Use of trademark in Uruguay

As of January 1, 2019, non-use cancellation action is valid in Uruguay. This change is based on section 6 of executive order n°277/2014. What does this mean? As of the mentioned date, the use of trademark is mandatory if the owner wants to maintain active the registration of the trademark in Uruguay. 

Section 178 of law 19149 modified the Trademark Act (law 17011). This change establishes the mandatory use of trademarks in Uruguay. If the trademark owner doesn’t use his/her mark, a third party may file a non-use cancellation action.

It is important to mention that only third parties with direct, personal, and legitimate interest may file a non-use cancellation action against a trademark registration. If that is the case, the non-use cancellation action must be filed on the Uruguayan Trademark and Patent Office (Direccion Nacional de Propiedad Industrial –DNPI-). Now, let’s answer the most frequent questions about this topic.

What does ‘use of trademark’ mean in Uruguay?

It means all actions that keep your trademark active in commerce, visible and approachable to your specific niche of consumers. Either your records of marketing campaigns for promoting goods and services, invoices, or having a reasonable stock of products on sale or availability for providing services are the most common actions that prove your mark is active in commerce.

Who is entitled to use a trademark in Uruguay?

The owner, licensee, franchisee or any person entitled by the trademark owner contributes using a trademark on behalf of the owner in Uruguay jurisdiction. This is a broad interpretation of ‘use of trademark’ that helps to decrease non-use cancellation actions by third parties.

How long do you need to use a trademark to avoid cancellation actions in Uruguay?

The owner or any entitled party must use the trademark for at least five consecutive years  from the registration date. This amount of time of use will be also necessary throughout the validity of the trademark. Want more information about the trademark registration process in Uruguay

Is partial cancellation possible? No, if the trademark is used for one product or service, it will keep the registration alive for the entire list of goods and services.

Is a statement of use required for renewal filings? No, a statement of use is not required when filing a renewal application or at any time. The Uruguayan PTO does not file ex officio non-use cancellation action and will not demand a statement or prove of use.