Trademark Registration in Uruguay

In Uruguay, rights to a trademark are granted to the person or company that first uses it in the territory. However, even though registration is not legally mandatory, in practice it is necessary because it:

• Clearly demonstrates ownership of the mark.
• Helps prevent future conflicts regarding who owns the trademark.
• Is essential to defend against trademark infringement or unauthorized use by third parties.

Trademark registration in Uruguay is carried out before the Intellectual Property Office of Uruguay DNPI.

If you register a combined trademark (which includes both word elements and figurative elements), your exclusive right to use the mark is limited to the exact configuration in which it was filed and registered. If you wish to use the word element separately from the logo (or vice versa), it is advisable to file another trademark that includes only the word or only the figurative elements you want to protect independently.

If a third party later tries to register or use a mark that includes a primary or distinctive part of your trademark for similar goods or services, you will have the right to oppose the application based on confusing similarity. The chances of success will depend on the specific circumstances of each case.

To register a trademark in Uruguay, you will generally need:

• Scanned copy of a signed Power of Attorney. No notarization or legalization required.
• The name or logo you want to register
• The applicant’s details

Your iGERENT consultant will confirm the exact requirements for your case and guide you through each step.

The average trademark application process in Uruguay takes around 6 months.

This is an estimated timeframe for straightforward cases, based on current processing times. The actual duration may vary considerably depending on:

• The complexity of the application.
• Possible objections raised by the office.
• Whether any oppositions are filed by third parties.

Once your trademark is registered in Uruguay:

• It is valid for 10 years from the date of actual registration.
• It can be renewed every ten (10) years, indefinitely.
• Renewal may be requested up to six (6) months before the expiry date.
• The trademark can also be renewed during a grace period of six (6) months after the expiry date, subject to payment of additional fees for late renewal.

Furthermore, cancellation actions may be filed against a trademark for up to 15 years from its registration date. These actions may be brought when it can be shown that the trademark was registered in bad faith, for example when someone registers a mark previously used by another party for identical or similar goods or services.

Yes. Opposition actions against the registration of a trademark may be filed by third parties in Uruguay.

The key procedural point is timing:

• Trademarks are published in the trademark gazette before the examination process.
• Once published, third parties have a 30-day window to file oppositions against the trademark.
• The opposition must therefore be submitted before the mark is examined by the trademark office.

Oppositions are typically based on confusing similarity with prior marks. The likelihood of success will depend on the evidence and particular circumstances of each case.

Actual use of a trademark is not necessary in order to register it or maintain it in Uruguay.

The law does not require proof of use either at the registration stage or for maintaining the registration in force.

Uruguay recognizes three-dimensional (3D) trademarks through the National Directorate of Industrial Property (DNPI). When registering a 3D mark in Uruguay:

• Applicants must provide a clear graphical representation of the mark from at least three different perspectives.
• The 3D trademark must be capable of distinguishing the goods or services of one undertaking from those of others.
• Shapes that are necessary to obtain a technical result or that give substantial value to the goods cannot be registered as 3D trademarks in Uruguay.

For further information, you can visit the DNPI website.