Chile: Trademark procedures and strategies

Legal framework

Local law

Trademarks are governed in Chile by Law No. 19,039 (the Industrial Property Law), which has been in force since 30 September 1991. This law has been partially modified four times, with the last substantial amendments being introduced by Law No. 21,355, which entered into force on 9 May 2022.

In our opinion, the most substantial amendments as far as trademarks are concerned are:

• the elimination of the requirement of graphical representation to register trademarks, which allows the registration of non-traditional trademarks, such as gustatory marks;
• the addition of the option to register tri-dimensional trademarks; and
• the addition of the ability to sue for lapse of a trademark registration when it has not been used during five years or the use is suspended by said term.

In addition, on 4 April 2022, Chile officially became a member of the Madrid Protocol.

Treaties

Chile is a member of the Paris Convention for the Protection of Industrial Property, the World Trade Organisation’s Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement), the Trademarks Law Treaty and the Hague Convention Abolishing the Requirement of Legalisation for Foreign Public Documents (the Apostille Treaty). Free trade agreements containing IP chapters also apply, in particular those signed by Chile with the United States and the European Union.

Chile has approved the Madrid Protocol for International Registration of Trademarks, which has been in force since 4 July 2022. In addition, on 30 June 2022, Exempt Resolution No. 184 of the Ministry of Economics was published in the National Gazette, which contains instructions for the processing of international trademarks according to the Madrid System, also in force from 4 July 2022.

Unregistered marks

Unregistered trademarks grant their holders only the right to oppose a trademark application by a third party or to apply for the invalidation of the trademark registration in the following cases:

• when the unregistered trademark has been actually and effectively used in Chile prior to the application for registration made by a third party for the same or similar trademark for identical or similar goods or services, in the same class or related classes, and coexistence may create confusion; and
• when the unregistered trademark is famous or notorious and is registered abroad but not in Chile, and this trademark is identical or similar to a trademark requested in Chile to distinguish the same products and services – a situation that may create confusion.

The latter claim must be supported by evidence of fame or notoriety among the relevant consumer public in Chile.

Moreover, the Chilean Institute of Industrial Property (INAPI) may reject an application on the basis of an unregistered prior mark, provided that the existence of the unregistered trademark is publicly known to the extent that its renown does not require evidence.

If the owner of a famous unregistered mark is successful in an opposition or cancellation action, it has 90 days from the date of the decision to apply for registration of the mark in its own name. Failure to do so entitles any third party to file an application for that mark, with priority being given to the party whose application for registration was rejected as a consequence of the opposition or invalidation action. The 90-day term applies to those that successfully oppose an application on the basis of previous use in Chile.

Registered marks

Ownership

Any person or legal entity, whether domestic or foreign, may apply for and own a registered trademark.

The representative requires a power of attorney that must be signed by the legal representative of the applicant’s firm, but it need not be notarised or legalised. It can be credited up to 30 days (for domestic applicants) or 60 days (for foreign applicants) after the application has been filed.

For power of attorney and other documents to be filed with other authorities or Chilean courts, the relevant Hague Convention eliminates the requirement to legalise public documents that originated abroad, replacing it with just one step of certification in the form of the Apostille Treaty, which is already in full force in Chile.

Protected

Any sign capable of distinguishing products and services can be protected. Such signs can consist, among other things, of words, letters, numbers, drawings, colour combinations, olfactive marks and three-dimensional images. Phrases related to publicity or advertising may also be registered, provided that they are associated with a registered trademark. Sound trademarks are allowed if they are represented graphically and are accompanied by the filing of a sound recording. Trademarks that consist of letters or numbers must be represented by a characteristic drawing that gives distinctiveness to the letter or number. Geographical indications and appellations of origin, as well as certification and collective trademarks, are also protectable.

Not protected

The following may not be registered as trademarks:

1. coats of arms, flags or any other symbols, names or initials of any state or international organisation, or state public service;
2. technical or scientific denominations in respect of the object for which they are destined, plant variety denominations, common international denominations recommended by the World Health Organisation and those indicative of therapeutic action;
3. the name, pen name or picture of any natural person, except if consent is given by that person, or their heirs if deceased (however, the name of a historical celebrity may be registered if at least 50 years have elapsed since their death and the registration does not affect the personality’s honour, and names of persons cannot be registered when this constitutes an infringement of the signs described in points (5), (6) and (7) below);
4. reproductions or imitations of signs of official guarantee or control stamps adopted by a state without its authorisation, and reproductions or imitations of medals, diplomas or honours granted in national or foreign exhibitions whose registration is requested by someone other than the person who obtained them;
5. expressions or signs used to indicate the kind, nature, origin, nationality source, destination, weight, value or quality of the products or services; those of general use in trade to name a certain kind of product or service; and those that exhibit no innovative feature or that describe the products or services to which they must be applied – however, signs that are not inherently distinctive may be registered if they have acquired distinctive character through their use in the country;
6. signs that may induce error or deceit with regard to the source, quality or kind of product or service;
7. signs that are identical to other marks, or that graphically or phonetically resemble other marks that have been registered abroad for the same products or services in a manner likely to create confusion, provided that the prior marks enjoy fame and notoriety;
8. trademarks that are identical or similar to prior well-known Chilean-registered trademarks, requested for different classes, however related, if the registration could affect the interests of the owner of the well-known trademark;
9. signs that are identical to, or that graphically or phonetically resemble in a confusing manner, other trademarks that are already registered or have validly been applied for earlier marks in the same class, or that have effectively been used in Chile prior to the application date – INAPI may allow coexistence agreements, provided that they do not affect the prior rights of third parties or cause consumer confusion;
10. the colour of either products or containers, and colours themselves;
11. protected geographical indications and appellations of origin; and
12. signs that are contrary to public order, morality and good behaviour, and the principles of fair competition and business ethics comprised therein.

Procedures

Examination

Each application is subjected to an examination to determine whether it meets the formal requirements, including whether the application specifies the goods or services of the Nice Classification for which registration is sought. INAPI notifies the applicant of any changes required. The applicant has 30 working days to file the necessary corrections. Failure to do so means that the application will be deemed abandoned. Where there are no formal objections or where these objections have been corrected in a timely manner, the application is accepted for further pursuit and published in the Official Gazette within 20 working days for opposition purposes.

After publication, the application is subject to substantive examination. Any objections must be filed within 30 working days of notification.

Opposition

Any interested party may file an opposition within 30 working days of publication. The opponent may base its opposition on any of the grounds to reject an application provided by the law.

Registration

Applications that have passed the formal and substantive examinations and are unopposed, or that have overcome any objections or oppositions by a final decision, are accepted for registration. Mark owners have 60 working days from that date to complete the payment of the registration fees. The registration shall be for an initial period of 10 years, renewable indefinitely for consecutive periods of 10 years.

A granted registration can be divided during the prosecution of a cancellation action or during an appeal against a decision in a cancellation action.

Removal from register

Any party can voluntarily withdraw a registration. When made through a representative, special powers are required.

Registration granted to signs deemed unprotectable by the Industrial Property Law may be cancelled on the basis that prohibitions for granting registration were ignored. Such actions must be filed within five years counted from the registration date.

However, there is no time limit for filing a cancellation action against a mark registered in bad faith. A cancellation action is heard at first instance by the head of INAPI and at second instance by the Industrial Property Court. In some circumstances, decisions of the Industrial Property Court may be appealed before the Supreme Court.

Revocation

Revocation on the basis of non-use was incorporated in Chile by Law No. 21,355, which modified the Industrial Property Law when it came into force on 9 May 2022. This modification established a cancellation action for non-use.

For new trademarks with registration granted after 9 May 2022, registration will be cancelled if:

• the trademark has not been put to real and effective use in within the Chilean territory after five years from when registration was granted (by the owner, or by a third party with their consent) to distinguish one or more of the goods or services for which the registration was granted; or
• such use was uninterruptedly suspended for the same period.

For trademarks with registration granted before 9 May 2022, the five-year term begins after the first renewal that occurs after 9 May 2022. The modification that brought these rules into force also established a cancellation action for when a trademark has become generic.

Timeframe

From the time of filing, it takes, normally:

• six to eight months for an unopposed application to proceed to registration;
• 18 months for an opposition procedure to reach a first-instance decision (and a further 24 months for an appellate decision to issue);
• 20 days for a renewal for being accepted;
• two weeks to record mergers and changes of name;
• two to three years for a cancellation action at first instance, six months to a year at second instance and about eight months if a further recourse is filed before the Supreme Court; and
• three months for renewals.

These terms are still presently and temporarily uncertain as a consequence of the covid-19 pandemic.

Searches

Searches for identical trademarks (registered or applied for) are available online and free of charge at www.inapi.cl. Free searches for previously requested trademarks or registered identical trademarks that coincide in their first part to, or contain, the trademark searched for are also available online for all classes. Searches cover trade names and slogans, but only verbal descriptions of graphic marks. The databases cover the past 30 years.

Enforcement

Complexity

The enforcement of a trademark, by means of the Industrial Property Law, requires that the trademark be registered in Chile.

The actions available consist of border measures, criminal actions and civil actions.

Border measures

Border measures are regulated by the TRIPS Agreement, internalised by Law No. 19,911 in 2003, and must be followed by actions in the relevant courts. When properly supported, border measures are usually effective.

Criminal actions

Criminal actions are available before the ordinary criminal court with jurisdiction over the area where the offence was committed. These actions are open mainly when an unauthorised third party is using in bad faith a trademark that is identical or similar to another that is already registered for products or services that are identical or related to those protected. To be in a position to initiate criminal actions, it is necessary that the registered trademark bears in a visible form the words Marca Registrada (Registered Trademark), the initials MR or the symbol ®. The penalties consist of a fine and the confiscation of the products bearing the forged trademark. The court shall decide how to dispose of the tools and materials used to commit the infringement by ordering either their destruction or their distribution to charitable institutions. Finally, Law No. 21,355 incorporates new criminal sanctions in the Industrial Property Law for those who counterfeit a trademark, which include imprisonment.

Civil actions

Civil actions are prosecuted before the ordinary court that has jurisdiction over the defendant’s address. Such actions are available against any kind of violation of a registered trademark. The object of civil actions is to put an end to the infringement, to obtain indemnification for damages and to adopt the necessary measures to prevent the infringement from continuing. Compensation for damages may be determined taking into account one of the following options in accordance with the trademark owner’s choice:

• the profits that the owner failed to receive as a consequence of the infringement;
• the profits that the infringer would have received as a consequence of the violation; or
• the price of a licence, taking into account the value of the infringed rights and the contractual licences that may have already been granted.

If the mark owner so desires, compensation for damages may be calculated according to the general rules of the Civil Code, which are much more complex. Preliminary and precautionary measures are contemplated in the case of civil actions. In addition, in counterfeiting cases, the owner of the trademark that has been subject to counterfeiting may request that a compensation for damages caused could be substituted by a single fine that cannot exceed 2,000 monthly tax units per infringement. Such an option may be exercised in a claim for indemnity from damages.

Civil infringement actions to protect unregistered trademarks may be available under the Unfair Competition Law No. 20,169, but not under the Industrial Property Law.

Timeframe

The competent criminal court may order the seizure of products bearing the infringing sign and of the elements directly used to imitate the registered trademark immediately after filing the complaint. The time to obtain this relief will depend on the court’s criteria and on the quality of the evidence filed by the complainant.

According to the new Procedural Criminal Code, final decisions in criminal cases should take no longer than one year and a maximum of two. It is also possible to obtain an earlier settlement of the case by using the alternative reparatory agreements accepted by the court. Civil actions take approximately two years at first instance and a further two years at second instance. Terms are temporarily uncertain as a result of the covid-19 pandemic. While a decision is pending, it is possible to take preliminary or precautionary measures based on the merits of the case and the quality of the evidence rendered.

Criminal actions are much more common than civil ones. The Chilean courts are becoming more familiar with trademark cases, so the quality of the decisions is improving.

Unfair competition actions take around the same time as civil infringement actions.

Ownership changes and rights transfers

Assignment of a trademark must be executed by means of a document signed by the parties involved. In the case of a change of name, the official documents must be certified by the proper local authorities. Licence agreements must be executed in the same way as assignment agreements.

The recording of assignments, changes of name and licences with INAPI is not compulsory. However, if these are not recorded, they will have no legal effect against third parties.

Related rights

While the law does not refer specifically to the cumulative protection of trademarks and copyright, a graphical or combination trademark can be protected under copyright law provided that it has artistic value.

Online issues

The Network Information Centre (NIC) Chile, the manager of the ‘cl.’ domain, follows an alternative dispute resolution policy in relation to ‘.cl’ domain names that is similar to the ICANN UDRP. Under NIC Chile’s rules and policy, trademark owners may claim for:

• early revocation of the domain name based on prior application or registration or infringement of their trademark rights within 30 days of domain name registration; or
• late revocation of the domain name based on prior application or registration of a trademark or other arguments, after 30 days as from the domain name registration.

The regular Industrial Property Law provisions are applicable to online infringement: “Those who maliciously use, for commercial purposes, a trademark identical or similar to another registered for the same goods or services in respect of goods or services related to those protected by the registered trademark.” To proceed with an action regarding online infringement, it is necessary to have a trademark recorded in Chile.

According to NIC Chile’s rules, for any person who wants to take a ‘.cl’ domain name, provisions are available to ensure that its registration does not contravene the rules regarding the exercise of freedom of expression and information, the principles of fair competition and business ethics.

NIC Chile’s rules provide that one of the grounds that could be filed for a late revocation action against a domain name that is already recorded would be for the recorded domain name to be identical or deceptively similar to a name by which the complainant is known, or to a trademark or other expression in which the complainant claims to have prior rights.

NIC Chile has no public dispute resolution policy for the ‘.cl’ ccTLD.