Law on compulsory use of trademarks: “cancellation for lack of use”
Uruguayan Parliament has amended trademark legislation regarding the mandatory use of trademarks.
As of January 1st 2014, the owners of trademarks in Uruguay will have to use their trademarks “publicly and effectively”. Those who fail to do so, may lose said trademarks. Recent Law N° 19.149 modifies Law 17.011 by establishing the mandatory use of a brand and the right to take action for non-use cancellation.
The aim of the use obligation is to avoid speculative registration of marks (for instance, for sale to their legitimate owners). In case of trademarks that have been registered in several classes, accreditation of use in only one class will be enough to keep the trademark.
Only those with a “direct, personal and legitimate interest” will be able to apply for cancellation, in cases where use of a trademark has been interrupted for more than five consecutive years during validity of a registration. No possible ex officio cancellations are provided by the National Industrial Property Office (DNPI), and use will not be required for trademark renewal. Once the cancellation has been requested from the DNPI, the trademark holder will have to prove use. Therefore it is advisable to take preventive measures to deal with a possible cancellation action.
Law on compulsory use of trademarks will enter into force as of January 1st 2014, but experts expect future regulation to clarify the characteristics of the procedure as well as the conditions and forms of trademark use required by law.
Source: Uruguayan Law No. 19.149