The rights to a trademark in Uruguay are granted to the person or company that first uses it in this territory. Although registration is not mandatory, in practice it is necessary in order to demonstrate clear ownership, prevent future conflicts regarding ownership of the trademark and in order to defend against cases of trademark infringement.
Trademark registration in Uruguay is done through the Intellectual Property Office of Uruguay (DNPI).
Actual use of a trademark is not necessary in order to register it or maintain it.
If you register a combined trademark (which includes both word elements and figurative elements) in Uruguay, the exclusive right to use the trademark is limited to a use of the trademark in the exact configuration or way in which it was filed and registered. If you wish to use the word element of your trademark separately from the logo (or vice versa), it is recommended you register for another trademark including only the word or figurative elements you wish to use and protect separately.
Nevertheless, if a third party eventually intends to register or use a trademark for similar goods or services that includes a primary or distinct part or portion of your trademark, you will have the right to oppose the application based on confusing similarity. Probabilities of success for an opposition will vary in each case depending on the circumstances.
Opposition actions against the registration of a trademark may be presented. The moment to file an opposition is before the trademark is examined by the trademark office. Trademarks are published in the trademark gazette before the examination process. Once published, third parties have a 30-day window to present oppositions against the trademark.
A registered trademark in Uruguay will be valid for ten (10) years, term that begins from the date of actual registration. Trademarks may be renewed up to six (6) months before the expiry date and may be renewed every ten (10) years. The trademark can also be renewed during the grace period of six months after the expiry date, subject to the payment of additional fees.
Cancellation actions may be presented against a trademark for up to 15 years from its registration date. These actions may be presented when it can be shown that a trademark was registered in bad faith. For example, if a person registers a trademark that has previously been used by another for identical or similar goods or services.
If you would like for the figurative or design elements of your trademark to be considered when assessing your trademark for registration in the Uruguay (Trademark Search Report), contact us directly in order to determine if we may be able to offer this in this jurisdiction. In such cases, prices for service and estimated delivery times may vary.