Jul 14, 2022 (Newsletter Issue 9/22)New Law in ForceOn 9 May 2022, the Instituto Nacional de Propiedad Industrial (INAPI) announced that the new Law No. 21,355 (Law) entered into force. The new Law was published in the Official Gazette on 5 July 2021, amending the Industrial Property Act 19.039 and Law No 20,254.
The new Law aims to modernize the IP system and provide better protection and enforcement of IP rights, particularly patent and trademark rights. Concerning trademarks, the new regulations introduce the following changes:
- The definition of trademarks is modified to protect distinctive non-traditional signs such as olfactory, 3-D, tactile, positional, and hologram trademarks.
- Commercial and industrial establishments cannot get registered as trademarks any longer. Existing marks of this kind shall be renewed as service marks in classes 35 and 40 to keep the rights acquired by the holders of such registrations.
- The trademark owner is required to make actual and effective use of its sign in the market. The revocation may only be requested by whoever has a legitimate interest and may not be declared ex officio.
- The regulations for collective and certification marks are aligned to international standards.
- Trademark renewals may be requested six months before the end of the term and up to six months after. Renewal fees are due for payment with the renewal application. Renewals requested after the registration’s expiration will be subject to a surcharge of 20% for each month or a fraction of a month.
- Specific legitimate uses of another’s trademark are allowed for names or pseudonyms and generics.
- The offense of trademark counterfeiting is typified and penalized with a prison sentence (currently, there is only a fine for the benefit of the Public Prosecutor).
- The law established a compensation system with pre-established indemnities for trademark infringement.
For more information, please click hereSource: www.inapi.cl, www.clarkemodet.com Apr 21, 2022 (Newsletter Issue 5/22)
Accession to Madrid Protocol
On April 4, 2022, WIPO notified the deposit by the Government of the Republic of Chile of its instrument of accession to the Madrid Protocol.
The said instrument contained the following declarations:
- in accordance with Article 5(2)(b) of the Madrid Protocol (1989), the time limit for a notification of refusal in respect of international registrations made under the Madrid Protocol will be 18 months and, under Article 5(2)(c) of the said Protocol, when a refusal of protection may result from an opposition to the granting of protection, such refusal may be notified to the International Bureau after the expiry of the 18-month time limit; and
- in accordance with Article 8(7)(a) of the Madrid Protocol (1989), the Government of the Republic of Chile, in connection with each international registration in which it is mentioned under Article 3ter of the said Protocol, and in connection with the renewal of any such international registration, wants to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee.
The Madrid Protocol will enter into force, with respect to Chile, on July 4, 2022.
Source: www.wipo.int
Sep 09, 2021 (Newsletter Issue 14/21)New Intellectual Property Law PublishedOn July 5, 2021, the Chilean Official Gazette published the new Intellectual Property Law, recently approved, which modifies the current 1991 regulations. The purpose of the new Law is to allow better protection and enforcement of IP rights, establish more efficient registration procedures, and facilitate the processes to obtain these rights. The publication marks the beginning of the countdown -approximately six months- for the entry into force of this long-awaited regulation.
Concerning trademarks, the new regulations introduce the following changes:
- The definition of trademarks is modified to protect distinctive non-traditional signs such as olfactory, 3-D, tactile, positional, and hologram trademarks.
- Commercial and industrial establishments can not get registered as trademarks any longer. Existing marks of this kind shall be renewed as service marks in classes 35 and 40 to keep the rights acquired by the holders of such registrations.
- The trademark owner is required to make actual and effective use of its sign in the market. The revocation may only be requested by whoever has a legitimate interest and may not be declared ex officio.
- The regulations for collective and certification marks are aligned to international standards.
- Trademark renewals may be requested six months before the end of the term and up to six months after. Renewal fees are due for payment with the renewal application. Renewals requested after the registration’s expiration will be subject to a surcharge of 20% for each month or a fraction of a month.
- Specific legitimate uses of another’s trademark are allowed for names or pseudonyms and generics.
- The offense of trademark counterfeiting is typified and penalized with a prison sentence (currently, there is only a fine for the benefit of the Public Prosecutor).
- The law established a compensation system with pre-established indemnities for trademark infringement.
There are also significant changes for patents, designs, trade secrets, and geographical indications. For example, the new law introduces patent fee amendments, more straightforward registration procedures, and an extension of protection for industrial designs. Moreover, a definition of „trade secret“ is established in line with the standard set by the TRIPS (Agreement on Trade-Related Intellectual Property Rights). The regulations on geographical indications and appellations of origin are amended to add grounds for non-registrability and incorporate the possibility of requesting their cancellation when the product is no longer produced in the protected area.
For more information, please click hereSource: www.clarkemodet.com Apr 08, 2021 (Newsletter Issue 7/21)
Grace Period for TM Renewals Extended
On March 17, 2021, through the publication of General Ruling No. 96/2021 in the Official Gazette, the National Institute of Industrial Property (INAPI) provided new instructions in relation to the filing and payment of renewal applications of trademark registrations in Chile, applying the regulations set forth in the Trademark Law Treaty.
As from April 1, 2021, it will be possible to file and pay the renewal of registrations of word marks, figurative trademarks and word and label trademarks within six months prior to the registration’s expiration date and until six months after this date. This extends the grace period to request the renewal of a trademark registration, since the term to proceed with its renewal changes from 30 days to 6 months, counted as from the registration’s expiration date.
Sound, collective, certification and guarantee trademarks are excluded from this disposition, as the maximum term to proceed with their renewal will remain to be of 30 days counted as from the registration’s expiration date.
Regarding the payment of renewal fees, the General Ruling contemplates that, in those cases in which the payment of the renewal fees is made within 6 months following a registration’s expiration date, a surcharge of 20% over the amount of those fees will apply for each month or fraction of a month of delay in payment, counted as from the 30 days following the registration’s expiration date. This means that if payment is made within 30 days following a registration’s expiration date, no surcharge will be applied.
Source: www.carey.cl
Jan 14, 2021 (Newsletter Issue 1/21)First Steps towards Ratification of Madrid ProtocolThe Instituto Nacional de Propiedad Industrial (INAPI) informs the draft Agreement approving the Protocol concerning the Madrid Agreement on the international registration of trademarks was submitted to the first constitutional procedure for ratification on December 2, 2020.
For more information, please refer to INAPI's website here (in Spanish only)Source: www.inapi.cl Feb 02, 2016 (Newsletter Issue 2/16)Accession to Hague Apostille Convention On December 16, 2015, Chile deposited its instrument of accession to the Hague Convention of October 5, 1961 Abolishing the Requirement of Legalisation for Foreign Public Documents (the "Apostille Convention").
Following the usual procedural steps, the Convention will enter into force for Chile on August 30, 2016, making it the 112th Contracting State to the Convention.
The Government of Chile has permitted the Permanent Bureau to publish copies of its internal law implementing the Convention. The Regulation itself is available here and other associated amendments are also available here (both are in Spanish only).
Pursuant to Article 12 of the Apostille Convention the Depositary shall give notice to the Contracting States of the accession of Chile.
Source: www.hcch.net Oct 28, 2015 (Newsletter Issue 16/15)
Law Regulates Labeling of Food Products
The Chilean Ministry of Health recently passed a decree regarding the labeling of the nutritional compositions of food products. The new regulation aims at targeting food products that are intended for consumption by children under 14 years of age if they exceed specified limits of sodium, sugar, calories and saturated fats.
The new law, which will be in force from June 2016, will implement the use of warning messages and a graphic design on food labels to show that the aforementioned food components are above the established recommended limits. A warning message reading “High in” inside a black octagonal shape will have to be placed on the front of the food packaging, thus making them highly visible to consumers.
This decision has been criticized by the International Trademark Association (INTA) in a document recently submitted to the Chilean National Institute of Industrial Property (INAPI) commenting the National Intellectual Property Strategy for Chile.
In this document, INTA states that the new law “prohibits customers from distinguishing one set of products from another set of products, reduces the freedom of choice, and expropriates valuable trademark rights without due process.” INTA added that “reducing the ability to use trademarks due to the condensed space on packaging violates various international treaties on trademark protection,” such as the Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS), in particular Article 20 which states that “the use of a trademark in the course of trade shall not be unjustifiably encumbered by special requirements such as … use in a special form or use in a manner detrimental to its capability to distinguish the goods or services of one undertaking from those of other undertakings.”
Source: www.moellerip.com
May 13, 2015 (Newsletter Issue 7/15)
Changes to IP Law Expected
The local PTO considers that Law N° 19.039 concerning IP matters should be modified and updated. The IP authority sent the draft law to the Congress for analysis.
The main points of the legislation can be summarized in three aspects:
- new trademarks categories are included, such as three-dimensional trademarks.
- there are more benefits concerning fees
- the trademark and patents process would be improved and simplified.
Source: Moeller IP Advisors, Argentina
Nov 18, 2013 (Newsletter Issue 16/13)
Official Publication Fees Reduced
On August 26, 2013 the Ministry of Internal Affairs and Public Safety assumed the administration of the Chilean Official Gazette and published on the same date a new price list for publication services provided by the Official Gazette. The prices are calculated over the basis of certain fixed rates plus a variable amount calculated on a "per character basis". There was a decrease in the gross "per character" price from CLP 33 to CLP 19 (to the final price -fixed fees plus variable fees- a 19% VAT has to be added when the service is actually requested). This change implies roughly a 45% price reduction in all publications made in the Chilean Official Gazette.
Since all trademark and patent applications are subject to a mandatory publication for pre-grant opposition purposes during the first stages of the application proceedings, this general price reduction has had an impact in publication fees applicable to industrial property rights (IPR) applications. The Chilean National Industrial Property Institute (INAPI) through a press release issued on October 9, 2013 praised the measure which, as previously explained, accounts for nearly a 45% reduction in publication expenses for abstracts on IPR applications prosecuted before INAPI, as the same reduces overall costs for the registration of trademarks in Chile thus aligning with the ultimate goal of INAPI of promoting and developing the protection of IPRs in Chile.
Source: Baker & McKenzie, Chile
Jul 16, 2013
Amendments to IP Law Expected
A new Draft Law on Industrial Property, intended to replace the current Industrial Property Act 1991, was introduced in the Chilean National Congress on 26 April 2013.
In addition to strengthening the mechanism for enforcing industrial property rights and improving registration procedures, the new law is expected to boost innovation, encourage knowledge transfer and enable consumers to better distinguish products and services.
May 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
Aug 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
May 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
The legal basis is the Industrial Property Law, (Law No. 19.039) in force since September 30th, 1991, modified by Law No. 19.996 in force since March 11, 2005; by Law No. 20.160 in force since January 26th, 2007, by Law No. 20.569 in force since February 6, 2012; and most recently by Law No. 21.355, in force since May 9, 2022.
Chile is a member of the Madrid Protocol as of July 4, 2022.
Trademark protection is obtained by registration.
Nice classification, 11th Edition. Chile follows this classification although it is not a treaty member.
Exception: There are currently two special “classes”, one for retail stores and another one for industrial premises. These two special classes of registrations are no longer be available for registration starting from May 9, 2022, and those trademarks already registered in those classes, if renewed, will become class 35 and class 40 registrations, respectively.
Industrial Property Law, Article. 19:
Registrable as a trademark is any sign able that serves to distinguish products or services on the market. Such signs may consist of names of persons, letters, numbers, figurative elements such as pictures, graphs, symbols, combinations of colours, sounds, smells, position marks, hologram marks or 3D forms, as well as any combination of such signs. Where the signs are not intrinsically distinctive, they may be registered if they have acquired distinctiveness through use on the national market.
The following trademark types are registrable: trademark, service mark, collective and certification marks are registrable. Industrial premises and retail store marks are no longer available.
The application is filed at the National Institute of Industrial Property (INAPI).
Multiple-class applications are possible.
Foreign applicants need a local agent.
A simple power of attorney is required for the submission of applications for registration, renewal or transfer of trademarks. The powers of attorney will enable the agent to perform the specific duties contained in such power.
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 approximately 6-8 months or even a year and a half in case of oppositions or office actions.
Registration applications are published in the Official Gazette and are subject to oppositions or office actions within 30 working days.
EVIDENCE
All documents submitted as proof must be in Spanish or translated into Spanish. Official translations are recommended.
National:The opposition period is 30 working days from publication date of the application.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
A trademark registration is valid for 10 years from the date of registration.
The registration is renewable for periods of 10 years.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official fee for filing a trademark application is UTM 1 per class.
The publication fee depends on the length of the specifications/class description.
The registration fee is UTM 2 per accepted class.
All fees charged by the IP Office are in UTM, an indexed fee fixed by the State and adjusted monthly for inflation.
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General Trademark Regulations
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Jan 23, 2024
Claro & Cia., Santiago, Chile