Introduction:

Language: Spanish

Capital: Montevideo

Area: 176,215 km2

Population: 3,427,000 (2016)

Currency: Uruguayan peso (UYU)

Religions: Catholicism (57%),

Geographical situation: in the southeastern region of South America. It borders Argentina to its west and Brazil to its north and east, with the Río de la Plata (River of Silver) to the south and the Atlantic Ocean to the southeast.

 

International treaty membership:

WIPO Copyright Treaty (June 5, 2009)

Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (January 19, 2000)

Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks (January 19, 2000)

Convention Establishing the World Intellectual Property Organization (December 21, 1979)

Paris Convention for the Protection of Industrial Property (March 18, 1967)

 

 

Legislation:        

Law No. 17.011 of September 25, 1998, establishing Provisions on Trademarks

 

Government Institutions:

National Directorate of Industrial Property Ministry of Industry, Energy and Mining

 

Type of trademark:

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.

 

Ground for refusal :

Absolute ground for refusal:

For the purposes of this Law, the following shall not be deemed trademarks and shall therefore be subject to absolute nullity:

(1) the name of the State and of the Provincial Governments, the national or provincial symbols, the coats of arms or distinctive elements identifying them,

(2) signs that reproduce or imitate coins, banknotes or any official national or foreign means of payment, as also official signs and hallmarks indicating control and warranty adopted by the State;

(3) the emblems belonging to the Red Cross and the International Olympic Committee;

(4) appellations of origin, indications of source and any geographical name that is not sufficiently original and distinctive with regard to the goods or services to which they apply or whose use is liable to create confusion regarding the origin, source, qualities or characteristics of the goods or services for which the mark is used;

(5) the shape given to goods or packaging if it meets the requirements to constitute a patent or a utility model in accordance with the law;

(6) the names of plant varieties that are registered with the Registry of Cultivar Ownership established by Law No. 16.811 of February 21, 1997, with respect to such varieties in the corresponding class;

(7) letters or numbers considered individually without particular shape;

(8) the color of goods, packaging and labels where they are of a single color. However, combinations of colors of packaging and labels may be used as marks;

(9) technical, commercial or common names used to express qualities or attributes of goods or services;

(10) names generally used to indicate the nature of goods and services or the class, kind or type to which they belong;

(11) words or expressions which have become customary in the current language and signs or designs not being fancy, i.e. that do not comprise novel, special or distinctive features; YH Collection of Laws for Electronic Access URUGUAY UY001EN Marks, Law, 25/09/1998, No. 17.011 page 3/16

(12) words or combinations of words in foreign languages whose translation into Spanish falls under the prohibitions set out in the above items (9), (10) and (11);

(13) drawings or expressions contrary to public policy, morality or accepted practice; (14) caricatures, portraits, drawings and expressions liable to ridicule ideas, persons or objects worthy of respect and consideration.

 

Relative ground:

 

(1) flags, coats of arms, letters, words and other distinctive signs that identify foreign States or international and intergovernmental entities, unless their commercial use is authorized by a certificate duly issued by the corresponding office of the State or body concerned;

(2) literary and artistic works, reproductions thereof and fictional or symbolic characters that warrant copyright protection, unless registration is requested by the owner thereof or by a third party with his consent;

(3) names or portraits of living persons, unless their consent has been obtained, and those of deceased persons, unless consent is obtained from those persons judicially declared as their heirs, whereby, for the purposes of this provision, names shall be understood as the forename followed by the surname, the surname alone, pseudonyms or titles where they identify persons as such;

(4) the surname alone where persons bearing that surname have entered an opposition deemed to be justified by the administrative authority;

(5) certification or warranty marks included in the prohibition under Article 54 of this Law;

(6) signs or words constituting the full or partial reproduction, imitation or translation of a well-known mark or of a trade name;

(7) words, signs or distinctive elements that suggest the intention of unfair competition.

 

Application content:

An application for registration of a trademark shall be submitted to the National Directorate of Industrial Property and shall be accompanied by the documents required for that purpose and the publication fee shall be paid at the same time. The required documents consists in example of the sign, the class you want to apply for and information about the applicant.

Once the application for registration has been submitted, no modification of the trademark sign shall be admitted. Any request for modification of such kind shall require a new request for registration.

 

Application process:

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).

The owners of registered trademarks or of pending registrations may oppose applications for registration of trademarks that are identical or similar to their own or request cancellation of trademarks already entered in the Register.

Opposition to registration shall be filed within 30 days of the day following publication in the Industrial Property Bulletin

 

Refusal:

The application for registration can be refused on absolute or relative grounds, or on the base of an similar earlier trademark.

Opposition is another ground for the rejection of the mark.

 

Rights of exploitation and related delay:

The exclusive ownership of a trademark is granted only with respect to the goods and services included in the application. In the case of a trademark that includes the name of a product or service, the trademark shall be registered exclusively for the product or service included in the trademark.

The protection afforded by registration of a trademark shall subsist for 10 years and shall be renewable for further 10-year periods without limit at the request of the owner or of his representative. Renewal shall be applied for within the six months preceding expiry of the term of protection. However, a period of grace of six months shall be afforded as from the day following the expiry date which shall be published in the Industrial Property Bulletin.

The use of a trademark shall be optional. The use of a trademark may be compulsory for reasons of public interest stipulated by decree of the Executive Power.

 

Transfer and conditions:

Ownership of a trademark may be inherited and may be transferred inter vivos, by testamentary provision, by writ of execution or by action of replevin. Transfer in whole or in part of the property right in a trademark may be effected by public or private instrument. To be opposable to third part, it must be notified to the National Directorate of Industrial Property and be published in the Industrial Property Bulletin

In the event of transfer, the transferor shall be required to state whether he owns other trademarks identical or similar to the trademark he is transferring. If the transferor fails to declare or conceals such trademarks he shall forego the protection afforded to those trademarks by registration by an order issued ex officio or at the request of an interested party.

 

Certification:

Once the registration has been granted, the National Directorate of Industrial Property shall issue the corresponding title.

 

Withdrawal and cancellation:

A trademark registration shall expire

(1) on expiry of the term of protection, except for renewal;

(2) at the wish of the owner communicated in writing to the National Directorate of Industrial Property. Where a registered licensing contract exists, the owner of the licensed trademark shall be required to certify that he has duly notified the licensee of his wish to renounce the registration as a condition of entry of the renunciation;

(3) by declaration of nullity given by the competent authority;

(4) if an action for cancellation based on absolute ground for refusal is claimed ( this action can be done at any time).

 

Customs protection:

IPR infringement in Uruguay must be conducted privately by the IPR owners. After evidence and information about the infringement in Uruguay is gathered, it is possible for an IPR owner to combat piracy and counterfeiting of its products locally. Depending on how serious the IPR violation is, the IPR owner may decide to proceed by sending a cease and desist letter to the infringer and any businesses that are selling the pirated goods and counterfeits, or by starting legal proceedings. In order to take any measures against trademark infringement in Uruguay, it is required that the trademark is registered in the country. Submission of samples of the legitimate products and of the counterfeits is also needed, and it is advisable to provide the information gathered.

Infringing merchandise that has been seized shall be confiscated and destroyed except where, in view of their nature, they may be allocated to public or private charitable institutions.

No civil or criminal action may be instituted once four years have elapsed after the committing or repetition of the offense or after one year computed from the day on which the owner of the trademark has gained knowledge of the fact for the first time.

 

Sources:

Wipo.int: Law No. 17.011 of September 25, 1998, establishing Provisions on Trademarks

 

http://www.guerraip.com/uploads/4/4/3/8/44388651/landslide_article_-_cristina_and_ricardo.pdf

 

 

Vincent Lagier

 

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眾律國際法律/專利商標事務所

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