New police report reveals enforcement trends

In a recently published report covering the period from June 2009 to May 2010, the Chilean police force specialized in IP crimes has announced the following results:
  • A number of proceedings have resulted in the seizure of goods that infringed registered trademarks, including HELLO KITTY, SONY, PHILIPS, KINGSTONE, DISNEY and COCA-COLA. The infringing goods also included toys and fashion products, such as perfumery, clothing and sunglasses. The value of the seized merchandise amounted to approximately $7.5 million.
  • In proceedings carried out in conjunction with the Chilean Customs Service, the police has seized infringing merchandise at free ports, which are usually favoured by infringers to commit offences.
  • The measures taken by the police to educate the population and discourage IP crimes have been broadcast in the media.
The report also states that the number of actions for the enforcement of trademark and other IP rights has increased consistently since 2005. Such actions are based on the legislation adopted between 2003 to 2005 to meet the standards of the Agreement on Trade-Related Aspects of Intellectual Property Rights, and may be brought before the public prosecutors, the courts and the Customs Service. Criminal actions are generally favoured over civil actions, as the criminal procedure - which has recently been amended - is faster.

In criminal proceedings, compensation agreements are often contemplated and are of common use. Compensation agreements, which are ratified by the courts, provide for the payment of part, or all, of the judicial costs and, on some occasions, monetary reparations. The destruction of the infringing goods is at the charge of the infringer.

Finally, the National Prosecutor's Office stated in the report that:

  • the number of enforcement cases has increased since 2005;
  • the defendant was acquitted in only 1% of cases;
  • condemnatory decisions were issued in 12% of cases;
  • 24% of cases resulted in alternative solutions;
  • 25% of cases were closed due to insufficient precedents; and
  • the rest of the cases were either grouped with other cases or not prosecuted.
Cases are closed or not prosecuted if the plaintiff fails to appear or cannot sustain the action.

Trademark owners should not abstain from bringing enforcement actions on the grounds that the Chilean market is small or that the infringements are minor - this sends the wrong signal to infringers, who know which trademark owners will defend their rights, and which ones will not. Moreover, this will hamper the work of the public organizations responsible for fighting IP crimes, which need to be backed by IP rights owners to achieve their goals.

Sergio Amenábar, Estudio Federico Villaseca, Santiago

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