprehensive explanation of the principles on which the practice is based, which will be generally applied by the DNPI and the IP offices of the European Union Intellectual Property Network (EUIPN).
The CP5 Practice Paper has been made publicly available in Spanish and English. Source: www.euipo.europa.eu Jun 17, 2021 (Newsletter Issue 12/21)IP Office Aligned with CP6On June 2, 2021, the National Directorate of Industrial Property under the Ministry of Industry, Energy and Mining of Uruguay (DNPI) has published as the first Latin American IP office the criteria developed under the Common Communication on the Common Practice – Graphic Representation of Designs (CP6).
The Practice Paper provides a clear and comprehensive explanation of the principles on which the practice of the DNPI and the IP offices of the European Union Intellectual Property Network (EUIPN) is based, particularly on how to use appropriate disclaimers, types of views and how to represent designs on a neutral background.
The CP6 Practice Paper has been made publicly available in Spanish and English. Source: www.euipo.europa.eu Jun 25, 2020 (Newsletter Issue 10/20)Request of New Registration of Authorized Designations of OriginOn June 3, 2020, the Ministry of Foreign Affairs of Uruguay informed of the opening of a registration of prior users in the framework of the Association Agreement between MERCOSUR and the European Union, and in relation to the following Geographical Indications: Parmesano, Parmesão, Reggianito, Fontina, Gruyère, Gruyere, Gruyerito, Gruyer, Manchego Cheese, Grana, Gorgonzola, Ginebra, Genebra, Steinhäger, Grappamiel, Grapamiel.
The regulations apply to prior uses in Uruguay as well as in other Mercosur countries (Brazil, Paraguay and Argentina). Thus, the Ministry requires any individual or legal entity who is the user of any of the indicated designations to request their registration in the list of “prior users” by sending an affidavit in which confirm they comply with the requested requirements.
The provision states that hereinafter the continuation of the use of such Designations of Origin will only be allowed for those who are registered in the list of authorized prior users, which will be made by the applicable authority for this purpose. Thus, those who are not registered must hereinafter refrain from using the indicated designations.
The period for requesting the registration ends on June 30, 2020.
To access the official communication, please click hereSource: www.clarkemodet.com Jun 11, 2020 (Newsletter Issue 9/20)Practice Paper on Examination of Figurative Marks PublishedThe National Directorate of Industrial Property under the Ministry of Industry, Energy and Mining of Uruguay (DNPI) has published a Practice Paper concerning the examination of absolute grounds for refusal as regards figurative trademarks with purely descriptive words/expressions.
The DNPI is the first Latin American IP office to analyse and find common ground with the criteria developed under the Common Communication on the Common Practice of Distinctiveness – Figurative marks containing descriptive/non-distinctive words, referred to as marcas mixtas (mixed marks) in Uruguayan terminology.
The Practice Paper has been made publicly available in Spanish and English. Source: www.euipo.europa.eu Feb 20, 2020 (Newsletter Issue 2/20)Accession to Singapore Treaty by UruguayOn 29 January 2020, WIPO notifies the deposit by Uruguay of its instrument of ratification of the Singapore Treaty on the Law of Trademarks, adopted at Singapore on March 27, 2006.
The said instrument contained the following declaration:
"The Eastern Republic of Uruguay makes a reservation with regard to Article 19(2), Certain Rights of the Licensee, on the grounds that its content is in conflict with existing provisions on the subject in its national legislation".
In conformity with Article 28(3), the said Treaty will enter into force on 29 April 2020.Source: www.wipo.int Aug 22, 2018 (Newsletter Issue 14/18)Non-Use Cancellation Actions Possible SoonStarting January 1, 2019, cancellation actions may be filed against registered trademarks which are not being used in Uruguay.
Any individual or legal entity with a direct, personal and legitimate interest will be entitled to file a cancellation action against a registered trademark that has not been used for a period of at least 5 years from its date of registration or last renewal.
Almost 5 years have passed since Law No. 19.149, which, in section 187, amended current section 19 of Law No. 17.011 (Trademark Act) and prescribed mandatory use of registered trademarks in Uruguay, became effective.
The Law does not provide for partial cancellations of trademarks, thus the use of any of the goods or services covered in the registration prevents trademarks from being cancelled. Also, should the trademark owner provide sufficient evidence of force majeure reasons for non-use of the trademark, cancellations shall not proceed.
For further information, please check hereSource: www.fox.com.uy Nov 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
Dec 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
Jan 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
Feb 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
May 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.
ClassificationNice classification, 12th edition
What is Registrable as a TrademarkChapter I of the Trademark Law No. 17.011 of Sept 25, 1998, mentions the following:
“Art 1. By Trademark is meant any sign suitable to distinguish those goods and services belonging to a physical or legal person from those ones belonging to another physical or legal person.
Art.2. The registration of non-visible signs will remain conditional on the availability of suitable technical means. The Executive Power shall establish the opportunity and regulate the implementation process to the corresponding effects.
Art.3. Those advertising sentences complying with the conditions required herein may be used as trademarks.“
The following trademark types are registrable: Trademarks (word; combined, design, and three-dimensional, sound), collective marks and certification marks, slogans. Since December 2023 it is possible to register position marks; pattern marks, movement mark and multimedia marks.
Registration ProceedingsThe application is filed with the Trademark Office (DNPI) Direccion Nacional de la Propiedad Industrial.
Multiple-class applications are possible.
Foreign applicants need a local address. Local agents are not mandatory but highly recommended.
A simple signed copy (non-notarized nor non-legalised) power of attorney is sufficient.
Foreign applicants do not need a domestic registration.
The trademark application is published in the Official Gazette (approx. 2 months after the application date). As from the publication date, there is a term of 30 days for third parties to file oppositions. Later the examiners will proceed with 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. Those signs that fell in the Absolute grounds could be part of a combined mark but without private rights over the generic, or general use expressions,
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. 6 months. The timeframe from the reply to oppositions to a decision is approximately 10 additional months.
Prior to registration, the trademark application is published in the Official Gazette (approx. 2 months after the application date).
Opposition PeriodNational:
The opposition period is within 30 days as of the publication of the application at the Official Gazette.
Trademark DurationA trademark registration is valid for 10 years from the date of registration. The registration is renewable for periods of 10 years.
Grace Period for Trademark RenewalPractical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official fee for filing a trademark (word) is $ 6.719 (U$D 179) in one class and and $ 4.031 (U$D 107) for each additional class.
The official fee for filing a combined or design trademark in one class is $ 9.406 (USD 250) and each additional class $ 5.375 (USD 143) official fees are adjusted according to an official index reflecting the local level of prices every month.
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Apr 15, 2024
Fernandez Secco & Asociados, Montevideo, Uruguay
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