To support and protect your brand in Uruguay, learn about the process of registering a trademark. The first step of the process is carrying out a detailed trademark search in Uruguay to ensure your design is unique.
For entrepreneurs and companies looking to expand their commercial operations abroad, Uruguay provides access to local talent and new clientele. For many of these 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, the trademark registration process can become more difficult. Sometimes it is necessary to work with a local partner to ensure your brand stays protected.
In this article, our legal team in Montevideo outlines, in simple terms, the process of trademark registration in Uruguay.
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Why Register a Trademark in Uruguay?
A trademark can be any sign, image, logo, design, slogan that identifies products or services of a particular entity or person as separate from others. Its registration confers exclusive ownership and right of use.
Steps to Register a Trademark in Uruguay
There are 7 key steps to follow to register a trademark in Uruguay. For the first step, it is recommended you conduct a thorough trademark search. This should occur 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 applying for the Uruguay trademark registration, it is recommended you conduct a background phonetic search, to find out if there are any similar or identical trademarks already registered in the country.
By conducting a thorough trademark search using Uruguay’s database, you can find information that will inform your decision on whether to file a trademark registration application. This is not a mandatory step, but based on our professional experience, it is very important.
2. Application, Submission and Fees
Upon filing the application, you are entitled to the ‘priority right’, which gives preference to the chosen trademark.
Included in the trademark application, must be a signed authorization letter and detailed information on your chosen trademark, in accordance with the country’s guidelines.
A special power of attorney must carry out the process and a fee must be paid to the agency in charge.
3. Application 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 filled out correctly.
4. Trademark Publication
From here, the trademark application is published in the Official Bulletin of the Industrial Property Office. This allows third parties to review your pending application, and make any comments or objections.
Once the application has been published, there is a period of 30 calendar days (which is final and cannot be extended), for third parties to file an opposition claim.
6. Substance Examination
During this step, the DNPI examines the application to determine whether or not there are any opposition claims, whether your trademark infringes on any laws, and whether it is identical or similar to other registered or filed trademarks.
7. Resolution of the Trademark Application
Once DNPI has been decided that there is no reason to deny the application, the trademark is registered and you are given a registry certificate (an ownership certificate) that 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 national law.
Trademark Registration Renewal
Your registered trademark in Uruguay is valid for 10 years. Trademarks may be used indefinitely if they are renewed every 10 years.
The renewal application must be filed 6 months before the expiration of the prior registration.
Uruguayan Law No. 17,011 allows a grace period, so that you can apply for the renewal of the trademark within 6 months from its expiration date. Renewing a trademark registration during the grace period is more expensive than doing so before the expiration date.
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 may be transferred partially or in their entirety. This assignment must be made in writing and filed before The Transfer Registry Office.
Note: Upon publication of the trademark application, 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 process.
You must respond to any opposition from third parties in order to avoid your trademark application being rejected. Intellectual property rights are very important for both natural persons or legal entities. They are a valuable competition tool that offer people 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.
Commonly Asked Questions on Trademark Registration in Uruguay
Based on our extensive experience these are some common questions from clients registering a trademark in Uruguay:
– The Applicant`s Contact Information (Business name, business ID number, country of incorporation, phone number, office address, email address, etc.).
– Determine the class of your products/services to be registered in the International (Nice) Classification of Goods and Services.
– A detailed description of the brand, its origin, design, general description, and business activity.
– The date when you commenced using your brand commercially.
– If you wish to register your logo along with your brand, we request that you provide the logo in JPG format.
– A special power of attorney.
The timeframe to register a trademark is 10 months, provided there is no opposition from third parties.
Register Your Trademark in Uruguay With Expert Support
For businesses, 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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The information provided here within should not be construed as formal guidance or advice. Please consult a professional for your specific situation. Information provided is for informative purposes only and may not capture all pertinent laws, standards, and best practices. The regulatory landscape is continually evolving; information mentioned may be outdated and/or could undergo changes. The interpretations presented are not official. Some sections are based on the interpretations or views of relevant authorities, but we cannot ensure that these perspectives will be supported in all professional settings.