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DERECHOS DE PROPIEDAD INTELECTUAL
NATIONAL LEGISLATION - URUGUAY
Law No. 17.011 - Trademarks
REPUBLIC OF URUGUAY
The Senate and the Chamber of Representatives of the Republic of Uruguay met in General Assembly
ARTICLE 1 - By Trademark it is meant any sign suitable to distinguish those goods and services belonging to a physical or legal person from those ones belonging to another physical or legal person.
ARTICLE 2 - The registration of non visible signs will remain conditional on the availability of the suitable technical means.
The Executive Power will establish the opportunity and regulate the implementation process to the corresponding effects.
ARTICLE 3 - Those advertising sentences complying with the conditions required herein may be used as trademarks.
ARTICLE 4 - According to the provisions hereof, the following will not be considered as trademarks thus giving rise to absolute nullity:
The name of the State and the Municipal Governments; those national or municipal symbols; those coats of arms or distinctive elements identifying them, except regarding themselves, the non-official legal persons, the companies with participation of the State and those special cases provided for in articles 73 hereof and following ones.
Those signs reproducing or imitating coins, notes or any national or foreign official payment means as well as those official signs or hallmarks indicating control and warranty adopted by the State.
Those emblems used by the Red Cross and the International Olympic Committee.
Those appellations of origin and any geographical name not original or distinctive enough regarding the goods or services they apply to or whose use is likely to create confusion regarding the origin, qualities or characteristics of the goods or services distinguished by the trademark.
The shape given to goods or containers when they meet the requirements to be registered as an invention patent or utility model according to the provisions of the corresponding law.
Those names of vegetable varieties already registered with the Register of Crops Properties established by law 16.811 dated February 21, 1997 regarding said varieties in the corresponding class.
Those letters or numbers considered individually without any particular shape.
Monochromatic colors of goods, containers and labels, although combination of colors for containers and labels may be used as trademarks.
Those technical commercial or common names used to express qualities or attributes of goods and services.
Those names generally used to indicate goods or services nature or the class, type or kind said goods belong to.
Those words or expressions of general use at present and those signs or designs which are not fancy signs, that is to say, which do not present novelty, specialty or distinctness characteristics.
Those words or combination of words on a foreign language whose translation into Spanish is comprised within the prohibitions stated in paragraph 9, 10 and 11 hereof.
Those drawings or expressions contrary to public order, socially accepted morals or good manners.
Those caricatures, portraits, drawings and expressions in connection with ideas, persons or objects worthy of respect and consideration whenever said caricatures, portraits, drawings and expressions may bring them to contempt or disrepute.
ARTICLE 5 - According to the provisions hereof, the following may not be registered as trademarks thus giving rise to relative nullity:
Those flags, coats of arms, letters, words and other distinctive elements identifying foreign states or international and intergovernmental entities provided its commercial use is not authorized by a certificate duly issued by the corresponding Office of the State or Entity with an interest thereon.
Those literary and artistic works, reproductions thereof and fiction characters or symbolic ones deserving the copyright protection unless the registration is applied for by the proprietor thereof or a third party with the proprietor consent.
Those names and portraits of living persons as long as said persons do not give their express consent therefor. Those names and portraits of dead persons as long as their legal heirs do not give their express consent therefor. To the effects of this provision, by “name” it is meant the Christian name followed by the patronymic name as well as the sole surname and the pseudonyms or titles whenever the later identifies the person as much as the former do.
The surname alone, whenever the opposition thereto filed by the interested party is deemed duly justified by the corresponding administrative authority.
Those certification or guarantee marks provided for in the prohibition of article 54 hereof.
Those signs or words totally or partially reproducing, imitating or translating any well-known trademark or commercial name.
Those words, signs or distinctive elements supposed to imply the purpose of an unfair behavior.
ARTICLE 6 - Trademarks sought to be registered should be clearly different from those already registered or whose registration is being prosecuted, so as to avoid confusion regarding the same goods or services or regarding concurrent goods or services.
ARTICLE 7 - Those signs under the prohibition of paragraphs 9, 10,11 and 12 of Article 4 hereof may nevertheless be part of a combined trademark, but without exclusive rights over the same.
ARTICLE 8 - When a word or group of words under the prohibition of paragraphs 9, 10, 11 and 12 of Article 4 hereof has acquired proved distinctive character regarding a good or service associated to a certain physical or legal person, said word or group of words would be allowed as trademark for said physical or legal person and regarding said goods and services.
Once the register granted under the provisions of the previous paragraph expires, the same shall not be registered again by third parties.
The first paragraph of this article shall apply also to those trademarks already registered before the entry into force of this law, provided said registered trademarks meet the requirements provided herein.
ARTICLE 9 - The right to use a trademark is acquired through the corresponding registration made pursuant to the provisions hereof.
The registration of a trademark involves the presumption that the physical or legal person under whose name the registration was verified is the trademark legitimate proprietor.
ARTICLE 10 - The registration of a trademark already registered in a foreign country shall be applied for only by the legitimate proprietors thereof or their duly authorized agents or anyone certifying to be duly authorized to register the trademark under the legitimate proprietor’s name.
ARTICLE 11 - The exclusive ownership of a trademark is only granted in connection with those goods and services said trademark was duly applied to cover.
Trademarks including the name of a good or service shall only be registered to distinguish the good or service mentioned therein.
ARTICLE 12 - Free circulation of marked goods, legitimately introduced in the market by the owner thereof or by duly authorized agents shall not be obstructed or impeded on the grounds of the registration of said trademarks, provided said goods and their presentation as well as the containers or packing of the same in direct contact therewith are not significantly altered, modified or damaged.
ARTICLE 13 - Once a trademark registration is duly granted, the proprietor thereof acquires the protection granted by said registration and said proprietor shall not have the right to apply for a new total or partial registration of an equal trademark, regarding the same classes, if he does not previously or concomitantly waive his rights to the previous total or partial register, as the case may be.
ARTICLE 14 - The right to file oppositions against the use or the registration of any trademark likely to create confusion between goods and services shall be vested on the physical or legal person who has complied with the requisites provided hereof.
ARTICLE 15 - The change of name or domicile as well as the modification of the social type or any other modification affecting the title to the registration shall be registered in the Industrial Property Office and shall be published in the Industrial Property Gazette.
ARTICLE 16 - The ownership of a trademark shall inure to the benefit of the heirs and may be transferred by inter vivos action, last will disposition, writ of execution or by the prosecution of a claim.
Total or partial transfer of the ownership of trademarks may be drawn up in private or public documents. For said transfers to be valid against third parties the corresponding registration at the Industrial Property Office and publication in the Industrial Property Gazette, created by article 80 hereof, shall be carried out .
ARTICLE 17 - Notwithstanding the provisions of article 14 hereof, in the event of transfer, the grantor shall have to state if he owns other trademarks equal or similar to the ones he/she transfers. Silence or concealment thereof shall result in the loss of the protection granted through the registration of said trademarks. Said loss shall be decreed ex-officio or on demand from the interested party.
ARTICLE 18 - The registration of a trademark shall grant a period of protection of ten years, always renewable for further ten years at the request of the proprietor thereof or said proprietor’s representative.
The renewal shall be applied for within the term of six months prior to the expiration of the term of protection, although a grace period of six months will be granted, as from the day following the expiration date, in which case it will be published in the Industrial Property Gazette.
The renewal of a trademark registration will imply the waiver as regards those classes, goods and services comprised in the previous registration but not claimed in the application for renewal.
ARTICLE 19 - The use of a trademark is optional. The use of a trademark shall be compulsory on the grounds of public utility decreed by the Executive Power.
ARTICLE 20 - Any individual personally and lawfully entitled to a right thereto or direct interest thereon, shall be entitled to file an opposition against applied registrations or to apply for the cancellation of those already registered trademarks on the grounds provided for in articles 4 and 5 hereof.
ARTICLE 21 - The Industrial Property Office shall be entitled to oppose to or dismiss applied registrations or cancel a trademark registration on the grounds provided for in article 4 and 5 hereof.
ARTICLE 22 - The Industrial Property Office shall be entitled to oppose to or dismiss applied registrations violating the provisions of article 6 hereof, in defense of the consumers’ rights.
ARTICLE 23 - Those proprietors of already registered trademarks or trademarks whose registrations is being prosecuted shall have the right to file an opposition against applied registrations of trademarks similar or equal to the ones they own or request the cancellation of said registrations when they have been already carried out.
The opposition to the registrations shall be filed within the term of thirty days running as from the day following the publication date in the Industrial Property Gazette, created by article 80 hereof.
ARTICLE 24 - Notwithstanding the provisions of article 14 hereof, those proprietors of trademarks in use whose registration has not been prosecuted shall have the right to file an opposition to the applied registration of trademarks similar or equal to the ones they own within the term provided for in the previous article, provided the party who files the opposition on the grounds of previous use certifies that said use have been peaceful, public and continuous during a minimum term of one year.
When the opposition is filed by the proprietor of a trademark which had been registered but whose registration was not renewed in due time, use thereof shall be considered as duly proved by the time during which such trademark has been duly registered.
The party who files the opposition mentioned in the previous article shall apply for the registration of the corresponding trademark within a term of ten days as from the date of the filing of said opposition. Failure in filing said application within the mentioned term shall be considered substantial grant to dismiss the opposition by operation of law.
The fact of the term to file the opposition being due and the resolution granting the registration of a trademark being ratified and confirmed excludes the possibility of a further claim on the same grounds against said trademark.
ARTICLE 25 - In the event of the petition to cancel the registration of a trademark being filed on the grounds of the provisions of paragraphs 6 and 7 of article 5 hereof by the proprietor of a trademark whose registration was not prosecuted in the country, said registration is to be duly applied for within the term of ninety days as from the date when said action was brought. Failure in filing said application within the mentioned term shall be considered substantial grant to dismiss the petition to cancel the registration by operation of law.
ARTICLE 26 - The filing of an opposition to the registration of a trademark excludes the possibility of a further petition to cancel said registration on the same grounds.
ARTICLE 27 - The petition to cancel the registration of a trademark on the grounds of the provisions of article 4 hereof may be applied for at any time.
After the term of fifteen years as from the date when the registration of a trademark was duly granted, the right to file a petition to cancel said registration on the grounds of the provisions of article 5 hereof shall forfeit with the exception of those petitions filed on the grounds of “well-know usage” of the corresponding trademark when this trademark was registered through dishonest behavior. In the mentioned event, the petition to cancel the registration may be applied for at any time.
ARTICLE 28 - When the registration of a trademark has been applied for or obtained by the agent, representative, importer, dealer, licensee or franchisee of said trademark under his/her own name and without the authorization of the lawful proprietor, the latter shall be entitled to claim before the Industrial Property Office -in addition to the filing of the opposition or petition to cancel said registration- his/her right to be acknowledged as the legitimate applicant to or proprietor of said right and that the title to the application being prosecuted or the already granted registration be conveyed to him/her.
The right to file the above mentioned claim shall expire after the term of five years as from the date when the trademark registration was duly granted.
ARTICLE 29 - Those applications for the registration of trademarks shall be filed with the Industrial Property Office together with the vouchers required to these effects and the payment of the publications charge.
ARTICLE 30 - Priority in the registration of a trademark shall be granted by the date and time when the corresponding application is filed.
ARTICLE 31 - Once the application for the registration of a trademark is duly filed no modification to the trademark sign will be allowed. Any application for the modification of a trademark shall imply a new application for registration.
ARTICLE 32 - Once the application for the registration of a trademark is duly filed the number of goods and services sought to be protected shall not be increased, not even in the same class, although the object to be protected may be limited through the removal of classes, goods and services from said protection.
ARTICLE 33 - The petition to cancel the registration of a trademark on the grounds of the provisions of paragraphs 6 and 7 or article 5 hereof shall be filed together with the corresponding evidences. Said evidence shall consist in a suitable means which proves the corresponding contentions in a reasonable manner, subject to common sense and to the regulations hereof.
The party filing the opposition, legal remedy or petition to cancel a registration may be exempted from submitting the well-known usage evidence provided said party filing the opposition, legal remedy or petition to cancel a registration proves that the applicant or proprietor knew the existence of the trademark at the moment he/she filed the corresponding application.
ARTICLE 34 - The Industrial Property Office shall issue the corresponding resolutions granting or dismissing the applications for the registration of trademarks totally or partially, as the case may be, taking into account the classes said applications refer to.
ARTICLE 35 - Once the registration of a trademark is duly granted the Industrial Property Office shall issue the corresponding certificate of trademark registration.
ARTICLE 36 - Terms granted to the parties shall consist in strict time limits and shall not be extended except as otherwise provided in the corresponding regulations.
ARTICLE 37 - At the request of the interested party, the Industrial Property Office shall be entitled to issue a second certificate of trademark registration in the manner provided for by the Decree regulating this law.
ARTICLE 38 - Collective marks are those used to identify goods or services belonging to members of a specific group of individuals.
Associations of producers, industrialists, merchants, or service providers shall be entitled to apply for the registration of collective marks so as to differentiate in the market those goods or services belonging to their members from those belonging to individuals who are not members of said associations.
ARTICLE 39 - The application for the registration of a collective mark shall include the corresponding usage regulations with the identification of the association filing the application together with the persons authorized to use the mark, the requirements to become a member of the association, the conditions for the usage of the corresponding mark and the reasons why the usage of the mark may be prohibited to one of its members.
ARTICLE 40 - The proprietor of a collective mark shall communicate to the Industrial Property Office any and all modification to the corresponding usage regulations. Said modifications shall be published on the Industrial Property Gazette.
Any and all modifications to the usage regulations will be valid and in force as from the filing thereof before the Industrial Property Office.
ARTICLE 41 - Collective marks may be cancelled ex-officio or at the request of the interested party in the following cases:
When the collective mark is used by the proprietor against the provisions of the usage regulations.
When the collective mark is used only by the proprietor thereof or only by one of the authorized persons.
ARTICLE 42 - The title to a collective mark shall not be transferred to third parties and use thereof shall not be allowed to those persons who are not officially authorized by the association.
ARTICLE 43 - Collective marks are governed by all the provisions hereof unless otherwise provided in this Chapter.
ARTICLE 44 - Certification or Guarantee marks are the signs certifying common characteristics, particularly regarding quality, components, nature, methodology employed and any other appropriate data, at the proprietor discretion, of the goods or services elaborated or provided by persons duly authorized and controlled by said proprietor.
Ownership of certification or guarantee marks shall only be granted to official or semi-official entities, competent to carry out quality certifications in representation of the State and according to the State commitments, or to private institutions duly authorized by the mentioned competent official or semi-official entity.
ARTICLE 45 - Those names commonly used to state the origin of goods, as regulated herein, shall not be registered as guarantee marks. In any case, they shall be governed by the corresponding specific regulations.
ARTICLE 46 - The application for the registration of a certification or guarantee mark shall include the corresponding usage regulations which shall indicate the quality, components, nature and methodology employed and any other appropriate data concerning the goods and services elaborated, distributed or provided, at the proprietor discretion.
The usage regulations shall likewise establish the control measures whose implementation is mandatory for the proprietor of the certification or guarantee mark as well as the corresponding penalties system.
ARTICLE 47 - The usage regulations shall be elaborated by the official or semi-official entity or the private individual referred to in article 44 hereof within the scope of their competence and it shall be presented before the Industrial Property Office, in the manner provided for in article 46. The Industrial Property Office will verify if said usage regulations comply with the provisions this law and its corresponding regulations.
ARTICLE 48 - Default in the fulfillment of the usage regulation on the part of the users may be sanctioned by the proprietor with the cancellation of the authorization to use the mark or with other penalties established in the mentioned usage regulations.
ARTICLE 49 - The proprietor of the certification or guarantee mark shall notify the Industrial Property Office any and all modifications to the usage regulations. Said modifications shall be published in the Industrial Property Gazette created by article 80 hereof.
The modifications to the usage regulations shall be valid and in force as from the filing thereof with the Industrial Property Office.
ARTICLE 50 - The registration of a certification or guarantee mark shall be indefinitely valid and in force, and it shall be extinguished by cancellation, and in the event of termination or death of the proprietor thereof the provisions of paragraph 2 of article 54 hereof shall be complied with.
The registration may be cancelled at any time at the request of the proprietor thereof.
ARTICLE 51 - The usage of a certification or guarantee mark by any person whose good or service complies with the conditions established in the mark usage regulations shall require the authorization of the proprietor of said certification or guarantee mark.
ARTICLE 52 - The certification or guarantee mark shall not be used for goods or services produced, lent or traded by the mark proprietor.
ARTICLE 53 - The certification or guarantee mark is inalienable. Likewise, it shall not be the object of assessments, liens or seizures or any other security measure or writ of execution.
ARTICLE 54 - Upon termination or death of the proprietor of a certification or guarantee mark the same shall be hold unto the official or semi-official entity or the private individual referred to in article 44 hereof duly acknowledged as holding the competence of the terminated entity or deceased individual, pursuant to the legal provisions in force, and upon the corresponding notification to the Industrial Property Office.
In the event that the quality certification activity to be carried out by the State through the terminated entity or deceased individual is not assigned to another entity the registration of the certification or guarantee mark shall forfeit by operation of law.
ARTICLE 55 - The certification or guarantee mark whose registration is cancelled or whose use is stopped because of the termination or death of the proprietor thereof shall not be adopted, used or registered as trademark or as another distinctive commercial sign until the term of ten years as from the corresponding cancellation, termination or death of the proprietor thereof is elapsed, with the exception provided for in paragraph one of article 54.
ARTICLE 56 - Certification or guarantee marks are governed by all the provisions of this law unless otherwise provided in this Chapter.
Continue on to Chapter IX - RIGHTS AFFECTING TRADEMARKS; LICENSE, PLEDGE, SEIZURES AND PROHIBITION TO INNOVATE
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