A trademark consists of any sign that has the ability to distinguish a product or service that belongs to a natural person or legal person from a product or service belonging to others.
Our internationally recognized team offers a comprehensive counsel during the process of search, registration and renewal of a trademark; or also during the opposition, the appeal, annulment or cancellation of registers by third parties that imply a risk or damage to our client’s trademarks.
Additionally, our trademark department has recognized experience in the litigious area, anti-piracy area and in counseling about trademarks for businesses or services.
Our international experience and our personalized and flexible treatment turns us into a reliable and efficient alternative when protecting trademark assets.
The trademark department offers the following services:
- Search and registration of trademarks.
- Advice on strategies for the protection of trademarks and other distinctive signs.
- Global, regional and local administration of trademarks and trademarks portfolios.
- Auditing or due diligence services.
- Designing of strategies to avoid infractions or trademark piracy.
- Execute opposition, annulment and cancellation actions for trademarks and other distinctive signs.
- Litigations on trademark infraction and defense of competition or breach of contracts.
- Monitor legislative and judicial developments, evaluation of the implications, information to the clients and recommendations on preventive and main actions, if so indicated.
- Counseling in Entertainment Rights.
- Counseling in licensing, franchising and distribution contracts.
- Counseling in Publicity and Promotion Rights.
– Power of attorney. Duly completed with the applicant’s complete name and domicile and including the complete name and identification number of his representative. The same does not require any certification or legalization of signatures and can be sent to us by e-mail or fax, and later by ordinary mail.
– Information on the Trademark. If the trademark is to be registered with a design or logo, we need to receive a copy of the same. The logo can be sent by e-mail. If the design or logo include color, they must be sent in color.
– International Classification. In Uruguay it is possible to register a trademark without needing to specify the goods or services in which the mark will be used. We have a multi-class system; hence, a trademark can be filed for more than one class in one application form.
Use requirements. As from January 1st, 2014 the use of the mark should begin within the following 5 years after the register was granted or the trademark was renewed. Otherwise, the trademark can be cancelled due to non-use by the one who proves to be the titleholder of a direct, personal and legal interest. According to what is established in Decree 277/2014 the cancellation action can be deduced as from January 1st, 2019. Notwithstanding, it is not necessary to prove the trademark is being used in order to renew it.
Priority Document. In case the priority is claimed according to the Paris Convention, it is necessary to present the priority document issued by the Trademarks Office of the country of origin and its corresponding translation by a Uruguayan Public Translator. The document must be submitted within 90 days as from the presentation of the trademark. At the moment of carrying out the application the country, number and date of the priority must be established.
– A preliminary search is not required, however, we strongly advise to conduct one before filing an application. The search is processed within 1 or 2 working days.
– Trademarks in Uruguay are registered before the Dirección Nacional de la Propiedad Industrial (DNPI). Approximately two months after the application is filed, the trademark is published in the Official Bulletin of the DNPI. As from the publication, a 30 days period for third party oppositions begins.
– Afterwards, the file goes to the Trademarks Department for a review study. The DNPI can oppose sua sponte in case it considers there are similar or identical records or that the trademark does not comply with the requirements demanded by the Trademarks Law.
-In case no oppositions are presented, the trademark application will be granted in approximately 12 months.
– The registration of a trademark is valid for ten years as from the date in which the same was granted and they can be renewed indefinitely for periods of 10 years.
– In case oppositions are filed the DNPI will notify in order to file a response.
-The Office studies the opposition. The opposition procedure can take between two and three years.
– In case the trademark is rejected it is possible to file repeal and hierarchical claims under administrative law.
– In case both claims are rejected it is possible to go under judicial law before the Tribunal de lo Contencioso Administrativo (TCA).
In Uruguay, trademarks can be renewed within the period of 6 months prior to its expiration date or within a period of 6 months after the same has expired. During the later period the titleholder has an exclusive right to renew the trademark.
In order to renew a trademark the corresponding power of attorney duly completed and signed is required.
In Uruguay, trademarks can be assigned before or after their registration. In order to assign a trademark a copy of the assignment document or an assignment contract must be presented. The contract does not require certification or legalization of signatures. A power of attorney signed by the assignee is necessary.
The assignment must include a declaration on behalf of the assignor establishing if he owns identical or similar trademarks in Uruguay. In case other identical or similar trademarks are not assigned, they must be included in a special declaration.
In order to record a change of name of a trademark in Uruguay the abovementioned power of attorney, that includes the name of the new titleholder, is required.
In order to record a merger, a certified and legalized copy of the merger document must be filed to the Trademarks Office. The same shall be in Spanish and in case the document had been issued in a different language a translation, certified by a Uruguayan translator, is required. A power of attorney is required.
In order to record a change of domicile, a new power of attorney that includes the titleholder’s new domicile is required.
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