Modifications in Chilean industrial property law

Chile

Introduction

On 2 October 2018 the government – in coordination with the Chilean Industrial Property Office – filed a bill in Congress that has amended important chapters of the Industrial Property Law. This bill seeks to optimise investment and productivity by promoting innovation and entrepreneurship; reduce the timeframe of some procedures; simplify the obtention of industrial property rights and introduce new rights.

Trademarks

The most relevant modifications in the trademark field are the following:

  • the introduction of electronic notifications;
  • the extension of the renewal period to six months, in light of international regulations;
  • the elimination of commercial and industrial trademarks (ie, special registrations that are unused and create confusion among consumers);
  • the expansion of the scope of trademarks to include, for example, moving marks, holograms, olfactory and tactile marks; and
  • the obligation of effective use of registered trademarks and a new cancellation action based on non-use.

This last is probably the most relevant change in the trademark arena. On an international level, practically all countries have standards of use to maintain the validity of a registration and prevent brand blocking. The bill states that, if the trademark has not been subject to real and effective use within the national territory after five years from the date of the registration, a third party can file a cancellation action with regard to the products and/or services granted; and

The bill also introduces new trademark infringements with stronger penalties (eg, imprisonment).

Patents

The bill sets out the following modifications with regard to patents:

  • the right to obtain a provisional patent if an inventor who – before perfecting a new product or procedure – wishes to formally apply for a patent for one year; and
  • the right to recover a patent by filing a special action. Previously, if a patent was registered by a party with no right to do so, its legitimate owner had no other option but to request a cancellation action based on the general rules, without the possibility of recovering this right.

Other modifications

Oter modifications include:

  • a new system for industrial designs, which introduces a more flexible and faster registration process without prior examination;
  • a new definition of ‘trade secret’ in accordance with the definition stated in the Agreement on Trade-Related Aspects of Intellectual Property Rights; and
  • the Chilean Industrial Property Office is granted party status in judicial matters. This is a controversial issue because it allows the office to act as a party at second instance, in procedures in which it was the judge at first instance.

Although some rules still need revising, this is an important step in Chilean industrial law as it now complies with international treaties and modern legislation.

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