WORLD TRADE
ORGANIZATIONIP/C/W/117/Add.28
16 September 2003
(03-4956)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  Spanish
REVIEW UNDER ARTICLE 24.2 OF THE APPLICATION OF THE
PROVISIONS OF THE SECTION OF THE TRIPS AGREEMENT
ON GEOGRAPHICAL INDICATIONS
Responses to the Checklist of Questions1
Addendum
URUGUAY
The document contains the responses to the checklist of questions which the Secretariat has
received from the Permanent Mission of Uruguay in a communication dated 25 June 2003.
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RESPONSES TO THE CHECKLIST OF QUESTIONS ON
GEOGRAPHICAL INDICATIONS (IP/C/13)
A. GENERAL
1. Is protection for geographical indications provided through unfair competition law, e.g.,
passing off, false designation of origin; through a formal procedure for notification/registrationbefore protection is available; or through both?  Does the recognition of a geographicalindication require registration?
Geographical indications are protected by the legislation on distinctive signs (trademarks),
there being no unfair competition legislation law in the country.  Within geographical indications the
domestic legislation distinguishes between appellations of origin and indications of source.  The latterenjoy protection without the need for registration (Article 74 of Law No. 17.011), while appellations
of origin must be registered in order to obtain protection.
2. Is there one single regime of protection of geographical indications for all products?  If
not, identify the different regimes .
There are two regimes of protection:  the regime under Law No. 17.011, which protects
distinctive signs and covers all products and services, and the regime established by the National
Institute of Wine Production (Instituto Nacional de Vitivinicultura) (INAVI)) for wines and spirits,
which therefore enjoy a double system of protection.
                                                     
1 Documents IP/C/13 and IP/C/13/Add.1.IP/C/W/117/Add.28
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3. Do(es) the regime(s) of protection of geographical indications also extend to services?
Yes.
4. What provisions of law or regulations are directed to the recognition of geographical
indications required by Articles 22.2 and 23.1 of the TRIPS Agreement?  Citations to lawsshould be provided and, if the texts of the laws have not been notified to the WTO, copies shouldbe provided pursuant to Article 63.2.
Articles 4.4 and 5.7 and Chapter XII on geographical indications of Law No. 17.011 of
25 September 1998 and Articles 64 to 72 of Regulatory Decree No. 34/999 of 3 February 1999 fulfil
the requirements of Article 22.2 of the TRIPS Agreement.  As for the protection required underArticle 23.1, that is included within the above-mentioned protection.  The texts of the above-
mentioned law and decree are attached.  The National Institute of Wine Production should be
consulted with regard to the regulations which they apply.
5. If the required recognition of geographical indications is not provided through statutes
or regulations, please explain, in detail, the mechanism or mechanisms through which theprotection required is provided.
No.
6. Please provide a few examples of domestic geographical indications protected in
accordance with the means discussed above and indicate the means by which such protection isprovided .
At the moment there are no domestic geographical indications protected under Law
No. 17.011.  With regard to the protection regime established by INAMHI, that body itself should be
consulted.
7. Is the higher level of protection required for wines and spirits under Article 23.2 of the
TRIPS Agreement provided for any other product?  If so, please specify such products and thelaw under which they are protected.
All products and services enjoy the same level of protection under Law No. 17.011.
B. D
EFINITION AND CRITERIA FOR RECOGNITION
8. How are geographical indications defined?
Article 73 of Law No. 17.011 states that "geographical indications consist of indications of
source and appellations of origin".  Article 74 establishes that an "indication of source is the use of a
geographical name on a product or service that identifies the place of extraction, production or
manufacture of a given product or the provision of a given service as the source", while Article 75
provides that an "appellation of origin is the geographical name of a country, a city, a region or a
locality used to designate a product or service whose qualities or characteristics are exclusively oressentially due to the geographical environment, including natural or human factors".
9. Would such a definition comprise geographical indications identifying products of a
certain quality or reputation which are indirectly linked to a specific region?
Not indirectly.IP/C/W/117/Add.28
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10. In determining whether recognition should be given a geographical indication, what
criteria are considered?
Those specified in the above-mentioned law.
11. Is there any human creativity involved in the making of specific products under
protection by the system of geographical indicati ons?  If so, how much?  And do these products
involve any human factors?
Yes, human factors are involved.
12. Are there any other intellectual property rights involved, such as patents for example?
No.
13. What authority, if any, may define the geographic region or area for which rights are
claimed and on what basis is such definition made?
In the case of wines and spirits it is INAVI, and for other products or services it is the
competent authority in that field.
14. Does your legislation contain criteria for homonymous geographical indications for
wines?
There is no specific legal provision relating to homonymous geographical indications for
wines in Law No. 17.011.
15. Does your national legislation provide for recognition and protection of geographical
indications or appellations of origin of foreign countries?
Yes, Articles 65 and 67 of Regulatory Decree No. 34/999.
16. Is there any specific prohibition in the legislation/regulations/rules/procedures covering
geographical indications not protected in the country  of origin?  If so, please specify the relevant
statutory provision.
There is none.
C. PROCEDURE FOR RECOGNITION
17. With respect to any formal system for recognition of geographical indications, must the
applicant be a governmental organization or can a private entity own the rights to ageographical indication?
Neither the one nor the other (Article 65 of Regulatory Decree No. 34/999).
18. What are the competent authorities where the protection of a geographical indication can
be obtained?
The National Directorate of Industrial Property and INAVI.IP/C/W/117/Add.28
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19. Do the procedures which lead to the recognition of a geographical indication take place
ex officio or must they be based on the initiative of an entity or person?
They must be based on the initiative of an entity or person.
20. What, if any, fees are involved in the application and maintenance of rights in a
geographical indication?
A fee of 12 Adjustable Units must be paid for a single kind and 7 Adjustable Units for each
additional kind when applying for registration, there being no fee for their maintenance.
21. If criteria must be set out in an application for recognition of a geographical indication,
are those criteria purely geographic in nature?
There are no criteria as such, but there are legal requirements, such as the quality requirement
for the protection of appellations of origin.
22. What other criteria, if any, must be set out in an application for recognition of a
geographical indication?
Please refer to the previous answer.
23. What information must be supplied in an application for rights in a geographical
indication?
The registration of national appellations of origin must be accompanied by a statement
certifying that they have been granted by the competent authority.  In the case of domestic wine
production the certificate must be issued by the INAVI.  In the case of the registration of foreign
appellations of origin already recognized in the country of origin, that fact must be certified in theapplication.
24. Must the goods or services with respect to which a geographical indication is claimed be
set out?
Yes.
25. What mechanisms are provided to oppose the recognition of a geographical indication?
How is an investigation conducted after such a complaint?
There is a procedure to oppose recognition;  it is governed by Article 69 of Regulatory Decree
No. 34/999.
26. Who can oppose the recognition of a geographical indication?
Third parties with a direct, personal and legitimate interest may oppose recognition.
27. If your national legislation provides for recognition and protection of geographical
indications or appellations of origin of foreign countries, what is the procedure that has to be
followed in order to obtain such recognition and consequent protection?
The same procedure.IP/C/W/117/Add.28
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D. MAINTENANCE
28. How long does recognition for a geographical indication continue?
There is no time-limit for appellations of origin once they have been registered (Article 71 of
Decree No. 34/999).
29. If recognition of a geographical indication must be renewed or reaffirmed, what
information must be provided in order to effect such a renewal or reaffirmation?  Specify anyfees involved in renewal or reaffirmation.
No.
30. Must a geographical indication be used in order to maintain rights?  If so, how is such
use determined?
No.
31. Is there a specified limit for non-use before rights in a geographical indication cease and,
if so, what is that limit?
No.
32. Who monitors the use of geographical indications to determine if the criteria identified in
the application continue to be met?
There is no provision for such action.
33. If a government entity is responsible for monitoring the use of geographical indications,
what are its procedures for doing so?
There is none.
34. Are there means by which interested parties may request termination of a geographical
indication based on non-use or failure to maintain the criteria identified in the application?Describe the procedure.
There are no provisions covering non-use.  In the second case, an administrative action for
annulment could be brought.
35. Do the procedures which lead to forfeiture of a geographical indication take place
ex officio or must they be based on the initiative of an entity or person?
They must be based on the initiative of an entity or person.
E. S
COPE OF RIGHTS AND USE
36. May anyone who meets the criteria submitted to obtain recognition of a geographical
indication use that geographical indication after recognition is given or must additional criteriaor procedures be followed by that party before use is permitted?IP/C/W/117/Add.28
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It may be used once recognition has been granted.
37. Who makes the determination regarding use of a geographical indication by particular
parties, the entity responsible for the recognition or the entity that obtained the recognition?
Use is not required.
38. Are there fees involved in receiving authorization to use a particular geographical
indication and, if so, what are those fees and how are they established?
In the case of a licence for use, this will be governed by the provisions of the civil law
applicable to such contracts.
39. If there is a dispute regarding use of a geographical indication by a particular party,
what procedures are followed to resolve it?
The procedures of the civil law will apply under the General Code of Procedure.
40. Must individual authorized users of a geographical indication use that geographical
indication continually to retain their right to use it and, if so, how is their use determined andhow long will disuse be permitted?
There are no provisions relating to the use of the appellation of origin.
41. If there is a dispute over continuity of use by a particular party, how is it resolved?
Idem.
42. Does the regime for protection of geographical indications allow geographical indications
to be licensed and, if so, what conditions are imposed on such licenses?  If such conditions arenot met, what is the effect on the geographical indication?
As stated in the reply to question 38, licences may be granted in response to the wish of the
parties and in accordance with the relevant provisions of the civil law.
43. How is "grandfathered use" of a geographical indication, under Article 24.4 of the
TRIPS Agreement, applied in your country?
Article 79 of Law No. 17.011 excludes from  the prohibition on use those geographical
indications identifying wines and spirits that have been used in a continuous manner for at least 10
years preceding 15 April 1994.
F. R
ELATIONSHIP TO TRADEMARKS
44. What steps are taken to ensure that, in recognizing a geographical indication, the
obligations of Article 16.1 of the TRIPS Agreement are not nullified and impaired?
Domestic legislation does not allow the registration of appellations of origin as trademarks.
However, indications of source may be registered as trademarks provided that their use is not liable to
create confusion regarding the origin, source, qualities or characteristics of the goods or services forwhich the trademark is used.IP/C/W/117/Add.28
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45. What steps are taken to ensure that, in recognizing a geographical indication, the
obligations of Article 16.2 and 16.3 of the TRIPS Agreement are not nullified and impaired ?
As has already been stated, different signs have different types of protection.
46. What procedures are foreseen in case of a conflict of a geographical indication with a
trademark?
In the event of a protected geographical indication being registered as a trademark the
interested party will be able to apply for it to be annulled.
G. ENFORCEMENT
47. How are rights in the geographical indication enforced?  Are provisions available under
unfair competition law?  Trademark law?  Other laws?  Provide citations to the laws and, if theyhave not been notified under Article 63.2 of the TRIPS Agreement, please provide copies.
Rights are enforced by means of administrative proceedings before the National Directorate
of Industrial Property, an application for annulment before the Administrative Tribunal, and civil and
criminal proceedings before the competent courts.
48. Who has the right to enforce a geographical indication?
The right holder.
49. What judicial or administrative bodies have jurisdiction over enforcement actions related
to geographical indications?  Are there fees involved and, if so, what are those fees?
As have already stated, the National Directorate of Industrial Property, the Administrative
Tribunal and the judiciary.  Yes, fees and taxes must be paid if the judiciary is involved.
50. Must the public be notified of the existence of a geographical indication and, if so, how
and how often?
A single notification is made through the Industrial Property Bulletin.
51. Is unauthorized use of a geographical indication subject to criminal action and, if so,
describe the procedures.  If the law has not been notified pursuant to Article 63.2 of the TRIPSAgreement, please provide a copy.
Article 85 of Law No. 17.011 provides for the application of the criminal provisions
contained in Articles 81 to 84 against those infringing the rules on appellations of origin.
H. I
NTERNATIONAL AGREEMENTS
52. Is your government party to an international, including bilateral or plurilateral,
agreement for the notification and/or registration of geographical indications?  If so, please
name the international agreement and explain the relationship between it and your nationallegislation.
Uruguay is a party to the Paris Conventi on, ratified by Decree-Law No. 14.910, and the
TRIPS Agreement, which it ratified by Law No. 16.671.  In the regional context it has signed theIP/C/W/117/Add.28
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MERCOSUR protocol on trademarks and appellati ons of origin, which was ratified by Law No.
17.052.
53. What other international agreements, if any, have been entered into?  What do those
agreements provide?
Only those mentioned in the previous paragraph.
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