3rd September 2018
Starting January 2019, trademark cancellation actions may be filed before the Uruguayan Trademark Office against registered trademarks which are not being used in Uruguay. Andres Hirschfeld from MSI's Uruguayan member firm Rodolfo Hirschfeld & Associates provides further information.
Actual use of a trademark is deemed to have been met when:
“any of the goods or services listed in the trademark registration are available in the Uruguayan market, in reasonable quantities and in a usual manner, depending on the market dimension, the nature of goods or services involved and the marketing modalities. Further, the use of a trademark in connection with goods intended for export from national territory or with services provided abroad from national territory is considered use of the trademark. Using trademarks as brand names maintains the registration provided that it is used on goods or packaging thereof or in direct relationship with the services protected by the trademark registration”.
Use of any of the goods or services covered in the registration prevents trademarks from being cancelled.
Therefore, cancellation actions may be filed when:
a) The owner, licensee, or authorized person has not used the trademark within a period of 5 years following the registration date or date of approval of the respective renewals.
b) Such use has been suspended for a period of 5 years.
Defense against these actions require that use of the trademark be proven, or proof of force majeure reasons for that lack of use.
For further information please contact member firm Rodolfo Hirschfeld & Associates