01-18-2013 (Newsletter Issue 1/13)
Accession to the Hague Apostille
The Hague Convention Abolishing the Requirement for Legalization for Foreign Public Documents, known as the Apostille Convention, has entered into force on October 14, 2012 in Uruguay.
Uruguay deposited its instrument of accession to the Hague Convention in February, and thus became the 103rd Contracting State.
With this addition, currently the Latin-American countries members of the Apostille Treaty are: Argentina, Belize, Costa Rica, Colombia, Dominican Republic, Ecuador, El Salvador, Honduras, Mexico, Panama, Peru, Trinidad and Tobago, Uruguay and Venezuela.
The Apostille Convention is a method that simplifies the legalization of foreign documents in order to verify its authenticity, reducing time and costs.
Section 1 of the Apostille Treaty establishes that the Convention applies to the following public documents: court documents, administrative documents, documents issued by a notary and official certifications in documents signed by private persons.
Source: Moeller IP Advisors, Argentina
02-04-2011 (Newsletter Issue 2/11)
Official Fees for Trademark Renewals Changed
The Uruguayan PTO has modified the official fees for trademark renewals effective from January 1st, 2011.
Among the main changes it is important to highlight that in the case of the renewal of trademarks during the grace period the Official Fees of a new application apply. Before this amendment, the renewal during grace period had the same Official Fees than any renewal.
Please note that official fees are adjusted monthly according to the local level of prices, therefore, there might be some additional variations.
Source: www.moellerip.com and Fernandez Secco & Asociados
05-03-2010 (Newsletter Issue 10/10)
E-Filing System Available
The Uruguayan Trademark and Patent Office has established an e-filing system for trademark applications available only to Uruguayan trademark and patent attorneys.
The regulation on Trademarks established is Uruguay’s Trademark Law Nº 17.011 of September 25th, 1998.
Trademark protection is obtained by registration, under the "first-to-file"-System.
Nice classification, 10th edition
Any distinctive signs, such as words, names, acronyms, letters, numbers, devices, combination of colours, three-dimensional forms, the three-dimensional form of a good or its packaging, sound marks (musical notations) and any combination of the mentioned signs can be registered as a trademark.
The following trademark types are registrable: trade marks, service marks, collective marks and certification marks.
The application is filed at the Trademark Office.
Multiple-class applications are possible.
Foreign applicants need a local agent.
A simple signed (non-legalised) power of attorney is sufficient.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior marks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
The processing time from first filing to registration or first office action is approx. 24-25 months.
Prior to registration, the trademark application is published in the Official Gazette (approx. 2 months after the date of the application).
The opposition period is 30 days as of the publication of the application at the Official Gazette.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
is not a member of the Madrid Agreement or Protocol.
A trademark registration is valid for 10 years from the date of registration. The registration is renewable for periods of 10 years.
There is no compulsory use. No use or intent-to-use is required in order to file an application, maintain a registration in force and effect, of obtain subsequent renewal. There is no cancellation action based on the lack of use of a mark.
Official Fees (including publication fees) for the application for a word mark in one class are of approximately € 151 and € 65 per each additional class.
In the case of design trademarks official fees (including publication) are of € 260 and € 86 per each additional class.
Please not that the official fees for trademark applications and publications are adjusted monthly according to an official index reflecting the local level of prices.
Trademark Licence Agreement
In Uruguay licence agreements must be in writing. It is permitted to license the use of unregistered trademarks whose registration is being prosecuted. A trademark may be licensed for some or all of the goods or services covered. Licences may be exclusive or non-exclusive. If the agreement lacks the exclusive right clause it shall be considered non-exclusive. The sale of a registered trademark does not automatically terminate the licence. There are statutory provisions prescribing the terms of licensing:
1. The licensee shall not be entitled to transfer his rights, neither totally nor partially, without express consent from the licensor.
2. Any modification made to the licence or sub-licence agreement shall be duly notified to the Industrial Property Office
There are provisions in law for the recordal of a licensee with the Trademark Office (UPTO). The licence agreement shall be valid and in force against third parties upon registration thereof at the Industrial Property Office. There is no time frame for a recordal and there is no prescribed form for a licence agreement.
The following documents are required for a recordal:
1. The original licence agreement (or a notarised copy) must be filed before the UPTO.
2. A power of attorney in the name of the licensee
3. If the licence agreement makes any reference to another prior agreement, the UPTO will demand that such other agreement is also submitted.
The licence agreement must include a specific period of time.
The licence agreement shall be valid and in force against third parties upon registration thereof at the Industrial Property Office. An excerpt with the substantial parts of the licence agreement is published in the monthly Industrial Property Gazette.
There is an evidentiary presumption that use by a registered user is permitted use, unless it is evidenced that the licensee is actually making unauthorised use of the trademark. The licensee may join the proprietor in infringement proceedings. Judicial proceedings can only be instituted by the owner of the trademark, or by the user acting as a representative of the owner, duly authorised by the same.
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We would like to thank the following law firms for their assistance in updating the information provided:
01-05-2012Clarke, Modet & Cº Portugal
, Lisboa, Portugal
Fernandez Secco & Asociados, Montevideo, UruguayLicensing
Cikato Lawyers, Montevideo, UruguayClarke, Modet & Cº Portugal
, Lisboa, Portugal