In Uruguay the use of a mark was not mandatory.
However, the recently approved Law No. 19.149 has established the mandatory use of the registered mark as a condition for its validity.
Effectively, Article 187 of Law 19.149 modified Article 19 of Law 17.011 establishing the mandatory use of a trademark and implementing the possibility of initiating a Cancellation Action for non-use in the following circumstances:
- A- When it has not been used by its owner, by a licensee or by an authorized person, within the five consecutive and following years to the granted date or to the date of authorization of its respective renewals, or
- B- when its use has been interrupted for more than 5 consecutive years.
The owners of a direct, personal and legitimate interest may request the cancellation of a registered trademark and the owner of the registration must confirm its use by any means of proof admitted by law which shows that the trademark has been publically and effectively used.
The text of the new wording of the law is transcribed for your reference:
Art. 187 – Article 19 of Law No. 17.011, of September 25, 1998 is substituted by the following:
“Article 19.- The use of a registered trademark is mandatory.
A trademark registration may be cancelled:
- A- when it has not been used by its owner, by a licensee or by an authorized person, within the five consecutive and following years to the granted date or to the date of authorization of its respective renewals, or
- B- when its use has been interrupted for more than 5 consecutive years.
The registration cannot be cancelled when the owner proves that the lack of use is due to reasons of force majeure.
The owner of a direct, personal and legitimate interest may request the cancellation of a mark when the situations provided in paragraphs A) and B) above apply. The Cancellation Action will be settled by the Dirección Nacional de la Propiedad Industrial.
The use of the trademark for one or more products or services exempts other categories of products and services from the cancellation even though they are not similar.
The evidence of use of the trademark corresponds to the owner of the registration.
The use of the mark will be confirmed by any means of proof admitted by law which shows that the mark has been publically and effectively used by the stipulated deadline.
For the purposes of renewal, it is not required to submit evidence regarding the use of the mark.
The regulation will establish the conditions and terms of use according to this article and the procedure of the cancellation action”.
However, in practice, it is not possible to establish the above action because it has not yet been approved by the Executive Power who establishes the conditions under which a Cancellation Action can be filed due to non-use.
Nowadays, the authorities of the Dirección Nacional de la Propiedad Industrial is elaborating a draft of the decree together with the Asociación Uruguaya de Agentes de la Propiedad Industrial.
We will keep you fully informed of the progress on this issue since it is important to all those who hold trademark rights in Uruguay
JUAN VANRELL
