TRADEMARKS FILING AND PROSECUTION URUGUAY
A trademark is a sign that is registered to distinguish a product or service in commerce. There are other types of signs used in trade that can also be registered with the Uruguay IP Office, such as logos, designations of origin, geographical indications, collective marks and certification or guarantee marks.
In order to legally protect a trademark or other sign used in commerce, it is necessary to register it with the Uruguay IP Office. In Uruguay, trademark protection is granted according to the provisions of Uruguay’s Trademark Law Nº 17.011 of September 25th, 1998.
Trademark in Uruguay may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark, and can license it to the third parties, sell it in return of sum, use it raise equity for business undertakings.
| Relevant office | National Directorate of Industrial Property Ministry of Industry, Energy and Mining (DNPI) |
| Filing principle | First to file |
| Nice classification | YES |
| Paris convention | YES |
| Madrid system | NO |
| Multi class system | YES |
| Documents required for filing a trade mark application | Name and address of the applicant, clear representation of the trademark, list of goods and/or services and Simply signed Power of Attorney. |
| Prosecution process | Filing, formal examination, publication, substantive examination, registration, renewal |
| Registration term | 10 years from the date of registration |
| Renewal term | 10 years |
Trademark searches in Uruguay
Under the “First to File” principle, if any other applicants file applications for the identical or similar trademark used for identical or similar goods and services after the first applicant has applied, those later applications will be refused.
Therefore, it is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in Uruguay can be conducted for word mark, numbers, images, etc. It is advisable to conduct comprehensive trademark clearance search in Uruguay to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Uruguay.
Filing trademark applications in Uruguay
A person may file multi-class or single class trademark application in Uruguay.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary application in Uruguay
Ordinary trademark applications filed in Uruguay are applications without claiming any priority. Multi class trademark applications may also be filed in Uruguay. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
Priority trademark applications in Uruguay/Convention trademark applications Uruguay:
A priority trademark application may be filed in Uruguay. A priority trademark application should be filed in Uruguay within 6 months after the date on which the application was made in the convention country.
Paris convention
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Uruguay within six months of after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
Uruguay follows the nice classification of classes. Intellectual property office of Uruguay uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defines list of terms and cover all the goods and services.
Formal Examination in Uruguay
Once the trademark application is filed, the trademark office makes a preliminary formal examination. In case, a discrepancy is found in this instance, the Examiner will issue a notice and said discrepancy must be corrected within 30 days or the application will become abandoned.
Trademark Publication/Opposition in Uruguay
Once the formal examination is completed and the application is approved by Trademark office, the application will be published for opposition. Any interested third party may file oppositions within 30 day’s time limit following the publication date of the Bulletin. If there are no oppositions filed within the abovementioned time limit, the application will move forward for Substantive Examination.
Substantive Examination in Uruguay
Once the 30 days publication period is over, the application move forward for Substantive Examination. The Trademark Office will analyse the application on both absolute and relative grounds of refusal. This is the phase when Examiner check for any possible similar or identical trademarks.
Trademark registration in Uruguay
If no obstacles are found, the mark will be registered for a period of 10 years from date of registration and the registration certificate is issued.
Trademark Renewal in Uruguay You can renew your trademark right by filing a request for renewal six (6) months before the trademark right expires.