Checklist of Issues on Enforcement under TRIPS Art. 63.2 - View details of the document


(a) Civil judicial procedures and remedies

The courts and tribunals with jurisdiction over civil matters.
It is the right holder that has standing. As regards appearances, the procedural rules generally require personal appearance by the right holder, although provision is made for representation through a proxy or through collective entities where justification 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, representation 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 them with the administration of those rights. Legal texts: Article 88 of Law No. 17.011; Article 99 of Law No. 17.164; Law No. 9.739 as reworded by Law No. 17.616; and Articles 11 and 38, 44 and 340.1 of the General Code of Procedure (CGP).
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 time-frame decided by the court. Failure to provide such evidence shall be interpreted as a presumption against the party in question.
In civil proceedings, there are no specific rules.
The ordinary courts are authorized to order infringers of industrial property rights to pay damages where there is fault or fraud. The payment 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 without notifying the other party and precautionary measures.
This is not provided for under Uruguayan law.
The provisions relating to civil liability that may be incurred are the general provisions on the liability of public officials, including judges, contained 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.
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

(a) Judicial measures

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 situations 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, "Precautionary Proceedings", Articles 311 to 317, and Article 103 of Law No. 17.164.
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 modification, substitution, or cessation (CGP Articles 313 and 315).
To request the adoption of a provisional measure, 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 prior to the proceedings as a preliminary measure, it shall expire de jure if the complaint is not submitted within 30 days (CGP Article 311 to 315).

(b) Administrative measures

Only in the case of copyright and related rights, 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 notified, 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).
Only in criminal cases.
The courts and tribunals with jurisdiction over criminal matters.
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.
Criminal proceedings can be initiated by the Public Prosecutor's Office. The Police and the Customs Authorities can file a complaint with the competent judicial authority.
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.
All of the above-mentioned remedies 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.