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February 1, 2019 Vol. 74 No. 2 Back to Bulletin Main Page

URUGUAY: Trademark Cancellation Actions Now Available Based on Non-Use

Effective January 2019, cancellation actions may be filed against registered trademarks which are not being used in Uruguay.

On October 7, 2014, Decree No. 277/2014, regulating Sections 187 to 189 of Law No. 19.149 (Accountability and Balanced Budget Execution Act) regarding mandatory use of registered trademarks in Uruguay, was published in the Official Gazette. The INTA Bulletin reported on passage of the law at the time. Five years have passed since the mentioned modification to the Trademark Act and Decree, and now use is mandatory in Uruguay.

As of January 1, 2019, any individual or legal entity with a direct, personal, and legitimate interest will be entitled to file a cancellation action against a registered trademark that has not been used for a period of not less than five years from its date of registration or last renewal.

Cancellation actions may be filed before the Trademark Office when (1) the owner, licensee, or authorized person has not used the trademark within an uninterrupted period of five years following the registration date or date of approval of the respective renewals; and (2) such use has been suspended for an uninterrupted period of not less than five years.

Upon filing a cancellation action, the burden of proof of any use of the trademark will rest with the trademark owner, who may adduce such proof by any means as allowed.

The law does not provide for partial cancellations of trademarks, thus use of the mark for any of the goods or services covered by the registration prevents trademarks from being canceled. Also, cancellations shall not proceed should the trademark owner provide sufficient evidence of force majeure reasons for non-use of the trademark.

Proving use in order to file a trademark application or to renew registrations is not required. Public and actual use of a trademark is required. This obligation is deemed met when:

“any of the goods or services listed in the trademark registration are available in the Uruguayan market, in reasonable quantities and in a usual manner, depending on the market dimension, the nature of goods or services involved and the marketing modalities. Further, the use of a trademark in connection with goods intended for export from national territory or with services provided abroad from national territory is considered use of the trademark. Using trademarks as brand names maintains the registration provided that it is used on goods or packaging thereof or in direct relationship with the services protected by the trademark registration.”

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2019 International Trademark Association