URUGUAY: Use of Trademarks No Longer Optional

Contributor: Mauro Marín, Cikato Abogados, Montevideo, Uruguay

Verifier: Martín Chajchir, Marval, O’Farrell & Mairal, Buenos Aires, Argentina

INTA Bulletin Law & Practice—Latin America & the Caribbean Subcommittee

On October 24, 2013, the Uruguayan Congress passed Law No 19,149, known as Ley de Rendición de Cuentas (Accountability Law), which, among other provisions not related to trademarks, establishes that trademarks are now subject to non-use cancellation actions. This provision will be effective January 1, 2014.

Until now, use of trademarks was optional pursuant to Article 19 of the Trademark Law, and, therefore, trademarks were not subject to cancellation based on non-use. Under Article 187 of the Accountability Law, which substitutes Article 19, a trademark registration may be cancelled when the mark has not been used by the trademark owner, a licensee or an authorized person within five consecutive years following its registration date or following the renewal date, or when use has been interrupted for more than five consecutive years, except in cases of force majeure or when the trademark was used to identify products or services covered by other classes, even though they are not related.

To request the cancellation of a trademark based on non-use, the claimant must prove a direct, personal and legitimate interest. The burden of proof of use is on the trademark owner, who may rely on any type of evidence to prove that the trademark has been publicly and actually used. The action will be decided by the Dirección Nacional de la Propiedad Industrial (the National Directorate of Industrial Property).

In addition, the new law provides that it will not be necessary to submit evidence of use when applying for the renewal of a trademark.

The changes introduced by the Accountability Law will have an impact on the commercial strategy of trademark owners, who must use their trademarks to avoid having them cancelled based on non-use.

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.

International Trademark Association - December 15, 2013 Vol. 68 No. 23