Industrial Property Law amended to implement TLT

Chile

Chile ratified the Trademark Law Treaty (TLT) in September 2010. However, until recently it had not been possible to implement the TLT because certain provisions of the Chilean Industrial Property Law contradicted it (ie, the requirement that powers of attorney, as well as assignments and 'change of title' documents, be legalised and notarised).

In August 2011 the government sought to improve the prosecution of trademark and patent applications by amending the Industrial Property Law (No 19.039); the aim was to allow the implementation of the TLT.

The amending law (No 20569) was published in the Official Gazette on February 6 2012; however, there was disagreement as to when the law should enter into force. Some considered that the government should first issue new regulations to complement the new law; the object of the regulations would be to recover at least some of the legal certainty lost through the suppression of the previous formalisations.

In March 2012 the discussion was settled, as officials of the National Institute of Industrial Property declared that the amending law was valid as from the date of its publication - that is, February 6 2012.

The main amendments introduced by the new law are as follows:

  • Powers of attorneys for the administrative prosecution of industrial property matters no longer need to be notarised and legalised, unless the interested party requests it.
  • The same is true for administrative disputes in examination proceedings before the Institute of Industrial Property, opposition cases and appeals.
  • Assignments or 'change of title' documents no longer need to be notarised, certified or legalised, but must be dated. Further, they must be recorded with the Institute of Industrial Property in order to be binding on third parties.
  • Applications covering several classes of products and services may, at the applicant’s request, be divided into various applications for one or more classes, which will retain the filing date and priority of the original application. However, to divide an application, the applicant must pay the official fees for new applications. The applicant can divide an application at any time during the prosecution and before the final decision, when this is necessary to overcome official objections or oppositions; this can also be done during the appeal stage before the second instance decision.
  • Registrations that have already been granted can also be divided during cancellation actions or during an appeal against a decision in a cancellation action.
  • When goods or services corresponding to various classes of the Nice Classification have been included in a single application, this application will result in a unique registration.

It is understood that, under the regulations (which are still under discussion), assignments will have to contain the date of the document, the contact details of the parties and the title of the document.

As the amending law provides that the powers of attorney do not need to be notarised and legalised in industrial property matters, it is thought that this will also apply to appeals against decisions of the Institute of Industrial Property before the Appeal Court, as they are part of the same procedure; however, this will not apply to proceedings before the ordinary courts and other types of administrative cases.

Indeed, matters such as infringement actions, civil suits and other administrative cases are governed by different laws which usually require that the powers of attorney and other relevant documents be signed before a notary public; when the documents have been issued abroad, these must be legalised before the Chilean Consul and then by the Chilean Foreign Office.

Under the simplified requirements set forth by the new law, the Industrial Property Institute need only record assignments or 'change of title' documents; however, this is not a guarantee of their validity or ability to be binding on third parties in Chile, as the Chilean Civil Code provides as follows:

"Property located in Chile is subject to Chilean law, even where the owner is a foreigner and does not reside in Chile.
....
The above is without prejudice to the stipulations contained in valid agreements executed in third countries.
...
The effects of agreements executed abroad must be adjusted to Chilean law."

In this respect, under the Chilean Private International Law Code, IP rights registered in Chile are considered as being located in the country.

Sergio Amenábar, Estudio Villaseca, Santiago

Unlock unlimited access to all WTR content