Chile (CL)
05-02-2012 (Newsletter Issue 7/12)
Trademark Law Amended
The Law N° 20,569 that amends the Industrial Property Law became effective on February 06, 2012 in Chile. It standardizes and improves the process for the application for trademarks. With this amendment, the legislation adjusts to TLT (Trademark Law Treaty) published in the Official
Gazette on February 16, 2012.
The main modifications are the following:
- Single form acceptable:
One TM form is allowed to apply for a registration of goods and services, which will origin a single registration.
- Division of applications:
It is possible to divide registrations and applications, keeping the corresponding filing, registration and priority dates. Regarding applications, this will lead that in case oppositions and/or observations are met in connection with one of the different classes covered by an application, the same can be divided allowing a faster registration of the TM in those classes not facing objections.
The division of registration may be requested even when its validity is challenged by means of an annulment trial or during the appeal thereof.
- Power of attorney:
A simple power of attorney is enough in order to represent a national or foreign applicant at the Trademark and Patent Office as well as in front of the Industrial Property Court. Certifications of faculties are needed in case the power is given on behalf of a corporation, which must be in original or notarized.
Applicant is allowed to file patents or trademarks without having the power of attorney, which will have to be filed within the following 30 days for nationals and 60 days for foreigners.
Nevertheless it is maintained the procedure according to which the Patent and Trademark Office will require in a period of 60 days, the submission of the power of attorney if the same has not been submitted by the deadline.
Finally the powers in order to abandon or withdraw an application must be expressly granted to the representative.
Source: Moeller IP Advisors, Argentina and
Silva & Cia Attorneys at Law, Chile
08-02-2010 (Newsletter Issue 13/10)
Use of Vienna Classification
The National Institute of Industrial Property of Chile (INAPI) announced that the registration of trade marks will be made only based on the International Classification of Goods and Services under the Nice Agreement 9th Edition effective from September 1st, 2010.
Source: www.inapi.cl
05-09-2010 (Newsletter Issue 10/10)
Online Payment Services for TM Publication Launched
The Chilean Official Journal and the National Institute of Industrial Property of Chile (INAPI) jointly launched an online payment service for the publication in the Official Journal of extracts of trademarks that are accepted for processing.
Source: www.kluwermanualip.com
Legal basis is the new Industrial Property Law, (No. 19.039) in force since September 30th, 1991 modified by Law No. 19.996 in force since March 11th, 2005, and by Law No. 20.160 in force since January 26th, 2007 and by Law No. 20.569 in force since February 6th, 2012.
Trademark protection is obtained by registration.
Nice classification, 9th edition
Although Chile is not part of the arrangement.
Exception: There are two special classes, one for trade and another one for industrial production.
Registrable as a trademark are all distinctive and graphically representable signs as well as sound marks and slogans.
The following trademark types are registrable: trade marks, service marks, word mark, word label, label slogan, industrial establishment and commercial establishment.
The application is filed at the National Institute of Industrial Property (INAPI).
Multiple-class applications are possible. However, classes of goods and classes of services cannot be named together within the same application. The two special classes (see above) have to be named in separate applications as well.
Foreign applicants need a local agent.
A simple power of attorney is required for the submission of application without prejudice that it is not enough to appear before other kinds of actions, such as, for instane legal prceedings related to intellectual property infringements. The powers in order to abandon or withdraw an application must be expressly granted to the representative.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Signs not deemed distinctive in the examination cannot be registered, even if they have been registered in other countries.
The processing time from first filing to registration is approx. 8 months. The first office action is taken after approx. 2 months.
Before registration, the trademark application is published in the official gazette.
EVIDENCE
All documents submitted as proof must be in Spanish or dully translated.
National:
The opposition period is 30 working days from publication date of the application.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
not a member of the Madrid Agreement or Protocol.
A trademark registration is valid for 10 years from the date of registration.
The registration is renewable for periods of 10 years.
Renewals must be solicited within 30 days after expiration date, but payment has a grace period of 6 months from expiration date of the trademark.
There is no use requirement neither to apply, maintain nor to renew.
The official fee is approx. EUR 180.00 per class (filing fees and registration fees).
Trademark Licence Agreement
In Chile licence agreements must be in writing. It is not permitted to license the use of unregistered marks. It is possible to register a licensee only in respect of one or some classes but not for some goods or services in a single class. The sale of a registered trademark does not automatically terminate the licence. There are no statutory provisions prescribing the terms of licensing.
Recordal
There are provisions in law for the recordal of a licensee with the Trademark Office. Recordal is mandatory for opposition purposes. There is neither a time frame for a recordal nor a prescribed form for a licence agreement.
The following documents are required for a recordal:
1. The licence agreement in writing, signed before a notary public or before a Chilean Consul and legalised in Chile
2. A power of attorney
The contract must contain details of the parties, the remuneration, the duration of the licence and the details of the trademark.
Effectiveness
The licence becomes enforceable against third parties from the date of its registration. The licence is not required to be published.
Infringement Proceedings
There is an evidentiary presumption that use of a recorded licensee is permitted use. The licensee may join the proprietor in infringement proceedings. The licensee may also call upon the trademark owner to institute infringement proceedings. A registered user can institute proceedings in his own name only if his rights are affected.
| Search type |
First class |
Add. class |
| Word Mark Search (availability) |
230,00 € |
190,00 € |
| Word Mark Search (identical) |
210,00 € |
150,00 € |
| Extended Search (word mark, company name, domain) |
690,00 € |
190,00 € |
| Device Mark Search (availability) |
660,00 € |
450,00 € |
| Trademark Owner Search |
240,00 € |
|
| Company Name Search |
540,00 € |
|
| Domain Name Search (extended) |
|
|
| i-Search (word mark availability + legal opinion) |
430,00 € |
360,00 € |
The Prices above are S.M.D. Markeur Search Fees
Country Index is a free service of S.M.D. Markeur, an international IP searching and monitoring firm.
We would like to thank the following law firms for their assistance in updating the information provided:
Country Survey
04-27-2012
Garcia Parot y Cia Abogados, Providencia, Chile
01-11-2012
Garcia Parot y Cia Abogados, Providencia, Chile
Licensing
12-15-2011
Cruzat, Ortúzar & Mackenna Ltda. Baker Mc Kenzie International, Santiago de Chile, Chile
Garcia Parot y Cia Abogados, Providencia, Chile