Modifications of the legal regulations regarding the use of trademarks in Uruguay
On October 7th, 2014 Decree Nº 277/2014 of October 1st, 2014 regulated by Law Nº 19.149, regarding the obligatory use of trademarks in Uruguay was published.
According to Articles 187 to 189 of said law, in full force and effect from January 1st, 2014, the use of registered trademarks is obligatory in Uruguay and it will be possible to file a cancellation action as from January 1st, 2019.
As a consequence, it will be possible to cancel trademarks registered in Uruguay due to lack of use through a non-use cancellation action filed before the Dirección Nacional de la Propiedad Industrial (DNPI) in the following cases:
A) When the trademark has not been used by the owner or other authorized person within the following five years after the date it was granted or of its corresponding renewal date or
B) When the use has been interrupted for more than five years.
Our law does not forecast partial cancellation. In effect, the obligation of use is fulfilled when any such product or services that the register distinguishes is available for commerce in Uruguay, in the amount or way that usually corresponds, taking into consideration the dimension of the market, the nature of the products or services and its manner of commercialization.
The use of a trademark can also be the use relating to products destined to be exported from Uruguay or with services that are offered abroad from Uruguay.
Finally, the use of a trademark as the brand name preserves its register as long as it is used on the products or on the packages or in direct relation with the services protected by the trademark register.
The use of a trademark should be public and effective and evidence thereof will correspond to the owner of the register.
Consequently, we remark the importance of keeping the elements of evidence of the use of the registers done in our country to that effect.
We are hereby available for any additional query and to analyse the usage criteria needed for the adequate defence of your trademarks before eventual non-use cancellation actions.