General trademark information in Uruguay

Registration is not required to establish rights in a trademark; sufficient prior use establishes rights in a trademark; this is a "first-to-use" jurisdiction.

• Use of an unregistered mark for the following specified goods only is not legal:
  •  The sale/import of electronic cigarettes is forbidden. No trademark covering electronic cigarettes can be registered. Accordingly, it is not possible to use a trademark for these products.

• The following legislation regarding plain packaging has been enacted in this jurisdiction:

 Tobacco Control Act (Law No. 18,256, Mar. 2008), Articles 8, 9.

B. Time Frame for Obtaining Registration

• The approximate time from application to registration (for a regular prosecution, without opposition) is:

6 to 8 months.

C. Advantages of Registration

• The benefits of registering a trademark include the following:
  • it provides prima facie evidence of ownership and validity;
  • it provides regional, national, and/or local protection;
  • it allows the registrant access to bring actions in particular courts;
  • it helps to deter others from unlawfully using the trademark;
  • it provides a defense to infringement;
  • enforcement of an unregistered trademark is more difficult and more costly than enforcement of a registered trademark;
  • it encourages licensees and provides the opportunity to generate royalties through licensing.

II. Pre-Filing

A. Registrable Trademarks

• The following signs that can be reproduced graphically and are capable of distinguishing the goods or services of one person or entity from another are registrable as a trademark:
  • words;
  • names;
  • devices;
  • certain three-dimensional shapes;
  • colors;
  • slogans;
  • sounds.

• There are no special requirements for the registration of three-dimensional shapes.

They must be filed front, rear, bottom, and side views of the device, in order to show the three dimensional condition.

• The special requirements for the registration of colors are:

 A combination of two or more colors is required. One color per se cannot be registered.

• The special requirements for the registration of sounds are:

 A staff with the notes together with a thumb drive including the sound in mp3 must be filed.

• Marks registered in black and white or grayscale are construed broadly to protect the mark both as registered and in other color combinations.

• In addition to regular trademark registrations, the following types of trademarks are registrable:
  • collective marks;
  • certification marks;
  • service marks.

• Retail services are registrable provided that the nature of the retail services is clearly identified.

• The following are not registrable as trademarks:
  • marks contrary to moral standards or public order;
  • generic terms;
  • names, flags, or symbols of states, nations, regions, or international organizations;
  • non-distinctive trademarks, absent a showing of acquired distinctiveness (secondary meaning).

• Geographical indications (GIs) are protected in this jurisdiction.

• GIs are protected by way of:
  • special laws for the protection of geographical indications or appellations of origin;
  • trademark laws, in the form of collective marks or certification marks.

• The following products or categories are subject to GI protection in this jurisdiction:

alcoholic beverages.

B. Searching

• While conducting a private pre-filing search is not mandatory, it is recommended in that it can:
  • save the applicant the time, effort, and cost entailed in developing, adopting, and applying to register a trademark in which someone else has prior rights.

• The national office is accessible online at the following URL:

 www.dnpi.gub.uy

• The official register can be searched online at the following URL:

 The link is the same as the one for the UPTO: www.dnpi.gub.uy 
Please note that the free search database is only available from Monday through Friday from 8:00 am to 6:00 pm.

C. Use

• An applicant does not benefit from pre-filing use of a trademark.

• When a mark is not registered, use of that mark may provide the following benefits:
  • Courts may protect unregistered trademarks in some exceptional cases.
  • Special protection against infringement may be available for a famous and/or well-known mark that is not registered.
  • Protection against infringement may be available for trademarks with substantial and long-standing use that are not registered.

• Famous and/or well-known marks are protected via the following mechanism(s):
  • an administrative process;
  • a determination by the court resulting from an action for infringement;
  • a determination by the court (other than one resulting from an action for infringement).

D. International Treaties

• This jurisdiction is a member of the following international treaties relating to intellectual property:
  • Paris Convention;
  • Nice Agreement.

III. Filing

A. Requirements

• If the applicant is not domiciled in this jurisdiction, a local address for service must be provided.

• Joint applicants are permitted in this jurisdiction.

• Neither actual use nor intent to use is required for application.

• The following information is required to COMPLETE an application:
  • name and address of applicant;
  • representation of trademark (a depiction of the mark an applicant seeks to register);
  • list of goods/services;
  • power of attorney;
  • official filing fee.

• While ALL of the items noted in the list immediately above are required to COMPLETE an application, ONLY THE FOLLOWING ITEMS from that list are required in order to SECURE A FILING DATE:
  • name and address of applicant;
  • representation of trademark (a depiction of the mark an applicant seeks to register);
  • list of goods/services;
  • official filing fee.

• The list of goods and services in this jurisdiction may specify:
  • “all the goods” or “all the services” of the relevant class(es);
  • the relevant class heading;
  • the relevant local subclass and/or subgroup;
  • a list of names commonly used in the trade for the specific goods or services of interest.

• The following number of copies of the trademark must be submitted:

one.

• In this jurisdiction, the following types of registration are available:
  • national.

• This jurisdiction is not a party to either the Madrid Agreement or the Madrid Protocol and may not be designated in international applications.

• This country is not a member of the European Union; a European Union Trade Mark registration is not effective in this jurisdiction.

• No (other) multinational regional registrations are available in this jurisdiction.

• Applications can be filed online at the following URL:

 https://rad.miem.gub.uy/login/auth

• The official file can be accessed online at the following URL:

 https://pamp.miem.gub.uy/pamp/

• Applications are officially searched as to prior trademarks.

This takes approximately 4 to 5 months from the filing date.

B. Priority

• If an applicant's home country is a signatory to the Paris Convention, the filing date of its home application can be claimed as the filing date in this jurisdiction, provided that its home application was filed within the fixed period of six months preceding the application in this jurisdiction.

C. Classification

• This jurisdiction uses the Nice Classification System.

• If a trademark covers more than one class of goods and/or services, one application can cover multiple classes of goods or services.

• For a multi-class application, the applicant must pay class fees on a per-class basis.

D. Representation

• An application to register a trademark may be filed directly in this jurisdiction by:
  • the applicant, even if not a citizen of or domiciled in the jurisdiction;
  • a trademark representative/attorney/agent, but only if a citizen of or domiciled in the jurisdiction.

IV. Application

A. Publication

• The filing particulars of an application are made available to the public.

• The filing particulars are made available to the public:
  • through publication and online.

• The following application details are made available to the public:
  • mark;
  • name of applicant;
  • address of applicant;
  • state or country of incorporation of applicant;
  • application number;
  • application date;
  • goods/services;
  • representation of trademark

(if it is a logo mark).

B. Examination

• Applications are examined in respect of:
  • formalities: i.e., for compliance with the filing requirements;
  • classification: i.e., to ensure that the goods or services fall within the class(es) listed in the application;
  • descriptiveness: i.e., to check whether a trademark functions solely to provide information about the goods and services affiliated with the trademark;
  • distinctiveness: i.e., to ensure that trademarks are capable of being represented graphically and of distinguishing the goods or services of one individual or organization from those of other individuals or organizations;
  • deceptiveness: i.e., to check whether a trademark is of such a nature as to deceive the public (for instance, as to the nature, quality, or geographic origin of the goods or services);
  • conflict with prior registration, prior-filed application, or earlier unregistered rights resulting from an official search.

• If the local trademark authority issues a preliminary refusal to register a mark based on an earlier registration owned by another:
  • The existence of a valid coexistence agreement between the applicant and the cited registrant will not be accepted as evidence permitting registration of the application.

• This jurisdiction has disclaimer practice (i.e., a practice whereby the applicant must disclaim any exclusive right to an element of a trademark that is not distinctive).

• The order of the application process is as follows:
  • publication, examination, registration.

C. Prosecution

• Accelerated examination may not be requested.

• The following rights are established by a pending application:
  • the filing date of the application establishes a home filing date for purposes of priority;
  • the pending application can be cited in official examination against a subsequent (later-filed) conflicting application;
  • the pending application can be used in a third-party opposition proceeding against a subsequent (later-filed) conflicting application.

D. Opposition

• Opposition is available.

• Opposition is conducted pre-grant.

• The following can be grounds for opposition:
  • proprietary rights, such as an earlier conflicting registration;
  • the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose, or value of goods or of rendering of services or other characteristics of goods or services;
  • the mark is not distinctive;
  • the mark is misleading, deceptive, or disparaging;
  • breach of copyright;
  • rights under Article 6bis of the Paris Convention (notorious or well-known mark);
  • rights under Article 6ter of the Paris Convention (protection of armorial bearings, flags, and other State emblems);
  • rights under Article 6septies of the Paris Convention (registration in the name of the agent or other representative of the proprietor of the mark);
  • rights under Article 8 of the Paris Convention (trade names);
  • registered design rights;
  • rights in a personal name;
  • the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;
  • the mark consists of a geographical indication;
  • the mark is against public policy or principles of morality.

• An application is published for opposition purposes before formal examination of the application.

• The opposition period begins on the following date:

the publication date.

• The opposition period ends on the following date:

30 days from publication date.

• The following parties may initiate an opposition:
  • any interested party;
  • the owner of an earlier right;
  • a licensee.

• Oppositions can be filed online.

E. Proof of Use

• Proof of use is not required prior to the issuance of a registration or the issuance of a notice of allowance/acceptance.

V. Assignment, Licensing, and Other Changes to Trademark Records

A. Assignment

• An application can be assigned.

• A registration can be assigned.

• An assignment of an application must be for the entire territory covered by the application.

• An assignment of a registration must be for the entire territory covered by the registration.

• An assignment of an application can be for some or all of the goods or services listed in the application.

• An assignment of a registration can be for some or all of the goods or services listed in the registration.

• Goodwill need not be included in an assignment of an application.

• Goodwill need not be included in an assignment of a registration.

• An assignment document for an application requires:
  • name of assignor;
  • address of assignor;
  • name of assignee;
  • address of assignee;
  • details of the trademark being assigned;
  • goods and services being assigned;
  • territory being assigned;
  • effective date of the assignment;
  • signature by assignor;
  • signature by assignee;
  •  nominal consideration.

• An assignment document for a registration requires:
  • name of assignor;
  • address of assignor;
  • name of assignee;
  • address of assignee;
  • details of the trademark being assigned;
  • goods and services being assigned;
  • territory being assigned;
  • effective date of the assignment;
  • signature by assignor;
  • signature by assignee;
  •  nominal consideration.

• Legal verification of a written assignment document of an application is required by:
  • notarization;
  • legalization.

• Legal verification of a written assignment document of a registration is required by:
  • notarization;
  • legalization.

• An assignment of an application must be recorded to be effective.

• An assignment of a registration must be recorded to be effective.

B. Licensing

• Use of a mark that is the subject of an application can be licensed.

 It is advisable to consult a Uruguayan trademark attorney in such a situation.

• Use of a registered mark can be licensed.

It is advisable to consult a Uruguayan trademark attorney in such a situation.

• In this jurisdiction, registered trademark users (as opposed to licensees) cannot be recorded.

• A license of an application must be for the entire territory covered by the application.

• A license of a registration must be for the entire territory covered by the registration.

• A license of an application can be for some or all of the goods or services listed in the application.

• A license of a registration can be for some or all of the goods or services listed in the registration.

• A license of an application can be non-exclusive (multiple licensees and the owner).

• A license of a registration can be non-exclusive (multiple licensees and the owner).

• Use by a related company of a mark that is the subject of an application need not be licensed,

but it is advisable.

• Use by a related company of a registered mark need not be licensed,

but it is advisable.

• A license of an application can be made with a time limitation.

• A license of a registration must be made with a time limitation (i.e., it cannot be perpetual).

• A license document for an application requires:
  • name of licensor;
  • address of licensor;
  • name of licensee;
  • address of licensee;
  • details of the trademark to be licensed;
  • goods and services being licensed;
  • commencement date of the license;
  • term of the license;
  • if the license has no limitation of time, a statement so indicating;
  • territory of the license;
  • signature by licensor;
  • signature by licensee.

• A license document for a registration requires:
  • name of licensor;
  • address of licensor;
  • name of licensee;
  • address of licensee;
  • details of the trademark to be licensed;
  • goods and services being licensed;
  • commencement date of the license;
  • term of the license;
  • if the license has no limitation of time, a statement so indicating;
  • territory of the license;
  • simple signature by licensor (see below for execution requirements);
  • simple signature by licensee (see below for execution requirements).

• Legal verification of a written agreement to license an application is required by:
  • notarization;
  • legalization.

• A license of an application need not be recorded, but recordation could help in enforcement, to demonstrate use of the mark.
• A license of an application need not be recorded, but if it is not recorded the license may not be effective against a subsequently dated but recorded license.

• A license of a registration need not be recorded, but recordation could help in enforcement, to demonstrate use of the mark.
• Recordation of a license of a registration need not be recorded, but if it is not recorded the license may not be effective against a subsequently dated but recorded license.

• The license for a renewed registration need not be re-recorded.

• Legal verification of a written agreement to license a registration is required by:
  • notarization;
  • legalization.

C. Other Changes to Trademark Records

• The requirements for the recordal of name changes, mergers, and other important corporate updates on trademark records are as follows:
  • power of attorney, without further formalities;
  • deed of assignment, without further formalities

(if original document);

• deed of assignment, legalized by the respective consulate/apostille

(if certified copy of the original document);

• certificate of merger, legalized by the respective consulate/apostille.

• The requirements regarding the recordal of updated addresses on trademark records are as follows:

power of attorney, without further formalities.

• The requirements for recording liens against trademark records, such as security interests, are as follows:

 power of attorney (without further formalities) and a legal ruling or security contract, whenever applicable (duly notarized). All documents coming from abroad must be legalized/apostilled.

VI. Registration

A. Requirements

• A fee is not required for issuance of the registration,

but there is a fee for the issuance of the Registration Certificate.

• The following documentation is required for issuance of the registration:
  • none.

B. Rights

• The following rights are established by registration:
  • the exclusive right to use the registered trademark;
  • the right to oppose subsequent conflicting applications;
  • the right to bring a cancellation action against a subsequent conflicting registration;
  • the right to sue for infringement against confusingly similar third-party trademark use;
  • the right to license third parties to use the trademark;
  • the right to apply for seizure by customs authorities of counterfeit goods being imported into this jurisdiction;
  • the right to obtain damages for infringement;
  • the right to sue for infringement if a transliterated version of the owner's mark is later used by a third party;
  • the right to oppose and/or cancel subsequent applications for transliterated versions of the registered trademark by third parties.

• The Roman alphabet is used to represent the official language(s) of this jurisdiction.

• A trademark becomes incontestable, that is, the validity of the registration cannot be challenged, after the following time period:
  •  5 years after the grant of the registration for an action based on trademark similarity; 15 years after the grant of the registration for an annulment action based on well-known trademarks. There is no time limit if the applicant acted in bad faith.

• The territorial limit of registration is:

Uruguay.

C. Term

• The initial term of a registration is:
  • 10 years.

• The beginning of the term of a registration is calculated from:
  • the registration date.

D. Marking Requirements

• Marking is not compulsory for registered trademarks, but is advisable because:

 it warns third parties that the trademark is registered.

• Any marking should be in the form(s) mentioned below. Please consult a local trademark attorney in case of doubt.
  •  As marking is not required, there is no guidance in the law/practice on the form marking should take if a trademark owner chooses to use it.

• The use of ® is not legally recognized.

• The legal consequences of false or misleading marking are:

Any individual or company that suffers damage because of false or misleading marking may bring legal action for damages and for leading consumers into confusion.

VII. Post-Registration

A. Use Requirements

• Attack on the ground of non-use is available.

Law No. 19,149 (dated Oct. 24, 2013) provides for the possibility of cancellation of a trademark that is not in use.

• To avoid being attacked on the ground of non-use, a trademark must be used within the following period of time:

 A cancellation action for non-use can be brought within five years following the mark's registration or renewal date.

• To satisfy the use requirement, the amount of use:
  • must be on a commercial scale.

• Use of the trademark must occur in:
  • this jurisdiction.

• The consequences of a trademark's not being used are as follows:

The corresponding registration may be subject to cancellation by a third party for non-use of the mark.

• Periodic statements of use or other mandatory filings by the trademark owner setting forth use of the trademark are not required.

• An action for non-use of a trademark can be brought by:
  • any interested third party.

• Non-use can be excused under the following circumstances:
  •  force majeure causes.

• Resumption of use after non-use for the prescribed period (see above) may cure non-use provided that, in the interim, no third party has:
  • filed an application to register an identical or similar trademark;
  • filed an action for cancellation of the trademark on the ground of non-use.

• Use of a registered trademark in a modified form would not affect the enforceability of a registration and is allowed if the difference is slight and provided that the modification does not materially alter the distinctive character of the trademark. Consult a local trademark attorney.

• Amendment of a registration to conform to a modified form of the trademark is not possible. Depending on the circumstances, a new application to register the modified trademark might be necessary. Consult a local trademark attorney.

B. Cancellation

• Cancellation is available.

• The following can be grounds for cancellation:
  • proprietary rights, such as an earlier conflicting registration;
  • the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose, or value of goods or of rendering of services, or other characteristics of goods or services;
  • the mark is not distinctive;
  • the mark is misleading, deceptive, or disparaging;
  • breach of copyright;
  • rights under Article 6bis of the Paris Convention (notorious or well-known mark);
  • rights under Article 6ter of the Paris Convention (protection of armorial bearings, flags, and other State emblems);
  • rights under Article 6septies of the Paris Convention (registration in the name of the agent or other representative of the proprietor of the mark);
  • rights under Article 8 of the Paris Convention (trade names);
  • registered design rights;
  • rights in a personal name;
  • the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;
  • the mark consists of a geographical indication;
  • the mark is against public policy or principles of morality;
  • the mark has not been authorized by competent authorities pursuant to Article 6ter of the Paris Convention;
  • the mark includes a badge or emblem of particular public interest;
  • the mark is used in a misleading manner;
  • the mark is prohibited in this jurisdiction;
  • the application for or registration of the mark was made in bad faith.

• There is a deadline for bringing a cancellation action.

• The deadline for bringing a cancellation action is:

5 years after the registration date for cancellations based on trademark similarities; 15 years after the registration date for cancellations based on well-known trademarks. There is no deadline for bad-faith cases or when the cancellation is based on absolute grounds.

• The following parties may bring a cancellation action:
  • any interested party;
  • the owner of an earlier right.

• Cancellation actions can be filed online at the following URL:

 https://rad.miem.gub.uy/

C. Renewal

• The following documentation is required for renewal:
  • power of attorney.

• The first renewal date of a registration is:
  • 10 years from the registration grant date.

• Subsequent renewals last for the following period of time:
  • 10 years from the renewal date of the registration.

• The renewal pre-payment period is:
  • no more than the following number of months before the renewal date:

 6 months.

• There is a grace period for renewing registrations once the renewal date has expired.

• The grace period after the renewal date has expired is:
  • 6 months.

• The penalty for late renewal is:
  • a fine.

• Renewal can be effected online at the following URL:

 https://rad.miem.gub.uy/login/auth

• At the completion of renewal, a new registration number is issued.

VIII. Customs Recordation

A. Customs Recordation

• Trademarks that are registered in this jurisdiction can be recorded with the customs authority, the name of which is:

 the National Customs Directorate.

• Recordation with the customs authority can be accomplished online at the following URL:

 https://aplicaciones.aduanas.gub.uy/registromarcas/Globales.Menues.Inicio.aspx

IX. Domain Names

A. Domain Names

• Any domain name may be protected as a trademark.

• The following approved registrars can register a domain name in this jurisdiction:

ANTEL - nic.com.uy

 Intersys Uruguay - www.intersys.com.uy

 Montevideo COMM - www.montevideo.com.uy

 NetGate - netgate.uy/

 HostingenlaWeb.com - www.hostingenlaweb.com/

 AGESIC - www.dominios.gub.uy/

 Netuy - www.netuy.net/

 Hosting Montevideo - www.hostingmontevideo.com/

• Availability of domain names in this jurisdiction can be searched through the following website(s):

https://nic.com.uy/v2/consulta-disponibilidad

• The Country Code Top-Level Domain (ccTLD) for this jurisdiction is:

.uy

• To obtain a domain name under the ccTLD in this jurisdiction, the following is required:
  • a local address.

• Domain name registrations cannot be assigned.

• Domain name registrations cannot be licensed.

• A domain name registration may be contested in this jurisdiction through the following mechanisms:
  • a Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceeding, filed through an ICANN-approved domain-name dispute resolution service provider (see http://www.icann.org/en/help/dndr/udrp).

• One may institute a UDRP proceeding with the following ICANN-approved domain-name dispute resolution service providers to contest a domain name registration in this jurisdiction:
  • World Intellectual Property Organization (WIPO).

• Once a registration lapses as a result of failure to renew, it cannot be revived or restored.

• The application to register a domain name as a trademark will be examined for conflicts with prior trademarks.

• An earlier-filed domain name registration can create rights effective against a later-filed trademark registration application filed by another only if the domain name is being used as a trademark in addition to being used as an address.

• In general, the courts do not apply the same principles to domain name disputes as are applied to trademark disputes. The following unique considerations are of particular note:

 Legislation and regulations for trademarks and domain names is different. However, if the domain name is registered as a trademark, then the trademark regulation would apply.

If you would like to know the trademark registration process of U.S. Virgin Islands USVI ? Click on here!

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