Learn about the process to register a trademark in Uruguay to support and protect your brand. This includes carrying out a detailed trademark search in Uruguay to ensure your design is unique.
Uruguay presents access to local talent and new clientele entrepreneurs and companies looking to expand their commercial operations abroad. For many companies, legally protecting their brand and image is of vital importance to future commercial success.
When operating in a foreign country and in a foreign language, this process becomes more difficult and the need to work with a local partner to ensure your brand and identity is protected becomes clear.
In this article, our legal team in Montevideo provides a clear and simple explanation of the procedure for trademark registration in Uruguay.
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Why register a trademark in Uruguay?
A trademark is any sign, image, logo, design, slogan which identifies products or services of a particular entity or person as separate from others. Its registration confers the exclusive ownership and right of use.
Steps to register a trademark in Uruguay
There are 7 key steps to register a trademark in Uruguay. It is recommended to conduct a thorough trademark search before beginning your application.
The Dirección Nacional de la Propiedad Industrial (MIEM-DNPI) – or Industrial Property Office – is the agency responsible for administering the trademark process.
1. Conduct a trademark search in Uruguay
Prior to registering your trademark in Uruguay, a background phonetic search is recommended to find out if there are any similar or identical trademarks already registered in the country.
By conducting a thorough trademark search in Uruguay, you can find additional information concerning whether or not to file a trademark registration application. This is not a mandatory step, but it is highly recommended based on our professional experience.
2. Application, submission and fees
Upon filing the application, you are entitled to the ‘priority right’ which gives preference to the trademark.
The filing of a trademark application requires a signed authorization letter and detailed information regarding the trademark in accordance with the country’s guidelines.
3. Procedure examination
The DNPI examines the application and verifies its adherence to set requirements. The DNPI also reviews all procedural and administrative matters to ensure the application fee has been paid and the application form has been correctly filled.
4. Trademark publication
From here, the trademark application is published in the Official Bulletin of the Industrial Property Office. This is to allow third parties to review your pending application, and make any comments or objections as necessary.
5. Oppositions
After the application publication, there is a period of 30 calendar days (which is final and which cannot be extended), for the filing of oppositions to the trademark registration.
6. Substance examination
In this step, the DNPI examines the application to determine whether or not there are any oppositions, whether it infringes on any laws or whether it is identical or similar to other registered or filed trademarks.
7. Resolution of the trademark application
Once it has been decided that there are no reasons to deny the application, the trademark is registered and you are given a registry certificate (an ownership certificate) which is valid for 10 years. This certifies that you have the right to own the trademark and gives you the right to exercise the trademark rights granted to you by the national law.
Trademark registration renewal
Your registered trademark in Uruguay is valid for 10 years. Trademarks may have an indefinite use if they are renewed every 10 years.
The renewal application must be filed 6 months before the expiration of the registration.
Uruguayan Law No. 17,011 allows a grace period, where you can apply for the renewal of the trademark within 6 months from its expiration date. It should be noted that the renewal in the grace period is more expensive than renewals completed within the regular period.
Trademark transfer
When you have a registered trademark in Uruguay, you own an intangible and incorporeal asset; as such, it may be assigned, sold, pledged and/or inherited. Trademark rights or the rights granted by a trademark registration application may be transferred partially or in its entirety. Such an assignment must be made in writing and must be filed before The Transfer Registry Office.
Note: Upon publication of the trademark, it may be subjected to opposition by external parties that hold a similar trademark. This is why it is important to conduct a background search before moving ahead with the registration.
Any opposition from third parties must be responded to in order to avoid your trademark application being rejected. Intellectual property rights are very important for both natural persons or legal entities, since it is a valuable competition tool that offers persons the opportunity to clearly differentiate their services and products from others in the market.
Relevant trademark regulations in Uruguay
On October 7, 2014, the Official Gazette published the Decree No. 277/2014 that regulates Sections 189 to 189 of Law No. 19,149 relating to the mandatory use of trademarks in Uruguay.
As of 1 January 2019, any physical or legal entity with an interest in using an existing trademark is entitled to challenge the trademark owner if they have not used it for 5 years or more since the date it was granted. If the challenging party can prove they have a lawful interest in using that trademark, they may succeed in cancelling the existing exclusive ownership due to lack of use by its current owner.
Register your trademark in Uruguay with expert support
For business, large and small, national and international, intellectual property rights are something that should be taken seriously. Trademarks are useful tools that afford persons the opportunity to clearly differentiate the services and/or products offered by others in the market.
If you are interested in registering your trademark in Uruguay or need tailored business services to enable your operations, contact the experts in Biz Latin Hub. Reach out to our team today to see how we can support you.
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