On October 24, 2013, Uruguay passed a law establishing a use requirement for registered trademarks.
In pertinent part, the law states:
- Use of a registered trademark is mandatory.
- The registration of a trademark may be cancelled when:
mark has not been used by its owner, a licensee or an authorized person, within
five consecutive years as from its granting date or by the time the
registration is due for renewal.
- said use has been interrupted for more than five consecutive years.
Section 187- Act No. 19149, of October 24, 2013.
Prior to this law, non-use cancellation actions, common procedures in many jurisdictions around the world, were not provided for under Uruguayan law. The use requirement went into effect on January 1, 2014, and at this time there is no indication that the law applies retroactively to marks registered prior to January 1, 2014.
Regulations enforcing the new law are not yet in place, and with no court decisions on the Act yet available, how non-use cancellation practice will be implemented is not yet clear. In this regard, we set out below a synthesis of relevant early comments from local practitioners:
- Without regulations or any decisions to the contrary, the new provision appears to be effective beginning five years from January 1, 2014. Some commentators are interested in learning whether the law will be applied retroactively.
- Non-use cancellation applications may be brought before the National Bureau of Industrial Property by interested third parties.
- The burden of proving trademark use falls on the owner of the registration, and use may be proven by any legally acceptable means. Some commentators are interested in learning whether local courts or regulations will accept use of a trademark in Paraguay to support a Uruguayan registration.
- A number of commentators noted that use of a mark for one or more of the goods or services covered would protect a registration from cancellation for the other goods and services covered by the registration, even if such goods and services/categories of goods and services are not similar. At least one commentator has confirmed that use of a mark in connection with goods/services in one class would support all classes covered by a multi-class registration.
- If the trademark owner can prove that lack of use was due to force majeure, that mark will not be cancelled.
- Multiple commentators agree that proof of trademark use will not be required when applying for or renewing trademarks.
It remains to be seen which of these observations will hold true once enforcing regulations are promulgated and/or courts begin issuing decisions based on the new law. We will be following this development closely.