Trademark registration process in Uruguay

This is a step-by-step guide about the trademark registration process in Uruguay. This process has five steps.

Filing a trademark application form and payment of official fees.
Preliminary formality examination by the Patent and Trademark Office (PTO).
Publication in the Official Gazette (Opposition period).
Formal and substantive examination by the PTO.
PTO decision granting or denying the application.

Although it is not mandatory, a good practice is beginning this process requesting a trademark search. This is an important tool which allows you to know if a similar or identical mark has been previously filed or granted. This simple request would help you to save time and money.

Filing a trademark application form and payment of official fees

For this procedure, a trademark application form including applicant and mark information must be filled. In Uruguay, it is possible to file a ‘multiclass’ application. This means that a single trademark application may include two or more classes to protect different goods and/or services). At this moment, the official fee must be paid.

Trademark application form in Uruguay — Trademark application form (page 1).

Preliminary formal examination by the PTO

After a trademark application form was filed and the official fee was paid, the PTO makes a preliminary formal examination. If 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. Most often discrepancies are related to the POA -or Authorization of Agent- and ownership information.

However, if the discrepancy is related to an application which claims priority and the priority document is missing, it must be submitted within a 90-day period as of the trademark application filing date in Uruguay (the priority document must be translated to Spanish by an authorized Uruguyan Public Translator).

Publication in the Official Gazette

Once the preliminary formal examination is completed and approved by the PTO, the application is ready for publication. The Official Gazette is issued twice a month (on the last business day of each fortnight). As of the publication date, third parties will have a 30-day period to file an opposition to the trademark application.

Formal and substantive examination by the PTO

After the 30-day publication period ends, a formal and substantive examination is executed by the PTO. If the Examiner finds a formal discrepancy, he/she will issue a notice to file corrected application papers within a 10-day period.

Once the formal examination is approved, the substantive examination will take place. The Examiner’s main goal at this stage is to analyze whether or not the application violates the provisions of Law 17.011. This is the moment when the Examiner compares among any possible similar or identical trademarks.

PTO’s resolution regarding the trademark application

A granting resolution will keep the registration active for ten years. This 10-year period is calculated based on the granting date.

However, if a resolution denying the application is issued by the PTO, there is a ten-day period to file an appeal (‘recurso de revocación y jerárquico en subsidio’).

Do you need assistance? Do not hesitate to contact us.