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19 November 2014

Supreme Court issues important decision on ex officio refusal of applications

The Supreme Court has reversed a decision of the Industrial Property Court rejecting the application for EDMOND DE ROTHSCHILD based on the earlier mark ROTHSCHILDS, despite the lack of opposition by the owner of the earlier mark. The Supreme Court held that trademark cases arising from an ex officio refusal must be assessed according to the principle of reasoned judgment, in the same way as when an opponent is involved.

12 September 2014

Provisions on famous marks must be interpreted in accordance with Paris Convention

The Industrial Property Court of Appeals has upheld an opposition against the registration of a mark similar to a famous trademark not registered in Chile, even though the application covered different goods. The court held that the Chilean trademark law, which states that the mark applied for and the famous mark must cover identical goods for the application to be rejected, should comply with Article 6bis of the Paris Convention and Article 16.3 of the TRIPS Agreement.

13 June 2014

CHAMPAGNE cannot be registered as trademark for Class 3 goods

The Industrial Property Appeal Court has reversed a decision of the National Institute of Industrial Property in which the latter had accepted in part an application for the registration of CHAMPAGNE for the class heading of Class 3. Among other things, the court held that registration of the mark for products of Chilean origin, even for goods in Class 3, would mislead consumers into thinking that the goods come from the French region of Champagne.

26 March 2014

Supreme Court: first impressions are essential when analysing likelihood of confusion

The Supreme Court has reversed a decision of the Court of Appeals in Industrial Property in which the latter had rejected an opposition filed by the owner of the mark CRUSOE for tourism services against the registration of the mark CRUSOE LODGE for identical services. Among other things, the Supreme Court held that the likelihood of confusion between two marks must be assessed globally, and that consumers are guided by the first impression given by the marks.

26 November 2013

Decision shows lack of clarity concerning registration of slogans

The Special Court of Appeals has upheld a decision of the Institute of Industrial Property rejecting an action for the cancellation of the slogan "Dettol, 10 veces más protección que los jabones comunes” ("Dettol, 10 times more protection than common soaps"), registered by Reckitt & Coleman. An interesting dissenting opinion explicitly referred to the economic effects of the registration of slogans that do not possess the necessary originality and novelty.

23 September 2013

Supreme Court rejects application based on slogan mark

The Supreme Court has refused to register the mark TARJETAS TRAVEL DEL BANCO DE CHILE: LA LIBERTAD DE ELEGIR for services in Class 35 based on an earlier registration for the slogan 'Ripley Puntos - La Libertad De Elegir', which covered services in Classes 35 and 36. The decision suggests that, in order to be registered, a slogan must have a sufficient degree of novelty.

22 January 2013

Protected designations of origin can be registered as trademarks

The Supreme Court has upheld a cassation recourse filed by Consorzio per la Tutela del Formaggio Grana Padano and allowed the registration of the trademark GRANA PADANO D.O.P. (and design) for “cheese” in Class 29. The court stated that a protected designation of origin can be registered as a trademark when it includes distinctive graphic elements.

08 October 2012

Supreme Court of Justice recognises supremacy of parties' intent

The Supreme Court of Justice has annulled decisions of the Trademark Office and Special Court of Appeals refusing to register the trademark WORLD VISION in Class 9 on the grounds that there was a likelihood of confusion with the mark WORLDVISION, which also covered goods in Class 9. The Supreme Court stated that the visual and phonetic similarities between the marks were irrelevant in light of the co-existence agreement between the parties.

03 August 2012

Institute of Industrial Property upholds oppositions based on unregistered mark

In two decisions involving the marks SHOULDICE and CLINICA SHOULDICE, the Chilean Institute of Industrial Property has confirmed that, in order to oppose an application based on a well-known mark, the opponent must own a registration either in Chile or abroad. However, the decision shows that it is possible to oppose a trademark application based on an unregistered mark on the grounds of unfair competition.

24 April 2012

Industrial Property Law amended to implement TLT

Law 20569, which amends the Chilean Industrial Property Law, has come into force. The aim of the amendments was to allow the implementation of the Trademark Law Treaty in the country. Among other things, under the new law, 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.

25 January 2012

Court considers good-faith use of descriptive trademarks

The Second Criminal Court of Guarantee in Santiago has held that use of the word ‘Supreme’ on the packaging of Dilmah tea did not infringe the trademarks SUPREMO and SUPREMA, which are registered for tea and herbal tea in Class 30. The defendants alleged that they did not use the word 'Supreme' to distinguish the origin of the products, but to describe their quality.

15 June 2011

Supreme Court confirms broad protection of GIs

The Supreme Court has confirmed the refusal to register the trademark RUTA SOUR PICA for “sour cocktails” in Class 33. The lower court had upheld an opposition by Cooperativa Agrícola de Pica Ltda, the owner of the geographical indication 'limón de Pica' for lemons, on the grounds that there would be a likelihood of confusion if the trademark applied for was registered, even for different goods.

16 February 2011

SC recognises that bad-faith registrations may be challenged at any time

The Chilean Supreme Court has reversed a decision of the Industrial Property Court of Appeals in which the latter had rejected O’Neill Europe BV's action for the cancellation of the trademark O’NEILL on the grounds that it was barred by the statute of limitations. The decision is important in that it recognises that registrations obtained and used in bad faith may be attacked at any time.

25 November 2010

SC reverses decisions due to failure to take graphic element into account

The Supreme Court has accepted two annulment recourses filed by MGM Latin America LLC and reversed decisions issued by the Court of Appeals on Industrial Property Matters. The Court of Appeals had found that there was a likelihood of confusion between MGM's mark CASA CLUB and the earlier marks CASACLUB and CASA CLUB DE LECTORES EL MERCURIO.

28 July 2009

Adoption of Trademark Law Treaty raises concerns

Within the context of free trade agreements between Chile and the European Union and the United States, the Chilean Chamber of Representatives has approved the adoption by Chile of the Trademark Law Treaty. The adoption of the treaty must now be approved by the Senate. However, the Chilean Association of Intellectual Property has sent a memorandum to the Senate expressing its concerns.