Uruguay – Latam Guideline

WIPO-administered Treaties:

Contracting Party of the Madrid System: NO.

Trade Mark Law in force: 

Law 17.011 dated 25 September 1998

(Regulatory Decree 34/99 of 3 February 1999) 

Classification: 

Nice classification, 11th edition. 

Multiclass Applications: 

YES. 

Registrable trademarks: 

Words, names, acronyms, letters, numbers, devices, combinations of colors, three-dimensional forms, the three-dimensional form of a good or its packaging, sound marks and any sign capable of distinguishing goods or services. 

Formal filing requirements: 

• Power of Attorney merely signed (no legalization and no notarization required) within 30 days from the application date. Unextendable.
• Certified copy of the priority application and its translation into Spanish within 90 days from the application date. Original copy required. Spanish translation must be signed by a local sworn translator.  

Examination: 

Absolute grounds for refusal: YES.

Relative grounds for refusal: YES. 

Opposition period: 

30 days from publication date. 

Average time from filing to grant: 

Approximately 20-24 months, unless any obstacles were raised. 

Term of protection: 

10 years from the date of registration. 

Use requirements: 

YES. As of 1 January 2014 cancellation can be requested if a trade mark has not been used for 5 years, counting from the registration date. Cancellation actions due non-use are possible as of 1 January 2019. Partial cancellation is not possible. 

Renewal terms: 

6 months prior to renewal date.

Grace period: 6 months. 

WIPO-administered Treaties: 

Contracting Party of the Paris Convention: YES

Contracting Party of the Patent Cooperation Treaty (PCT): NO. 

Patent Law in force: 

Patent Law 17.164/2000 

Types of protection available: 

Patent of Invention; Utility Model 

Formal filing requirements: 

• Power of Attorney merely signed (no legalization required) within 30 days from filing. Scan copy is available.
• Assignment document from the inventors merely signed (no legalization required) within a 180 working-day term from filing. Not required if the applicant of the priority case is the same.
• Certified copy of priority application within 180 days from filing. The translation of the priority application must be signed by a sworn registered local translator. 
• Sequence listings must be filed in WIPO Standard ST.26 format.

Filing of the patent application in a foreign language: 

1. Late submission of the Spanish translation is acceptable within a 30-day term provided that at least, Spanish translation of the claims and abstract and the first pages of the specification are submitted when filing the application.

Substantive examination must be requested by the applicant: 

YES, within 120 days from publication. 

Search report must be requested by the applicant: 

NO 

Observations by third parties: 

YES, within 60 working days from publication. 

Opposition: 

YES, within 60 working days from publication. 

Average time from filing to grant: 

8 years 

Term of protection for patents: 

20 years from filing date. 

Term of protection for utility models: 

10 years from filing date and could be renewed for 5 more years the same for Industrial Designs 

Differences between utility model and patent: 

• UM suitable for utensils, instruments, tools, apparatus, devices, or any parts or improvements thereof, but not to chemical products, methods or uses;
• Lower threshold for inventive step. 

Maintenance: 

Yearly after grant. 

Marking of the product with the application/ patent number: 

NOT mandatory. 

Compulsory licensing: 

YES 

WIPO-administered Treaties:

Contracting Party of The Hague System: NO. 

Applicable Law: 

Law No. 17,164. TRIPS 

Grace period for filing applications, from disclosure: 

6 months. 

Multiple design applications -one application for different embodiments-available: 

YES. 

Formal filing requirements: 

Power of Attorney.30 days from filing. Merely signed.  

Priority document when applicable, translated by local sworn translator. 180 days from filing.  

Drawings displaying all views of the design.

Description not required.

Locarno classification: 

YES 

Deferred publication: 

YES. 12 months. 

Registration Proceeding Outline: 

Filing. Publication request within a 12 months term since the priority date, upon which the application is effectively published within 1-2 months. Payment of examination fees. Decision. 

Opposition: 

YES. Oppositions can be filed within 60 days from the publication. Nullity actions are also possible, within 5 years from granting or within 3 years from exploitation, whichever term expires first. 

Average time from filing to grant: 

12-18 months. 

Term of Protection and Maintenance: 

10 years, extendable for 5 additional years (payment of the renewal fee has to be made in the tenth year, requesting the extension for the additional 5 years). Annuities have to be attended in order to preserve the rights. 

Does it accept an administrative request for surveillance?

YES

Intellectual property rights protected through an administrative request for surveillance

Trademarks
Copyrights

Requirement to file for an application of an administrative request for surveillance

List and Registration of Trademarks
Certificate of Registrationc
PoA

Procedure (special aspects)

Although there is an Administrative surveillance procedure, once a counterfeit product is found, there is no simplified administrative procedure for the destruction of the goods.
In order for the counterfeit merchandise to be seized, the trademark holder must file a criminal complaint, and the criminal proceeding will begin. The trademark owner acts as a victim assisting the Prosecutor, but is not a party to the proceedings. To order the destruction of the merchandise, the Prosecutor will order a technical expertise, and once the quality is confirmed, he will order its destruction or donation.

If the offender is identified, the Prosecutor may formalize the investigation and charge him and thus begin the oral trial for his conviction or, as in the case of crimes against IP, he may propose an alternative route: reparatory agreement (victim-offender) or abbreviated process.

Territory: Uruguay

Data Protection Regulations: Law 18.331 on the protection of personal data and its regulatory decrees, numbers 414/009 and 64/020, as well as Articles 37 to 40 of Law 19670.

Regulatory purpose: The purpose of the various regulations is the protection of personal data, considered a fundamental human right by the Constitution of the Oriental Republic of Uruguay (Art. 72), in any medium that makes it susceptible to processing, as well as any form of subsequent use of such data.

Parties:

• Data controller: Yes – Article 4 of Law 18.331 paragraph K establishes the main requirements: Responsible for the database or processing: natural or legal person, public or private, owner of the database or who decides on the purpose, content and use of the processing.
• Data Processor: Yes – Article 4 of Law 18.331 paragraph H establishes the main requirements: Processor: a natural or legal person, public or private, who alone or jointly with others processes personal data on behalf of the controller of the database or of the processing.
• Data Protection Officer: Yes – Provided for in Article 40 of Law 19.670.
• Supervisory Authority: Yes – Agency for the Development of Government e-Government, e-Government and the Information and Knowledge Society (AGESIC)
• Other: Article 2 of Law 18.331 states that the right to the protection of personal data shall apply by extension to legal persons, as appropriate.

Principles: 

Article 5 of Law 18.331 establishes that the actions of those responsible for databases, both public and private, and, in general, of all those who act in relation to the personal data of third parties, must comply with the following general principles:

• Legality
• Truthfulness
• Purpose
• Prior informed consent
• Data security
• Confidentiality
• Responsibility

These general principles shall also serve as an interpretative criterion for resolving any questions that may arise in the application of the relevant provisions.

Obligations:

• Register of Processing Activities: Yes.
• Impact Assessments: Yes.
• Risk analysis: Yes.
• Technical and organisational security measures: Yes.
• Duty to inform: Yes.
• Data Protection Officer: Yes. Article 40 of Law 19.670 establishes that public, state or non-state entities, private entities wholly or partially state-owned, as well as private entities that process sensitive data as their main business and those that process large volumes of data must designate a data protection officer.
• Other obligations: (article 11 of law 18.331)
  Principle of reserve: Those natural or legal persons who legitimately obtain information from a database that provides them with processing are obliged to use it in a reserved manner and exclusively for the usual operations of their business or activity, and any dissemination of the same to third parties is prohibited. Persons who, by virtue of their employment or other relationship with the person responsible for a database, have access to or intervene in any phase of the processing of personal data, are obliged to maintain strict professional secrecy over such data (Article 302 of the Criminal Code), when they have been collected from sources that are not accessible to the public. This shall not apply in cases of an order from the competent judicial authorities, in accordance with the regulations in force in this area, or if the consent of the data subject is obtained. This obligation shall subsist even after the relationship with the database controller has ended.

Data subjects’ rights:

• Right of Access: Yes.
• Right of rectification: Yes.
• Right of Suppression: Yes.
• Right to limitation: No. It is not specifically established, but it could be classified within the right of rectification, updating, inclusion or suppression established in Article 15 of Law 18.331.
• Right to portability: Yes.
• Right to object: No. Although it is not expressly regulated, the owner of the personal data must give his or her consent for it to be used, and may request its deletion.
• Automated individual decisions, including profiling: Yes.

International transfers:

The transfer of personal data of any kind to countries or international organisations that do not provide adequate levels of protection in accordance with the standards of international or regional law on the matter is prohibited.

The prohibition shall not apply in the case of:

• International judicial cooperation, in accordance with the respective international instrument, whether it be a Treaty or a Convention, taking into account the circumstances of the case.
• Exchange of medical data, when the treatment of the person concerned so requires for reasons of public health or hygiene.
• Banking or stock exchange transfers, in relation to the respective transactions and in accordance with the applicable legislation.
• Agreements within the framework of international treaties to which the Oriental Republic of Uruguay is a party.
• International cooperation between intelligence agencies for the fight against organised crime, terrorism and drug trafficking.

The international transfer of data shall also be possible in the following cases:

• The data subject has unambiguously consented to the intended transfer.
• The transfer is necessary for the performance of a contract between the data subject and the controller or for the performance of pre-contractual measures taken at the request of the data subject.
• The transfer is necessary for the conclusion or performance of a contract concluded or to be concluded in the interest of the data subject between the controller and a third party.
• The transfer is necessary or legally required for the safeguarding of an important public interest or for the recognition, exercise or defence of a right in legal proceedings.
• The transfer is necessary for the safeguarding of the vital interest of the data subject.
• The transfer takes place from a register which, by virtue of legal or regulatory provisions, is designed to provide information to the public and is open to consultation by the general public or by any person who can demonstrate a legitimate interest, provided that the conditions established by law for consultation are met in each particular case.

Without prejudice to the first subparagraph of this Article, the Personal Data Protection Regulatory and Control Unit may authorise a transfer or a set of transfers of personal data to a third country which does not ensure an adequate level of protection, where the controller provides sufficient safeguards with respect to the protection of the privacy, fundamental rights and freedoms of individuals, as well as with respect to the exercise of the respective rights. Such safeguards may derive from appropriate contractual clauses.

Sanctioning regime:

The supervisory body may apply the following sanctions to those responsible for databases, those in charge of processing personal data and other subjects covered by the legal regime, in the event that the rules of this law are violated, which shall be graduated according to the seriousness, repetition or recidivism of the infringement committed:

• Observation
• Warning
• Fine of up to 500,000 UI (five hundred thousand indexed units). 4) Suspension of the base of the licence.
• Suspension of the respective database for a period of five days.
• Closure of the respective database. To this end, the closure of databases that are found to infringe or transgress the present law may be promoted before the competent jurisdictional bodies.

Certification or accreditation of compliance for companies: No.