WORLD TRADE  
ORGANIZATION   
IP/N/6/URY/1 
3 September 2012 
 (12-4727) 
Council for Trade-Related Aspects 
of Intellectual Property Rights Original:   Spanish 
 
 
 
CHECKLIST OF ISSUES ON ENFORCEMENT1 
 
Responses from Uruguay 
 
 
Civil and Administrative Procedures and Remedies 
  (a) Civil judicial procedures and remedies  
 
1. Specify the courts which have jurisdiction over IPR infringement cases. 
 The courts and tribunals with jurisdiction over civil matters. 
 
2. Which persons have standing to assert IPRs?  How may they be represented?  Are their 
requirements for mandatory personal appearan ces before the court by the right holder? 
 It is the right holder that has standing.  As re gards appearances, the procedural rules generally 
require personal appearance by the right holder, a lthough provision is made for representation through 
a proxy or through collective entities where justifica tion has been provided.  To be represented for the 
purposes of litigation, the right holder must provide a lawyer with a notarized power of attorney.  
In the case of copyright and related rights, re presentation of collective management entities is 
regulated by their own articles of association, but they must certify in writing that the holders of the 
rights they are seeking to assert have entrusted th em with the administration of those rights. 
  Legal texts:  Article 88 of Law No. 17.011;  Ar ticle 99 of Law No. 17.164;  Law No. 9.739 as 
reworded by Law No. 17.616;  and Articles 11 a nd 38, 44 and 340.1 of the General Code of 
Procedure (CGP).  3. What authority do the judicial authorities have  to order, at the request of an opposing 
party, a party to a proceeding to produ ce evidence that lies within its control? 
 CGP Article 168 - The party may ask the court to  require the submission of evidence that is 
within the control of the opposing party within a tim e-frame decided by the court.  Failure to provide 
such evidence shall be interpreted as a pr esumption against the party in question. 
 
4. What means exist to identify and protect confidential information brought forward as 
evidence? 
 In civil proceedings, there are no specific rules. 
 
                                                      
1 Document IP/C/5. IP/N/6/URY/1 
Page 2  
 
  5. Describe the remedies that may be ordered by the judicial authorities and criteria, 
legislative or jurisprudential, for their use: 
- I njunctions;  
- damages, including recovery of profits, and expenses, including attorney's fees;  
- destruction or other disposal of infringing goods and materials/implements for 
their production;  
- any other remedies. 
 
 The ordinary courts are authorized to orde r infringers of industrial property rights to pay 
damages where there is fault or fraud.  The paym ent of costs and charges may be ordered only in 
cases of bad faith or culpable negligence.  These measures are provided for under Articles 84 and 87 
of Law No. 17.011 and Articles 99, 100 and 102 of Law No. 17.164 as well as Articles 1.319, 1.323 and 1.324 of the Civil Code, which generally provides for liability and damages where there is fault or 
fraud.  
 In the case of copyright, Articles 16, 17 and 18 of Law No. 17.616 provide for judicial 
inspection at the request of a party;  the authority of the court to order a search of the property in 
question without any counter-security;  and with out notifying the other party and precautionary 
measures.  
6. In what circumstances, if any, do judicial authorities have the authority to order the 
infringer to inform the right holder of the identity of third persons involved in the 
production and distribution of the goods or services found to be infringing and of their channels of distribution? 
 This is not provided for under Uruguayan law. 
 7. Describe provisions relating to the indemnification of defendants wrongfully enjoined.  
To what extent are public authorities and/or officials liable in such a situation and what 
"remedial measures" are applicable to them? 
 The provisions relating to civil liability that may be incurred are the general provisions on the 
liability of public officials, including judges, cont ained in Articles 23 to 25 of the Constitution and, 
according to the majority of case law, in Article 1.319  of the Civil Code, which states that for there to 
be liability, there must at least be a culpable act .  The conduct of the official may also lead to 
administrative and/or criminal liability, according to the circumstances of the case. 
 
8. (a) Describe provisions governing the length and cost of proceedings.  Provide any 
available data on the actual duration of proceedings and their cost. 
 The duration of the proceedings is governed by articles 62 et seq.  of the General Code of 
Procedure.  The cost will differ from case to case.  
 (b) Administrative procedures and remedies 
 
9. Reply to the above questions in relation to an y administrative procedures on the merits 
and remedies that may result from these procedures.  IP/N/6/URY/1 
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  Provisional Measures 
 
 (a) Judicial measures 
 
10. Describe the types of provisional measures that judicial authorities may order and the 
legal basis for such authority. 
 Generally speaking, provisional measures are designed to ensure that people's rights can be 
safeguarded, and in the intellectual property area, the most frequent measures are those that seek to 
put an end to the illegal activity, which may include the seizure of the infringing goods.  The basis for 
providing this authority is precisely to avoid situatio ns where at the end of the process, which must be 
conducted under the threat of expiry of the measure, it is still possible to protect the right, or to avoid 
continued violation of the right during the process.  The relevant legal provisions are contained in the 
General Code of Procedure under Title II, "Pr ecautionary Proceedings", Articles 311 to 317, and 
Article 103 of Law No. 17.164.  11. In what circumstances may such measures be ordered inaudita altera parte ? 
 The rule is that the measures are ordered without the knowledge or intervention of the 
opposing party, although the affected party retains the right to appeal them, to offer alternative 
guarantees, or to file a motion for their modifi cation, substitution, or cessation (CGP Articles 313 
and 315).  12. Describe the main procedures for the initiati on, ordering and maintenance in force of 
provisional measures, in particular relevant time-limits and safeguards to protect the 
legitimate interests of the defendant. 
 To request the adoption of a provisional measu re, the requesting party must briefly establish 
the existence of the right and the danger of injury  if that right is denied, and offer sufficient 
counter-security to guarantee any damage that may be suffered by the respondent.  When the court 
deems that those requirements have been met ( only exceptionally can exemption from the counter-
security be granted) it orders the measure, and once it has done so, it must notify the affected party.  
On the other hand, if the measure was requested prio r to the proceedings as a preliminary measure, it 
shall expire de jure  if the complaint is not submitted with in 30 days (CGP Article 311 to 315). 
 13. Describe provisions governing the length and cost of proceedings? 
(b) Administrative procedures 
 
14. Reply to the above questions in relation to any administrative provisional measures. 
 
Special Requirements Related to Border Measures 
 
15. Indicate for which goods it is possible to apply for the suspension by the customs 
authorities of the release into free circulati on, in particular whether these procedures 
are available also in respect of goods whic h involve infringements of intellectual 
property rights other than counterfeit trademark or pirated copyright goods as defined 
in the TRIPS Agreement (footnote to Article 51).  Specify, together with relevant 
criteria, any imports excluded from the app lication of such procedures (such as goods 
from another member of a customs union, goods in transit or de minimis imports).  
Do the procedures apply to imports of goods put  on the market in another country by or 
with the consent of the right holder and to goods destined for exportation?  
 IP/N/6/URY/1 
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   Only in the case of copyright and related ri ghts, for which it is provided that the National 
Customs Directorate or the right holder may apply for special inspection measures, preventive seizure 
or precautionary suspension of customs clearance to  the competent court which shall have 24 hours to 
rule, without need for a counter-security.  Where the measure has been requested by the National 
Customs Directorate, the interested parties must be no tified, and if no civil or criminal suit is filed, the 
measure shall be null and void (Article 63 of Law No. 9.739 as reworded by Article 25 of 
Law No. 17.616).  
16. Provide a description of the main elements of the procedures relating to the suspension 
of the release of goods by customs authoriti es, in particular the competent authorities 
(Article 51), the requirements for an application (Article 52) and various requirements 
related to the duration of suspension (Article 55).  How have Articles 53 (security or equivalent assurance), 56 (indemnification of the importer and of the owner of the goods) and 57 (right of inspection and information) been implemented? 
 
17. Describe provisions governing the length a nd cost of proceedings.  Provide any available 
data on the actual duration of  proceedings and their cost.  How long is the validity of 
decisions by the competent authorities for the suspension of the release of goods into free 
circulation? 
 
18. Are competent authorities required to act upon their own initiative and, if so, in what 
circumstances?  Are there any special provi sions applicable to ex officio action? 
 
 Only in criminal cases. 
19. Describe the remedies that the competent authorities have the authority to order and 
any criteria regulating their use. 
 
Criminal Procedures 
20. Specify the courts which have jurisdiction  over criminal acts of infringement of IPRs. 
 
 The courts and tribunals with jurisdiction over criminal matters. 
21. In respect of which infringements of which intellectual property rights are criminal 
procedures and penalties available? 
 
 Those set out in Chapter XIV, Articles 81  to 89 of Law No. 17.011;  Articles 106 and 107 of Law No. 17.164;  and Articles 46 to 52 of Law No. 9.739 as reworded in Law No. 17.616. 
22. Which public authorities are responsible for initiating criminal proceedings?  Are they 
required to do this on their own initiative and/or in response to complaints? 
 
 Criminal proceedings can be initiated by  the Public Prosecutor's Office. The Police and the 
Customs Authorities can file a complaint w ith the competent judicial authority. 
23. Do private persons have standing to init iate criminal proceedings and, if so, who? 
  The crimes cited in the aforementioned laws may be prosecuted at the request of a party, 
which must file a complaint with the competent judicial authority.  IP/N/6/URY/1 
 Page 5 
 
 
  24. Specify, by category of IPR and type of in fringement where necessary, the penalties and 
other remedies that may be imposed: 
 
- Imprisonment; 
 
- monetary fines; 
 
- seizure, forfeiture and destruction of infringing goods and materials and 
implements for their production; 
 
- other. 
 
 All of the above-mentioned remedi es are provided for in Articles 81 to 88 of Law No. 17.011; 
Articles 99 to 107 of Law No. 17.164; and Articles 46 to 52 of Law No. 9.739 as reworded in Law No. 17.616. 
25. Describe provisions governing the length and any cost of proceedings.  Provide any 
available data on the actual duration of proceedings and their cost, if any.  
 
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