Please be informed that as of January 1st, 2019 it will be possible to file non-use cancellation actions in Uruguay, pursuant to the provisions set out in section 6 of Decree No. 277/2014, which establishes that the use of the trademark in Uruguay is mandatory.
The non-use cancellation action may be filed by the holder of a personal legitimate and direct interest, when the trademark has not been used by its owner, licensee or other authorized party within five years from its granting date or respective renewal, or when the use was interrupted for more than five years. Law No. 19.149 does not foresee partial cancellation actions. Consequently, the use of the same for any of the products or services within the description of goods of a trademark registration will prevent cancellation.
Additionally, cancellation for non-use will not take place when such lack of use was due to force majeure. The use must be public. Given that the date of entry into force of the cancellation action on the grounds of lack of use is approaching, holders of trademarks granted prior to 1/1/2014, must analyze if they are subject to receive a cancellation action, and thus foresee strategies to prevent it.
In the event that you intended to file a trademark application in Uruguay in the past and it was not possible due to the existence of an identical or similar record, you shall also be entitled to file a cancellation action against said record, provided it has not been used in last 5 years as of January 2019.
Either to defend your trademark portfolio, or to file an action against a third party owner of a trademark for said cause, Clarke, Modet & Cº is at your disposal to provide advice and act on your behalf.
For more information, please contact Mr. Martin Hermida at (Mhermida@clarkemodet.com.uy)