Congress ratifies trade agreement promoting trademark rights

The Chilean Congress has ratified a Free Trade Agreement with the United States that will affect Chilean trademark law. The US Congress ratified the agreement earlier this year.

The agreement's effect on Chilean trademark legislation is as follows:

• Chile will ratify the Trademark Law Treaty before January 1 2009 and undertake reasonable efforts to accede to the Madrid Protocol. The accession to this latter treaty has always been hotly debated within the Chilean intellectual property community and voices have been raised against the trade agreement because of the inclusion of this obligation.
  
  
• Chilean trademark legislation will be amended to protect new categories of trademarks, such as certification and sound marks.
  
  
• The scope of protection of well-known trademarks will be extended in the following ways: first, Article 6bis of the Paris Convention for the Protection of Industrial Property will be applied as necessary, even to goods or services that are not similar to those identified by a well-known mark. The objective is to prevent not only confusion, but also associations or connections between the goods or services identified by the well-known trademark and the junior mark. Second, determining the well-known character of a trademark will not require that the reputation of the mark extends beyond the sector of the public that normally deals with the relevant goods or services.
  
  
• The law will be amended to allow judicial appeals where a trademark registration is refused. Such refusals may currently only be appealed to the Arbitral Court of Industrial Property.
  
  
• Chile will set up a system to suspend the release of suspected counterfeit trademarked goods. While the current case law precludes courts from confiscating goods unless they have entered the Chilean market, the agreement will enable the competent authorities to initiate border measures ex officio.

The provisions of the agreement will take effect within the next two years.

For background information on the agreement, see Bilateral trade agreement will protect trademark rights.

Juan Pablo Egaña, Sargent & Krahn, Santiago