Trademark Office moves to protect GIs and appellations of origin

The Chilean Trademark Office (TO) has issued two decisions that indicate that it will take into consideration Chile's legal obligations towards the protection of geographical indications (GIs) or appellations of origin, and will refuse an application to register a mark made up of or containing a GI or appellation of origin, if the mark is filed by an unauthorized party and is likely to mislead the public as to the true origin of the goods to which it relates.

Chilean trademark law is governed by the Industrial Property Law, which sets out a detailed list of absolute and relative grounds for refusing a trademark. It states that a trademark should be refused if, among other things, it includes or is made up of expressions (i) used to indicate the type, nature, origin, nationality, source, destination, weight, value or quality of the products concerned, and (ii) that mislead or deceive as to the source, quality or type of the relevant products. Chile has also acceded to the Paris Convention for the Protection of Industrial Property, which protects appellations of origin and GIs. Additionally, it has signed an agreement with the European Union, which provides extra protection for the names of, among other things, wines, spirits and flavoured drinks.

In the first decision, the TO rejected an application to register the mark CARMEN MARGAUX for products in Class 33 of the Nice Classification on the basis that Margaux is a famous wine-producing area in France and is also a protected appellation of origin (Case 127.462). The proposed registration was, therefore, likely to mislead or deceive consumers as to the source or quality of the related products.

The second decision saw the TO reject an application to register the mark LA PROVENCE for products in Classes 29 and 30 (Case 128.295). The TO noted that Provence is the name of a region in France and is protected as an appellation of origin. Thus, the proposed registration was likely to confuse consumers into thinking that the products sold under the mark originated from France.

Chile does not, as yet, recognize registrations of appellations of origin under the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration by groups of producers. Neither are such provisions included in the agreement between Chile and the European Union protecting wines, spirits and flavoured drinks. However, the Chilean government has brought a bill before Congress, which aims to amend national legislation so that it is in line with the Agreement on Trade-Related Aspects of Intellectual Property Rights. The bill includes amendments to the regulation of GIs and appellations of origin.

Carmen Paz Alvarez, Sargent & Krahn, Santiago