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DERECHOS DE PROPIEDAD INTELECTUAL
NATIONAL LEGISLATION - URUGUAY
Law No. 17.011 - Trademarks
ARTICLE 57 - Let the Register of Trademark Licenses be hereby created. The Industrial Property Office shall be in charge of said Register.
ARTICLE 58 - To the effects of this law, a license is an agreement supplementary to the trademark registration granting the right to a total or partial use of already registered trademarks or trademarks whose registration is being prosecuted. Said right is granted for a strict time limit, and the corresponding use may be exclusive or non-exclusive.
If the agreement lacks the exclusive right clause it shall be construed as not granting exclusive rights to the licensee.
ARTICLE 59 - The license agreement shall be valid and in force against third parties upon registration thereof at the Industrial Property Office.
ARTICLE 60 - An excerpt with the substantial parts of the license agreement shall be published in the Industrial Property Gazette.
ARTICLE 61 - The licensee shall not be entitled to transfer his/her rights, neither totally nor partially, without express consent from the licensor.
ARTICLE 62 - Any modification made to the license or sub-license agreement shall be duly notified to the Industrial Property Office and it shall be governed by the provisions of articles 58, 59, 60 and 61 hereof.
ARTICLE 63 - Those franchise agreements including a trademark license shall be governed by the provisions of this Section, when deemed proper.
ARTICLE 64 - Let the competence regarding registration of pledges without displacement of trademark registers established in paragraph 2 of article 2 or law N° 8.292 dated September 24, 1928 and concordant, supplementary and modifying provisions, be transferred to the Industrial Property Office as from the enactment of this law
ARTICLE 65 - The Industrial Property Office shall keep a register of the seizures and prohibitions to innovate notified to the Judicial Power and affecting already registered trademarks or trademarks whose registration is being prosecuted.
ARTICLE 66 - The registration of a trademark expires:
Upon expiration of the term provided in article 18 hereof, unless renewed.
Upon written application thereof filed by the proprietor with the Industrial Property Office. In the event of a license agreement being registered, the proprietor of the licensed trademark shall prove delivery of clear notification to the licensee of his/her will to waive the registration before the corresponding waiver registration.
Upon declaration of nullity issued by the competent authority.
On the grounds provided for in article 18 hereof.
In the event of the State ceasing its participation in the corporations mentioned in paragraph 1 of article 4 hereof.
ARTICLE 67 - Trade names are considered industrial property to the effects hereof.
ARTICLE 68 - If a physical or legal person wants to develop, with commercial purposes, an activity already exploited by another person with the same name or with the same conventional appellation, said physical or legal person shall make a clear modification to the name or appellation for said name or appellation be notoriously different from the previously existing one.
ARTICLE 69 - The legal action of the proprietor of the exclusive right to the use of a trade name shall forfeit after the term of five years as from the day when the other party started the use of said trade name.
ARTICLE 70 - The assignment or selling of business involves the assignment or selling of the corresponding trademark unless otherwise provided, and the assignee is entitled to make use of the trademark, even if it is a trade name, as well as the grantor did, without any restriction apart from those expressly provided for in the corresponding Bill of Sale or Transfer Agreement.
ARTICLE 71 - The exclusive right to the use of a trade name as industrial property shall expire upon termination of the activity with commercial purposes distinguished with said trade name.
ARTICLE 72 - The registration of the trade name is not a requirement to exercise the rights granted hereof, unless said trade name is part of the trademark.
ARTICLE 73 - Indications of source and appellations of origin are deemed geographical indications.
ARTICLE 74 - The indication of source is the use of a geographical name for goods or services identifying the place where an specific good was extracted, produced or manufactured or an specific service was provided, considered as the source location.
Protection is granted to indications of source without any need of previous registration.
ARTICLE 75 - Appellation of origin is the geographical name of a country, city, region or location used to call a good or service whose qualities or characteristics are exclusively or essentially due to the geographical environment, including natural and human factors.
ARTICLE 76 - Let the Register of Appellations of Origin be hereby created at the Industrial Property Office.
ARTICLE 77 - The use of an indication of source is limited to those producers and service providers set in the corresponding place. Fulfillment of quality requirements is mandatory as far as appellations of origin are concerned.
ARTICLE 78 - Those geographical names constituting neither an indication of source nor an appellation of origin shall nevertheless be registered as trademarks provided they do not lead into error regarding the true place of origin.
ARTICLE 79 - The prohibition to use a geographical indication to identify wines or spirituous beverages does not apply to those that have using said geographical indication on a continuous basis during a minimum term of ten years as from April 15, 1994.
ARTICLE 80 - Let the Industrial Property Gazette be hereby created. The following issues shall be published therein:
The application for the registration of trademarks and usage regulations, when applicable, in the manner provided for in the regulations hereof.
All resolutions issued regarding trademarks.
Excerpts from license and sub-license agreements and modifications thereof, according to the provisions of articles 58, 59, 60, 62 hereof.
Those notifications that should have been delivered personally but were not duly complied with due to a cause imputable to the person in charge of carrying out the corresponding steps, with the exception provided for in article 317 of the Constitution of the Republic.
Services of process
Registrations at the Register of Industrial Property Attorneys
All other actions established in the regulations or in the events thus provided by the Industrial Property Office.
ARTICLE 81 - Those wanting to profit or cause damage by manufacturing, falsifying, adulterating or imitating someone else’s registered trademark will be punished with six months in prison to three years under penitentiary arrest.
ARTICLE 82 - Those refilling with spurious goods containers with someone else’s trademark will be punished with six months in prison to three years under penitentiary arrest
ARTICLE 83 - Those knowingly manufacturing, storing, delivering or trading goods distinguished with the trademarks mentioned in the previous articles will be punished with three months in prison to six years under penitentiary arrest.
ARTICLE 84 - Those trademarks mentioned in the previous articles as well as those tools used to the execution thereof shall be destroyed or made unusable.
Those goods infringing the law that have been confiscated shall be seized and destroyed unless, because of their nature, they can be assigned to state or private charity institutions.
ARTICLE 85 - The provisions of this Chapter shall apply to those making use of the appellations of origin provided for in article 75 hereof , without being entitled to said use.
ARTICLE 86 - Those offences provided for herein shall be liable to prosecution, at the request of the interested party, according to the provisions of articles 11 and following ones of the Code of Penal Proceedings.
ARTICLE 87 - Those persons damaged by the infringement of the provisions of articles 81 to 85 hereof shall be entitled to file the corresponding action for damages against the authors and co-authors of the penalized activities.
ARTICLE 88 - Those proprietors of registered trademarks shall be entitled to request to the Judicial Power the prohibition to use a non-registered trademark similar or equal to the one they own.
ARTICLE 89 - After four years of the offence having been committed once or twice or after one year of it coming to the knowledge of the proprietor of the trademark, neither the penal nor the civil action can be filed.
The acts that interrupt the term for prescription are those established by the non-specific legal provisions.
ARTICLE 90 - The following persons are entitled to take the steps concerning those proceedings provided herein:
Interested parties by themselves, with or without having granted representation therefor.
The industrial property attorneys registered in the corresponding register, with duly certified direct authority.
Agents authorized by the required power of attorney
ARTICLE 91 - Industrial property attorneys shall have the same obligations and responsibilities than agents according to the provisions of the Second Part of Book 4th of Title VIII of the Civil Code.
ARTICLE 92 - The Industrial Property Office shall keep the Register of Industrial Property Attorneys created by Decree N° 685/968 dated November 14, 1968.
ARTICLE 93 - To be registered as industrial property attorneys, interested parties shall comply with the following requirements, in addition to those ones established in the regulations hereof:
Full legal age.
Duly constituted legal domicile.
Duly certified rightness and good behavior.
Duly approved higher secondary education.
Approval of the capability test, although lawyers are exempted from this requirement.
Interested parties shall be issued a certificate of registration on demand and at his/her own cost.
ARTICLE 94 - The capability test required by paragraph 5 of the previous article shall be taken by a Tribunal made up by three members appointed by the Industrial Property Office Director.
ARTICLE 95 - Let those registrations granted to the industrial property attorneys before the enactment of this law be hereby ratified.
ARTICLE 96 - Advertising or offering of services by industrial property attorneys or their employees within the premises of the Industrial Property Office shall be deemed serious offences.
ARTICLE 97 - Industrial Property Attorneys shall be responsible for their employees acts, according to the provisions of paragraph 1 of article 1324 of the Civil Code.
ARTICLE 98 - Industrial Property Attorneys shall be supervised by the Industrial Property Office Director who will be entitled to apply the following sanctions:
Fines, which will vary from 10 (ten) to 100 (one hundred) UR’s according to the seriousness of the offence.
Suspension for a maximum term of two years
Removal from the Industrial Property Attorneys Register
Sanctions shall be applied taking into account the corresponding regulations.
ARTICLE 99 - The Industrial Property Office shall collect fees for the following proceedings:
ARTICLE 100 - Those proprietors of trademarks in use but whose registration has not been prosecuted before the Industrial Property Office and those proprietors of registered trademark whose registration has not been renewed according to the provisions of paragraph 2 of article 11 of Law N° 9.956 dated October 4, 1949 shall have a grace period of two years as from the enactment of this law to make use of the trademark proceedings provided herein, notwithstanding the provisions of article 24 hereof.
The party who files the mentioned action shall have to apply for the registration of the corresponding trademark within the term of ten days as from the filing of said action. Failure in filing said application shall be considered substantial grant to dismiss the opposition by operation of law.
ARTICLE 101 - Publications provided for in Law N° 10.089 dated December 12, 1941 and in Decree-Law N° 14.549, dated July 29, 1976 and regulations thereof shall be made in the Industrial Property Gazette created by this law.
All publications provided for herein shall be made only once.
ARTICLE 102 - The Industrial Property Office belonging to the Minister of Industry, Energy and Mining, is the competent authority in all matters provided for herein.
ARTICLE 103 - All registers provided for herein are public registers.
ARTICLE 104 - Those proceedings established herein constitute a particular system because of their specialty characteristics and as such they are regulated by the provisions hereof and corresponding regulations; only on a supplementary basis they would be governed by those general provisions regulating the administrative proceedings.
ARTICLE 105 - The Executive Power shall decree the regulations of this law within the term of one hundred and twenty days as from the day following the publication hereof in the Official Gazette.
ARTICLE 106 - Let Law N° 9.956 dated October 4, 1940, Law N° 10.089 dated December 12, 1941 where relevant and article 226 of Law N° 16.320 dated November 1st 1992 be derogated as from the entry into force of this Law.
ARTICLE 107 - The Executive Power shall authorize the required resources for the implementation hereof.
ARTICLE 108 - Those incomes generated through the execution of this Law shall be applied to the improvement of the service.
Sala de Sesiones de la Cámara
JAIME MARIO TROBO, Presidente
MINISTERIO DE INDUSTRIA,
ENERGIA Y MINERIA
Montevideo, 25 de setiembre de 1998.
Cúmplase, acúsese, recibo,
SANGUINETTI - JULIO HERRERA
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