Overview of Uruguay Trademark Registration Service

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.