The CAL substantially amended the legal framework governing the Uruguayan contentious-administrative justice and the appeal and nullity declaration of administrative acts.\u00a0<\/span><\/p>\n Among many others, <\/span>the CAL amended the existing rules governing the appeal system of decisions issued by the Uruguayan Patent and Trademark Office (Direcci\u00f3n Nacional de la Propiedad Industrial \u2013 hereinafter \u201cUruguayan PTO”) and the process for the declaration of nullity of its resolutions.\u00a0\u00a0<\/b><\/p>\n It is important for rightsholders to be aware of the main changes to the appeal and nullity system introduced by the CAL and how the same impact the appeal of resolutions issued by the Uruguayan PTO.\u00a0<\/span><\/p>\n By way of general introduction, the Uruguayan legal system establishes an institutional separation between Civil Justice and Contentious Administrative Justice.\u00a0<\/span><\/p>\n On the one hand, the Constitution establishes that <\/span>civil justice is the responsibility of the Judiciary Power<\/b>, an organic system presided over by the Supreme Court of Justice and which establishes a judicial system with different orders: Courts of First Instance, Courts of Appeals and the Supreme Court of Justice (in the case of appeals for cassation of sentences). The Judiciary has jurisdiction to hear civil lawsuits for infringement of trademarks, patents, copyrights and other intellectual property rights.\u00a0<\/span><\/p>\n On the other hand, the <\/span>Contentious Administrative Justice is independent of the three branches of the State (Executive, Legislative and Judicial), and is headed by the High Administrative Court<\/b> (hereinafter “HAC”) and the lower bodies that are created by law within the contentious administrative jurisdiction.\u00a0<\/span><\/p>\n The Contentious Administrative Justice has jurisdiction to declare the nullity of the administrative acts issued by the Uruguayan PTO, once the Uruguayan PTO and Ministry of Industry, Energy and Minig have issued and express or fictitious decision over the administrative appeals.\u00a0<\/span><\/p>\n It is possible to request the First Instance Administrative Annulment Courts to annul the resolutions issued by the Uruguayan PTO through the filing of an Appeal of Last Resort Claim against the State, Ministry of Industry, Energy and Mining (hereinafter “MIEM”), as head of the Uruguayan PTO.\u00a0<\/span><\/p>\n The annulment proceedings involve the following stages:\u00a0<\/span><\/p>\n – Filing of Claim by the aggrieved party<\/span><\/p>\n – Filing of Brief of Response by the State (MIEM)<\/span><\/p>\n – Granting of an Evidence Term<\/span><\/p>\n – Closing Argument Stage<\/span><\/p>\n – Legal Opinion by the State Attorney in Administrative Litigation<\/span><\/p>\n – Final Ruling.\u00a0<\/span><\/p>\n Prior to filing the Appeal of Last Resort, the plaintiff must have previously exhausted the administrative appeal stage by obtaining a decision by the Uruguayan PTO and the MIEM on the administrative appeals, either fictitiously or expressly.\u00a0\u00a0<\/span><\/p>\n While the CAL maintains the same procedural structure for Appeals of Last Resort, it introduces important modifications that should be taken into account:\u00a0<\/span><\/p>\n The decisions of the Uruguayan PTO are challenged through the joint and subsidiary filing of administrative appeals (revocation and hierarchical appeals) before the Uruguayan PTO and the Executive Branch respectively (which delegates the resolution of the hierarchical appeal to the MIEM). The CAL has extended <\/span>the term for filing administrative appeals to 10 working days<\/b> (unlike the previous regime that established a period of 10 calendar days).\u00a0<\/span><\/b><\/b><\/p>\n The CAL extends the period for filing an Appeal of Last Resort<\/span> from 60 to 90 days<\/b>, which is counted as from the date of the express or fictitious rejection by the Uruguayan PTO and the MIEM of the administrative appeals filed.\u00a0<\/span><\/b><\/b><\/p>\n The CAL establishes that the notification of administrative acts \u2013 whether personal notification or through publication in the Official Gazette \u2013 must include the full text of the act, identify the acting body and also add the possibility of filing the corresponding administrative appeals to exhaust the administrative channels and the deadline for doing so.<\/span><\/p>\n Likewise, the CAL provides that <\/span>informal knowledge of the administrative act does not replace personal notification or publication in the Official Gazette as appropriate<\/b> and, therefore, does not determine the beginning of the period for appeal.<\/span><\/p>\n Therefore, it is understood that the publication of the notice of the granting or rejection of a trademark or patent by the Uruguayan PTO in the Industrial Property Bulletin does not commences the term to file administrative appeals.\u00a0<\/span><\/p>\n In the event that the legal deadline available to the Uruguayan PTO and the MIEM to resolve petitions and administrative appeals have elapsed (150 days in the case of petitions filed with the Uruguayan PTO and 200 days in the case of administrative appeals filed before the Uruguayan PTO and the MIEM) and there has not been an express resolution on the petition\/appeals, the CAL provides for the possibility of requesting to expedite the issuance of the resolution.\u00a0<\/span><\/p>\n In the event that 30 days have elapsed from the day following the submission of the request for expedite resolution and there is no express resolution, it will be considered that there is a ratification of the fictitious rejection of the petition\/appeal.\u00a0\u00a0<\/b><\/p>\n In case of administrative appeals, said ratification of the fictitious rejection of the petition\/appeals reopens the term to file an Appeal of Last Resort<\/b>, provided that no more than 24 months as of the date on which the initial appeals were filed have passed. Please note that the CAL establishes that the Appeal of Last Resort must be filed within 24 months as from the filing date of the administrative appeals, after which the party will have lost all rights to appeal.\u00a0<\/span><\/p>\n As one of its main innovations, the CAL creates two courts of first instance \u2013 First Instance Administrative Annulment Courts (hereinafter, “FIAAC”) \u2013 within the Contentious Administrative Justice system and provides for the possibility of establishing in the future a Court of Appeals to act in the second instance (not yet created). Until a Court of Appeal is established, the HAC will operate as a court of second instance and will have jurisdiction to hear appeals.\u00a0<\/span><\/b><\/b><\/p>\n The CAL establishes that the First Instance Administrative Annulment Court have jurisdiction in the case of definitive administrative acts that have inter-partes effects.\u00a0<\/span><\/p>\n By virtue of the above, applications for the nullity of resolutions (administrative acts with inter-partes effects) of the Uruguayan PTO that deny or reject trademark or patent registrations<\/span> must now be filed with the FIAAC <\/b>and not directly with the HAC (as was the case under the previous legal framework).\u00a0<\/span><\/p>\n As we have already mentioned, in the new legal framework \u2013 until an appellate court is established \u2013 the HAC will act as a court of appeals and will be the one to hear appeals filed against the decisions of the first instance of the FIAAC.\u00a0<\/span><\/p>\n This is an extremely relevant change, since previously the Appeal of Last Resort was a single instance proceeding before HAC and did not allow the possibility of filing appeals. <\/span>Now the CAL provides for the possibility of two instances in the Appeal of Last Resort proceedings to annul resolutions issued by the Uruguayan PTO.\u00a0<\/b><\/p>\n Likewise, the CAL establishes some cases in which the FIAAC have a single-instance jurisdiction (i.e., the possibility of appeal is not foreseen), one of them being the Appeal of Last Resorts filed against administrative acts in matters whose amount does not exceed 70 Readjustable Units (approx. USD 2500), for which determination will be based on the amount expressed by the plaintiff in the Appeal of Last Resort Claim.\u00a0<\/span><\/p>\n Therefore, for Appeal of Last Resorts filed against Uruguayan PTO decisions, whose amount does not exceed USD 2500, the annulment process could be of single instance before the FIAAC, without the possibility of appeal to the HAC.\u00a0<\/span><\/p>\n Finally, it should be noted that according to the forum rules set forth by the CAL, the HAC <\/span>has jurisdiction in a single instance to hear nullity claims that are filed against administrative acts with general effects.\u00a0<\/b><\/p>\n Therefore, in the case of decisions with general effects issued by the Uruguayan PTO \u2013 for example, regulatory decrees or other regulations with general application \u2013 the Appeal of Last Resort must be filed directly to the HAC.\u00a0<\/span><\/p>\n Another change introduced by the CAL is the possibility of \u2013 prior to the filing of the Appeal of Last Resort\u2013 initiating preliminary processes, in order to anticipate the processing of evidence, obtain elements or information necessary to initiate the lawsuit, or adopt precautionary or anticipatory measures.\u00a0<\/span><\/p>\n In order to adopt these measures, the corresponding appeals must have been filed against the challenged resolution and they can be initiated even if the administrative appeals are still pending resolution.\u00a0<\/span><\/p>\n The filing of precautionary measures requires the filing of a bond or counter-measure, in the cases and in the manner determined by the court.\u00a0<\/span><\/p>\n It is important to note that CAL provides the possibility of requesting the suspension of the execution of the administrative act as a specific precautionary measure and, for this measure, the claimant it is expressly exempted from the requirement of posting a bond or other counter measure.\u00a0<\/span><\/p>\n In another innovation of the CAL, the new legal frameworks allows for persons or entities to participate in the Appeal of Last Resorts as <\/span>Third-Parties, either siding with both the plaintiff and the defendant (in the case Uruguayan PTO resolutions, the defendant is the MIEM).\u00a0\u00a0<\/b><\/p>\n In order to appears as Third-Party siding with the plaintiff, in the case of\u00a0 Appeal of Last Resort against a PTO resolution, the third-party must meet the requirements to file an Administrative Appeals, that is, be the holder of a direct, personal and legitimate interest, have exhausted the administrative proceedings through the filing of administrative appeals, and being within the legal term to file an Appeal of Last Resort.\u00a0<\/span><\/p>\n However, in the case of challenging administrative acts with general effects (for example, decrees or regulations) it is not necessary for the third party to also comply with the requirements to file an Administrative Appeal to appear as a Third-Party siding with the plaintiff.\u00a0<\/span><\/p>\n Likewise, the CAL exhaustively regulates the possibility of third parties intervening with the defendant.\u00a0<\/span><\/p>\n It should be noted that <\/span>the CAL considers Third-Parties siding with the defendant as independent litigators<\/b>, which means that they do not depend on the defendant to perform procedural acts such as filing appeals against the decisions and the final judgment that is issued.\u00a0<\/span><\/p>\n The CAL dedicates several articles to regulate the effects of the final ruling of the Appeal of Last Resort proceedings.\u00a0<\/span><\/p>\n The ruling can only confirm the validity of the resolution (thus rejecting the claim), annul it or confirm it but reserve the possibility for the plaintiff to sue for the damages that the resolution may have caused him before the Judiciary.\u00a0<\/span><\/p>\n As for the subjective effects of the ruling, in case of rulings which annul the appealed resolutions, they have inter-partes effects, except in cases in which the HAC has attributed general and absolute effects to its ruling.\u00a0 <\/span>As for third parties, the HAC\u00b4s ruling will only be enforceable against them if they were summoned or intervened spontaneously in the process<\/b>, unless \u2013 as we mentioned above \u2013 the HAC has attributed general and absolute effects to the ruling.\u00a0<\/span><\/p>\n As for the temporal effects, the HAC\u00b4s ruling annulling the administrative act will have retroactive effects to the time of the issuance of the act.\u00a0<\/span><\/p>\n In an innovation of the CAL, it is pointed out that, in the case of formal irregularities, the court must indicate whether the Administration retains the power to recompose administrative proceeding in which the annulled act was issued it for the purposes of issuing a legitimate act.\u00a0<\/span><\/p>\n Likewise, the CAL imposes the obligation on all Administrations to comply with final annulment rulings and establishes that annulled administrative acts, those acts totally or partially repetitive of the annulled administrative acts, or new acts issued in contravention of annulment ruling, will be ineffective and, consequently, the same should be disregarded without the need for any further appeals<\/span><\/p>\n In another important innovation compared to the previous regime, the CAL <\/span>expressly recognizes the possibility of the Contentious Administrative Jurisdiction to directly enforce its own rulings in the event that they are not complied<\/b> with<\/b>. The CAL establishes that the party may request the court to determine the period of compliance with the ruling\u00a0 and that in the event that the ruling is not complied with, either totally or partially, the court may adopt all the measures it deems appropriate to obtain compliance thereof, including but not limited to sending a compliance order,\u00a0 impose economic and personal sanctions on the non-compliant party, and even report the non-compliance to the Attorney General’s Office so that it can analyze the criminal responsibilities that may correspond.\u00a0<\/span><\/b><\/b><\/p>\n Interpreting article 312 of the Uruguayan Constitution, the CAL expressly establishes that when a party decides to file a claim for damages\u00a0 before the Judiciary for an administrative act (instead of seeking its annulment), <\/span>it is not necessary to have previously exhausted the administrative route through the filing of administrative appeals.\u00a0<\/b><\/p>\n This puts an end to the existing scholar and jurisprudential discussion on whether article 312 of the Constitution required in all cases the prior exhaustion of administrative remedies to promote the reparation action before the Judiciary.\u00a0<\/span><\/p>\n It is important to note that the CAL <\/span>entered into force as from December 24, 2024<\/b> and that the procedural rules of the Code apply to processes initiated from its entry into force.\u00a0<\/span><\/p>\n For ongoing proceedings, the legal regime prior to the entry into force of the CAL continues to apply.\u00a0<\/span><\/p>\n <\/p>\n *************<\/span><\/p>\n <\/p>\n Our teams of FISCHER Administrative & Regulatory<\/strong> and FISCHER Intellectual Property<\/strong> are happy to advise you regarding the implications of the entry into force of the Code of Annulment Litigation and the legal aspects of appealing decisions from the Uruguayan PTO and\/or other administrative bodies.\u00a0<\/span><\/p>\n If you have any questions or concerns, please contact:<\/span><\/p>\n Implications regarding the appeal of Resolution from the Uruguayan PTO. As of December 24th, 2024, Law No. 20.333, dated September […]<\/p>\n","protected":false},"author":5,"featured_media":83219,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"wds_primary_category":0,"footnotes":""},"categories":[69,90,2],"tags":[],"class_list":["post-83233","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-administrativo-regulatorio","category-alertas-legales","category-propiedad-intelectual"],"_links":{"self":[{"href":"https:\/\/blog.fischer.uy\/index.php?rest_route=\/wp\/v2\/posts\/83233","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/blog.fischer.uy\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/blog.fischer.uy\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/blog.fischer.uy\/index.php?rest_route=\/wp\/v2\/users\/5"}],"replies":[{"embeddable":true,"href":"https:\/\/blog.fischer.uy\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=83233"}],"version-history":[{"count":8,"href":"https:\/\/blog.fischer.uy\/index.php?rest_route=\/wp\/v2\/posts\/83233\/revisions"}],"predecessor-version":[{"id":83235,"href":"https:\/\/blog.fischer.uy\/index.php?rest_route=\/wp\/v2\/posts\/83233\/revisions\/83235"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/blog.fischer.uy\/index.php?rest_route=\/wp\/v2\/media\/83219"}],"wp:attachment":[{"href":"https:\/\/blog.fischer.uy\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=83233"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/blog.fischer.uy\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=83233"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/blog.fischer.uy\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=83233"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}Two different systems: Civil Justice and Contentious Administrative Justice in Uruguay.\u00a0<\/b><\/span><\/h5>\n
Main amendments introduced by the CAL regarding the appeal system of decisions of the Uruguayan Trademark Office.\u00a0<\/b><\/span><\/h5>\n
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Extension of the deadline for filing administrative appeals:<\/b><\/span><\/h5>\n<\/li>\n<\/ul>\n
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Extension of the term for filing an Appeal of Last Resort: <\/b><\/span><\/h5>\n<\/li>\n<\/ul>\n
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Notifications of administrative acts:<\/b><\/span><\/h5>\n<\/li>\n<\/ul>\n
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Possibility of requesting the administrative body to expedite the issuance of resolutions of petitions and administrative appeals:<\/b><\/span><\/h5>\n<\/li>\n<\/ul>\n
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Creation of First Instance Administrative Annulment Courts and the possibility of creating a court of appeals: <\/b><\/span><\/h5>\n<\/li>\n<\/ul>\n
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Jurisdiction of the different courts of the Contentious Administrative Jurisdiction. Possibility of a second instance in the Appeal of Last Resort proceedings against resolution issued by the PTO: <\/b><\/span><\/h5>\n<\/li>\n<\/ul>\n
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Regulation of preliminary, precautionary and anticipatory processes:<\/b><\/span><\/h5>\n<\/li>\n<\/ul>\n
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Regulation and changes in the legal framework for Third-Party intervention:<\/b><\/span><\/h5>\n<\/li>\n<\/ul>\n
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Effects of final ruling issued in the Contentious-Administrative Jurisdiction: <\/b><\/span><\/h5>\n<\/li>\n<\/ul>\n
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Possibility of direct enforcement of final rulings: <\/b><\/span><\/h5>\n<\/li>\n<\/ul>\n
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Possibility of claiming damages based on illegal administrative acts to the Judiciary without previously seeking its revocation through administrative appeals:<\/b><\/span><\/h5>\n<\/li>\n<\/ul>\n
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