About LegalForce/Trademarkia
Trademarkia (LegalForce, Inc.), is one of the largest trademark search engines in the world. You can file and register your trademark in 170+ countries in the world through Trademarkia, including in the United States, China, Japan, the European Union, Korea, and many others. With the A La Carte Package, you follow step-by-step online legal form designed by world class global trademark attorneys at leading law firms; and LegalForce does the rest. It's easy and the protection lasts indefinitely in most countries.
It's easy and the protection lasts indefinitely in most countries
Trademarks are names, logos, or short slogans that help distinguish a good or service from other goods and services in a particular geographic area. Once a trademark is issued by a government agency, the protection lasts indefinitely in most countries – so long as you use your mark in commerce. Filing for Trademark Protection through LegalForce Trademarkia is easy! See why LegalForce is superior to other options >>
Automated reminders keeps you up to date
Trademarkia can also automatically provide you with reminders and keep you up to date of your status after you file your trademark application. Trademarkia's automated reminders help you so that you don’t have to deal with government bureaucracy or forget important dates.
Background
Montevideo, founded by the Spanish in 1726 as a military stronghold,
soon took advantage of its natural harbor to become an
important commercial center. Claimed by Argentina but annexed by
Brazil in 1821, Uruguay declared its independence four years later
and secured its freedom in 1828 after a three-year struggle. The
administrations of President Jose Batlle in the early 20th century
established widespread political, social, and economic reforms that
established a statist tradition. A violent Marxist urban guerrilla movement,
named the Tupamaros and launched in the late 1960s, led
Uruguay's president to cede control of the government to the military
in 1973. By year end, the rebels had been crushed, but the military
continued to expand its hold over the government. Civilian rule was
not restored until 1985. In 2004, the left-of-center Frente Amplio Coalition
won national elections that effectively ended 170 years of political
control previously held by the Colorado and Blanco parties.
Uruguay's political and labor conditions are among the freest on the
continent.
Who May Apply?
Any natural person or legal entity may apply for and register a
trademark.
The registration of a mark implies the presumption that the physical
or legal person in whose name the registration was made is the
lawful proprietor thereof.
What Can Be Registered?
Any sign suitable to distinguish goods and services belonging to a
person or legal entity from those belonging to another person or legal
entity is eligible for registration.
In order to be registered, trademarks must be clearly different from
those already registered or applied for as to avoid confusion regarding
the same goods or services or concurrent goods or service.
The signs may consist of arbitrary or fanciful designs, names,
pseudonyms, geographical names, slogans, devices, reliefs, letters,
numbers, labels, envelopes, emblems, prints, stamps, seals, vignettes,
selvedges, borders and edgings, combinations or arrangements of colors, and shapes of goods or containers. Generic or descriptive signs
that have acquired secondary meaning are registrable.
What Cannot Be Registered?
The following signs cannot be registered based on absolute nullity:
(1) names of the state and the municipal government, national
or municipal symbols, coats of arms or distinctive elements
identifying them, except respective municipal governments
who can use and register their own symbols, name of companies
with participation of the state;
(2) signs reproducing or imitating coins, notes, or any national or
foreign official payment means, official signs or hallmarks
indicating control and warranty adopted by the state;
(3) emblems used by the Red Cross and the International Olympic
Committee;
(4) appellations of origin and any geographical name not original
or distinctive enough regarding the goods or services they apply
to or whose use is likely to create confusion regarding the
origin, qualities, or characteristics of the goods or services
distinguished by the trademark;
(5) shape given to goods or containers when they meet the requirements
to be registered as an invention patent or utility model
according to the provisions of the corresponding law;
(6) names of vegetable varieties registered in the Register of Crops
Properties regarding said varieties in the corresponding class;
(7) letters or numbers considered individually without any particular
shape; (8) monochromatic colors of goods, containers, and label;
(9) technical, commercial, or common names used to express qualities
or attributes of goods and services;
(10) names generally used to indicate the nature of goods or services
or the class, type, or kind the said goods belong to;
(11) words or expressions commonly used, signs or designs which
are not fancy nor which present novelty, specialty, or distinctive
characteristics;
(12) words or a combination of words in a foreign language whose
translation into Spanish is comprised within the prohibitions
stated in paragraphs 9, 10, and 11 above;
(13) drawings or expressions contrary to public order, socially accepted
morals, or good manners; and
(14) caricatures, portraits, drawings, and expressions in connection
with ideas, persons, or objects worthy of respect and consideration
whenever said caricatures, portraits, drawings, and
expressions may bring them into contempt or disrepute.
The following signs cannot be registered based on relative nullity:
(a) flags, coats of arms, letters, words, and other distinctive elements
identifying foreign states or international and intergovernmental
entities provided their commercial use is not authorized
by a certificate duly issued by the corresponding office of
the state or entity with an interest therein;
(b) literary and artistic works, reproductions thereof, and fictional
or symbolic characters deserving copyright protection unless
the registration is applied for by the proprietor thereof or a
third party with the proprietor's consent;
(c) names and portraits of living persons unless their express
consent is given;
(d) names and portraits of dead persons unless express consent is
given by their legal heirs;
(e) surname alone, whenever the opposition thereto filed by the
interested party is deemed duly justified by the corresponding
administrative authority; (f) certification or guarantee marks indicated as prohibited by the
law;
(g) signs or words totally or partially reproducing, imitating, or
translating any well-known trademark or commercial name;
and
(h) words, signs, or distinctive elements supposed to imply the
purpose of unfair behavior.
A trademark owner of a well-known trademark can prevent the use
of similar marks used on different goods or service.
Rights
Trademark owners are entitled to request injunctions before the
civil andlor criminal courts against use of unregistered marks that
are identical or similar to their own. Third parties have no right to
use similar marks on the same goods and services.
The same mark can be used for different goods or services if they
are not concurrent with the ones covered by the registered mark.
The registration of a mark does not preclude third parties from using
their bona fide names, addresses, pseudonyms, a geographical
name, or exact indications concerning the kind, quality, destination,
value, place of origin, time of production, or supply of their goods and
services, provided that such use is confined to the purposes of mere
identification or information and does not mislead the public as to the
source of the goods or services.
Trademark owners of marks in use but not registered may oppose
registration sought for marks identical or similar to theirs, provided
opponents offer proof of nonconflicting, public, and continuous use for
one year commencing from the opposition filing date. When an opposition
is filed by a party having failed to renew a mark previously
registered, use thereof shall be deemed proved for the time that the
mark had been on the register.
Filing Requirements
The following requirements are necessary for applications for
registration:
- Power of attorney, simply signed (i.e., without notarization or legalization);
- Seven copies of the filing form for word marks and device marks
(device marks should not be larger than six cm x eight cm);
- If a foreign application or registration is in a foreign language, it
must be accompanied by a certified translation effected or certified
by a Uruguayan sworn translator.
Applicants are required to appoint a local trademark attorney to file
applications. There is no need for residency or a physical presence in
the country to file applications for registration.
, The Priority under the Paris Convention must be claimed when the
z application is filed. A certified copy of the underlying foreign application
or registration must be filed in support of the priority claim within
three months of the filing date of the application.
Evaluation & Review
Applications for registration of trademarks must be filed at the
Trademark Office.
Once the application is filed, it is published in The IP Bulletin for
opposition purposes. Afterwards, the Trademark Office performs its
own examination and may raise objections based on the existence of
preregisteredlapplied marks or on the lack of distinctiveness of the
applied mark.
The Industrial Property Office is entitled to oppose or dismiss applied
marks in defense of consumer rights. This is why letters of
consent are not enforceable in Uruguay. If the Office finds that the application does not meet the formal
requirements, the applicant will be notified. If the applicant does not
reply within the time allotted by the Office, it will be deemed
abandoned.
When a formal objection is raised the applicant has 30 days, commencing
from the date of the personal notification of the objection, to
file a reply. The applicant can apply for a 15-day extension. No
explanation is required for such a request.
The only legal time limit is the opposition term, which is 30 days
commencing from the date of publication. The official examination
does not have a specific time limit. In general, where no oppositions
from third parties or official objections are raised, the mark is granted
within 10 to 12 months.
Duration
The registration of a trademark grants a period of protection of 10
years, renewable for another 10-year period at the request of the proprietor
or its representative. Trademark registrations may then be
renewed for unlimited 10-year periods by payment of the necessary
renewal fee.
The renewal must be applied for within six months prior to the
expiration of the term of protection, although a grace period of six
months will be granted from the day following the expiration date.
The cost of filing a renewal during the grace period is the same as the
fee paid for a regular renewal application.
An additional fee must be paid for each class of goods andlor services
where the mark being renewed covers more than one class and
official fees are paid for each class covered by the mark.
If the trademark owner fails to renew his or her registration, it will
expire.
Use
Use of a trademark is optional. Trademark Law does not state
requirements for compulsory use.
Use of a trademark is compulsory on the grounds of public utility as
defined by the Executive Power. However, this type of use has never
been raised.
Domain Names
The top level domain of Uruguay is .com.uy.
The Registry name which registers the domain names is SECIU
(Servicio Central de 1nform;tica de Uruguay). There are no statutes or case law that give people rights to their
domain names or otherwise help them to protect domain names.
The procedure for registration of a domain name is based on a
chronological order of application and no further inquiries about the
right on the mark are raised. The domain name registration is valid
for one year. However, unless the interested party renounces the
registration, it is automatically renewed.
The domain name registrar does not perform any examination of
applications for domain names to determine if there is any conflict
with registered trademarks.
The owner of a prior mark can obtain the cancellation, but not the
transfer, of a domain name identical to his or her mark before the
civil courts (court of the domicile of the defendant) and also via the
dispute resolution process.
The following requirements apply to obtain cancellation of a domain
name:
-Proof of the existence of a prior right (through a trademark
registration certificate); or
- Proof of the existence of bad faith.
Only one of requirements is sufficient.
The owner of a domain name reserved before the filing of a
trademark by another party can obtain the cancellation through a
claim before a civil court of the mark, but the bad faith of the
trademark owner should be proved. The mere existence of an identical
domain name is not sufficient to obtain the cancellation of a trademark
registration.
Enforcement
Civil courts are competent. The trademark owner is entitled to
select either the court within the area of the infringer's address or
within the location of where the counterfeited acts occurred.
Offenders may be liable to prosecution at the request of party
concerned. Owners of a title to registered marks may petition the judiciary
civil courts for an injunction against use of an unregistered
mark that is identical or similar to theirs.
Aggrieved parties may file suit for damages against the authors or
coauthors of any penal acts.
A term of six months imprisonment up to three years confinement
in a penitentiary is provided for:
(1) any party who, for profit or in order to cause damage, makes
up, counterfeits, misrepresents, or imitates a trademark entered
on the register as belonging to another;
(2) any party who fill containers bearing another's mark with a
product different from the original products; and
(3) any party who knowingly manufactures, stores, distributes, or
markets goods under protected trademarks
Counterfeited marks and any instruments used to make or affix
them will be destroyed or rendered useless. Goods impounded for
bearing infringing marks will be confiscated and destroyed, except
when owing to their nature, they may be awarded to public or private
charities.
No civil or criminal action may be filed after four years have elapsed
since the offense was committed or repeated or after one year from
the date when the title owner first became aware of the fact.
A request to the customs authorities for surveillance may be filed.
Such requests must be in writing and specify a particular shipment.
The Customs authorities will issue a decision concerning any
surveillance request. There are no time limits; such limits are decided
by the judge on a case by case basis.