Possibility of filing cancellation actions due to lack of use in UruguayPosted on 26/11/2018 by balder
Following our previous communication regarding the possibility of filing cancellation actions due to lack of use of trademarks in Uruguay as from January 1st, 2019, we inform you the following:
- This option will be possible according to article 6 of Decree No. 277/2014, which established the mandatory use of trademarks in Uruguay.
- Legitimation to file cancellation actions: holder of a legitimate, personal and direct interest.
- Which trademarks can be object of cancellation actions? the ones that have not been used by its owner, licensee or other authorized individual within five consecutive years and following the date of its grant or the date of authorization of their respective renewals; or when said use has been interrupted for more than five consecutive years.
- Burden of proof: the burden of proof would be of the owner of the mark.
- Partial cancellation of trademarks is not possible, so the use of any of the products or services protected by the registration will suffice to demonstrate use in the whole class.
- Cancellation due to non-use is not applicable if the owner of the registration can demonstrate that there were reasons of force majeure that justify said lack of use.
- Attention: holders of trademarks granted prior to 01/01/2014, should analyze if their trademarks could be subject to cancellation due to lack of use and analyze strategies to prevent it.
- If you have tried to register a trademark in Uruguay without success due to the existence of priorities, we can study the records that have prevented said registration, in order to know if they are feasible to be canceled due to lack of use.