– Law No. 17.011 of September 25, 1998, in force since October 19, 1998.
– Regulations under the Trademark Law, Decree No. 34/99 of February 2, 1999.
– Law No. 17.052 approving the Agreement between members of the Mercosur about Intellectual Property.
– Law No. 19.149 of October 24, 2013, adds to the Trademark Law a provision for trademark cancellation due to non-use.

See under “Patents of Invention“.
– Nice Agreement concerning the International Classification of Goods and Services, since January 19, 2000.
– Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, since January 19, 2000.
– Singapore Treaty on the Law of Trademarks, since April 29, 2020.

Applicant: individuals and companies.

Foreigners and nationals not living in the country: may file a trademark.

Rights granted to foreigners: same as for nationals.

Kinds of protection: trade and service marks; collective marks and marks of certification or guarantee; appellations of origin.

Registrable: it is possible to register non-visible signs, such as smells, flavors, etc. Said possibility will depend on the availability of adequate means of recording and storage. Altogether, slogans, and publicity phrases can constitute trademarks, as long as the requirements of novelty, specialty and distinctiveness are met, as requested by the Law.

Not registrable: (1) form of the product when determined by use; (2) color of the product; (3) terms which have passed on to general use, and signs that do not show characteristics of novelty and specialty; (4) designations usually employed for indicating the nature of the products or the class to which they belong; (5) devices or expressions contrary to morals; (6) national flags.

Names or portraits: registrable only upon authorization of the living person or his heirs.

Association marks: registrable.

Priorities: those corresponding to the treaties indicated under “Patents”, when applicable.

Amendment of application: only possible as to minor details. Not possible when considered important as to the basic characteristics of the trademark by the Trademark Office. In those cases a new application is required.

Classification: international according to the Nice Agreement.

Multi-class applications: permitted.

Territory covered: the Republic of Uruguay.

Filing requirements for an application (to be sent to resident agent):

(a) For trademark applications:
1. Power of attorney simply signed by the applicant(s), including first name and surname. In case of representatives they must include their titles;
2. If the applicant is an individual, full name of the person, address and national identity number or passport number should be provided;
3. Original labels if the trademark is a device.

Electronic filing: available. 

Electronic signatures: are not accepted (only wet signatures). Scanned copies of signed documents are accepted and the subsequent submission of the original is not required.

(b) For renewals, to be filed before expiry date (up to six months):
1. Power of attorney (see above point (a) 1.).

(c) For renewals filed within 6 months after lapsing of the registration:
1. Power of attorney (see point (a) 1.);
2. Labels of the trademark, if necessary.

(d) For assignments:
1. Assignment document simply signed by the assignor and assignee;
2. Power of attorney simply signed by the assignee.

(e) For a change of name or address:
1. Power of attorney (see point (a) 1.).

Examination: formal objections are examined.

Opposition: opposition to the application of a new trademark must be filed within thirty days of the publication in the Industrial Property Bulletin.

Grounds for opposition or Office’s objection (“ex officio” opposition): prior use, prior registration by a third party of the same or confusingly similar trademark, the existence of a well-known mark, bad faith or lack of any of the formal or substantial requisites for examination. When necessary, evidence can be filed. The opposition is resolved by the administration. Judicial appeal is possible. 

Amendment of application: the application can be amended during the examination to reduce its scope. 

Letters of consent: letters of consent, like coexistence agreements, are not necessarily taken into account by the Trademark Office but can be considered as relevant elements. A letter of consent must be certified and apostilled, as well as translated by a sworn Uruguayan translator.

Revocation action: if the mark was applied for or registered in the name of another person or entity (importer, licensee, representative) without the due authorization of the owner, a revocation action can be lodged to obtain the transfer (assignment) of the application or registration. This action lapses after five years of the granting of the registration.

Peremptoriness of the terms: all the granted terms will be peremptory and no extension will be granted.

Duration: ten years counted from the granting date.

Renewals: indefinite for same periods. 

Issue of certificate: if no opposition is filed or difficulty arises, application will be granted about two years after the application is filed, and the certificate will be issued about six months after the granting date. The certificate is issued in digital format.

Marking: optional.

Text of marking: "Trademark" or "(R)". 

Obligation to use: mandatory, holders of trademarks in Uruguay will have to use their trademark “publicly and effectively”. Those who fail to do so -directly or through a licensee- may lose their rights to the trademark. 

Cancellation due to non-use: a trademark can be cancelled due to non-use as of January 1, 2019. Only those with a “direct, personal and legitimate interest” will be able to apply for cancellation, in cases where the use of a trademark has been interrupted for more than five consecutive years during the validity of the registration. There is no provision for an ex officio cancellation, and use will not have to be demonstrated for renewal purposes.

Modification of the mark: not possible.

Changes in the list of goods: only to reduce the scope of protection. If new goods are included, a new application must be filed.

Rights of prior user: provided for.

Annulment: a trademark registration may be cancelled at any time in case of absolute nullities. In case of relative nullities up to fifteen years from the date of grant. This situation must be clearly proved. It is possible to claim notoriety of a trademark applied for or filed in the country by a third party (trademark piracy) by evidencing said international notoriety through any reasonable means or by proving that the person who applied for or filed the said notorious trademark already knew or should have known of its existence.

Assignments: must be registered to be opposable to third parties. Total or partial transfer of the ownership of trademarks may be drawn up in private or public documents.

Licenses: it is duly regulated. A Register of Licenses exists with the obligation of publication in the Industrial Property Bulletin.

Registration of invalidated marks: only possible when the reason for refusal does not apply to the new registration or no longer exists.

Infringement: when the rights of a trademark owner are infringed by any third party, defense of such rights is possible through suitable judicial action. Infringers may be fined and/or imprisoned and infringing goods expropriated. Trademark owners may obtain reimbursement of damages from infringers.

Parallel import (exhaustion of the rights): this theory is expressly reflected in the Law, and therefore, there is no possibility to ban the free circulation of marked goods, legally introduced in the trade, unless the mentioned goods or its packaging were altered or deteriorated.