Adoption of Trademark Law Treaty raises concerns

Within the context of the free trade agreements between Chile and the European Union and the United States, on June 2 2006 the Chilean Chamber of Representatives approved the adoption by Chile of the Trademark Law Treaty.

The adoption of the treaty must now be approved by the Senate. However, in a memorandum sent to the Senate, the Chilean Association of Intellectual Property (ACHIPI) expressed concerns about the implications of such adoption.

The Chilean system recognizes that IP rights must be protected in the same way as other property rights; the only difference is that IP rights are not perpetual. Therefore, any activities linked with the creation, registration, renewal and change of ownership of IP rights are subject to a number of formalities. Some of these formalities seem to conflict with the provisions of the treaty.
ACHIPI thus believes that the adoption of the treaty by Chile would:
  • reduce the protection afforded to trademark rights under the national legislation, which would have an impact on the ability of trademark owners to enforce their rights;
  • oblige the Chilean Intellectual Property Institute to register assignments of rights that are null and void under the national legislation; and
  • reduce legal certainty for trademark owners in Chile.
ACHIPI suggested that the Senate make certain amendments to the Chilean legislation so as to comply with the treaty while avoiding these problems. It remains to be seen whether such amendments can be introduced without violating the provisions of the treaty.

Sergio Amenábar, Estudio Federico Villaseca, Santiago

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