Legal Alert – Uruguay
Modifications in the practice of the Uruguayan Trademark Office regarding Non-Traditional Trademarks and International Classification of Goods and Services.
Recently the National Directorate of Industrial Property (“DNPI”) issued Resolutions No. 17/2023 and 18/2023, dated December 7 and 11, 2023 respectively, approving relevant changes in the practice of the DNPI in relation to the International Classification of Goods and Services and the requirements for the filing of Non-Traditional Trademarks.
1) Guidelines for registration of Non-Traditional Trademarks (position, pattern, movement and multimedia marks)
DNPI Resolution No. 18/2023 establishes, for the first time in the Uruguayan trademark system, requirements for the filing of applications claiming protection of position, pattern, motion and multimedia marks.
Although the Trademark Law No. 17.011 establishes a broad and non-exhaustive concept of what constitutes a trademark, which includes: “any sign capable of distinguishing the goods or services of a natural or legal person from those of another”, to date there was no specific regulation regarding position, pattern, motion or multimedia trademarks, nor guidelines from the DNPI for the filing of applications for registration of these types of signs.
Notwithstanding the foregoing, in practice and even in the absence of specific guidelines, trademark owners were already filinge before the DNPI applications for registration that in substance claimed protection over these types of trademarks.
The Resolution of the DNPI recognizes the growing importance of these types of signs and the consequent need to provide legal certainty on their correct identification and requirements for their registration, and establishes specific guidelines for each type of trademark sign.
These guidelines will enter into force as from March 1, 2024.
Position Marks
A position mark is defined as “a mark characterized by the particular location that the sign occupies in a given product”.
The following are established as requirements for filing position trademarks:
i. Graphic representation of the sign, indicating the external silhouette in the form of a dotted line and the element to be protected by means of solid lines; and
ii. Indication in the “Remarks” of the application that it is a position mark.
Pattern marks
A pattern mark is defined as: “one that is composed of a set of elements that are repeated sequentially”.
The following are established as requirements for filing pattern trademarks:
i. Graphic representation of the sign, which may consist of an example of the pattern in abstract, that is, accompanying a box with the application of the pattern or, at the applicant’s discretion, applied on a specific surface. In the latter case, the application surface must be indicated with dotted lines and the pattern in solid lines; and
ii. Indication in the “Remarks” of the application that it is a pattern mark.
Motion Marks
A pattern mark is defined as: “a mark that expresses a movement or exhibits a change of position of the constituent elements of the sign”.
The following are established as requirements for filing motion trademarks:
i. Graphic representation of the sign, which must be constituted in a sequence of at least two frames, expressing the characteristic movement of the sign. This will be included in the publication of the application in the Industrial Property Bulletin;
ii. Indication in the “Observations” of the application that it is a movement mark; and
iii. After the filing of the application, the applicant must accompany a video file of the movement of the mark in question, which must be sent by email to the DNPI. Said video must be submitted in MP4 format and with a length of no more than 30 seconds. Said video will be included in the “Multimedia and Motion Trademark Repository” that will be created in the DNPI web page, for downloading and consultation of the interested parties.
Multimedia Trademarks
A multimedia mark is defined as: “a mark that is composed of or includes combinations of image and sound”.
The following are established as requirements for filing multimedia trademarks:
i. Graphic representation of the sign, which must be constituted in a sequence of at least two pictures, representative of the sign. This will be what will be included in the publication of the application in the Industrial Property Bulletin;
ii. Indication in the “Observations” of the application that it is a multimedia mark; and
iii. After filing the application, the applicant must attach a video file of the movement of the mark in question, which must be sent by email to the DNPI. Said video must be submitted in MP4 format and with a length of no more than 30 seconds. Such video will be included in the “Multimedia and Motion Trademark Repository” that will be created in the DNPI website, for downloading and consultation by interested parties.
Finally, it should be noted that, in all cases, at the time of issuance of the Registration Resolution, the DNPI will state the specific type of mark involved (position, pattern, movement or multimedia), as well as in the IPAS system.
It is important to bear in mind that, from the substantive point of view, the general requirements set forth in Trademark Law No. 17.011 and its Regulatory Decree will continue to apply to the examination and registration of these marks.
2) Adoption of Version 2024 of the Twelfth Edition of the International Nice Classification of Goods and Services
DNPI Resolution No. 17/2023 establishes the applicability for all trademark applications and renewals filed as from January 1, 2024, of the Twelfth Edition of the International Nice Classification of Goods and Services (NCL-12-2024) “Nice Classification”, approved by the WIPO Committee of Experts, which comes into force as from January 1, 2024.
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FISCHER Abogados Intellectual Property Team of would be pleased to provide any clarification on this information that you may require.