Cancellation action for non-use

By Pittaluga Abogados

Pittaluga Abogados would like to inform you that in the month of October the Uruguayan Patent and Trademark Office issued the decree that regulates the law stipulating the mandatory use of trademarks in order to maintain the validity of their registration.

These resolutions establish that interested parties may file an action with the Uruguayan Patent and Trademark Office requesting the cancellation of a registered mark on the grounds of non-use, in the following cases: (a) when the mark has not been used by its owner, licensee, or an authorized person within the first five years following the granting of the registration; and (b) when the use of the mark has been interrupted for five consecutive years.

For the purposes of a cancellation action, the registered trademark complies with the obligation of use when any of the products and/or services it distinguishes are available in the national market, in the amount and in the manner that is customary for the products and/or services in question.

Since the law was considered to became effective on 1 January 2014, the cancellation action for non-use may not be deducted until five years after that date, i.e. until 1 January 2019.