August 30, 2018

Trademark news from Uruguay

The National Industrial Property Office of Uruguay (MIEM-DNPI) has recently published a Circular No. 3/2018 concerning the elimination of the fees associated with the trademark publications except for the publication of the data on renewals within the grace period. The said rectification is caused by the implementation of the online services allowing applicants to avoid publication fees when submitted on paper. This change entered into force on August 1, 2018, and is aimed at reducing the total cost of trademark registration.

Furthermore, starting from January 1, 2019, the Uruguayan legislation will put into force a procedure for non-use trademark cancellation. Any third party directly interested in a trademark will have a possibility to file a non-use cancellation action provided that the trademark of interest has not been used by the owner or any other lawfully authorised party within five consecutive years from the date of the trademark grant or renewal.

However, under the updated legislation it will not be possible to request a partial trademark cancellation. This means that in case a trademark of interest is used for some of the goods or services mentioned in the corresponding description, the non-use cancellation action will be rejected. Non-use of a trademark due to force majeure will not also be considered as a reason for a trademark cancellation.

By updating the laws, the Uruguayan government is striving to modernise the intellectual property protection instruments. Moreover, by implementing the online services, which make it possible to reduce some fees, the MIEM-DNPI endeavours to improve the IP management in the country and to make it more attractive to the applicants.

Author: Jessica Chester