The LegalFácil Guide to Intellectual Property Law in Chile: Trademarks

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The LegalFácil Guide to Intellectual Property Law in Chile: Trademarks

It is easy and cheap to get a trademark in Chile, and unlike certain countries (such as the U.S.) where use is considered the main criterion for establishing your trademark, registration is fundamental for protecting your rights in Chile.  It’s therefore highly recommended that you register your trademark as soon as you can.

As we saw with copyright, the two most important things to understand about trademark protection in Chile are the treaties and FTA’s that have brought it in line with international standards, as well as a few important idiosyncrasies of Chile’s interpretation of trademark law

 

International Treaties

Like the U.S. and many other countries, Chile is party to the Paris Convention for the Protection of Industrial Property, one of the most important international treaties governing the protection of trademarks and patents, as well as the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement).

Its FTA with the U.S. mandates even stronger trademark protections than those established in the TRIPS Agreement and Paris Convention; these stronger protections are often referred to as "Trips Plus."

Chile is not yet party to the Madrid Protocol of the Madrid Agreement, which was designed to allow people and businesses to follow a common procedure to register a trademark in multiple countries simultaneously.  That means that, regardless of where your trademark is used and/or registered, you must complete the entire procedure established by the INAPI in Chile in order to have protection here.

 

Use vs. Registration

The TRIPS Agreement leaves it up to each country’s discretion to determine to what extent use is a necessary condition for establishing rights over your trademark.  In many countries, including the U.S., using a distinctive sign or word on the market for a given product or service is sufficient for you to be granted trademark protection over it; furthermore, in the U.S., you must be able to prove that you have used the sign on the market in order to be granted and to maintain registered trademark.

In Chile, on the other hand, to acquire trademark rights over your mark, you must simply register it with INAPI; and once your trademark is registered, it is yours until the registration term expires, regardless of whether or how much you use it.

In Chile, use only comes into play if you have used but not registered a trademark and want to oppose a trademark application or file for an annulment of an existing trademark.  In such cases, you can use the fact that you have used the mark as grounds for your opposition, but without registration, the burden of proof will be on you.

 

What qualifies as a trademark?

A trademark refers to any distinctive sign that can be graphically represented designating products or services of a particular individual or company on the market, or its slogans. Protection is granted to distinctive names, letters, and numbers, as well as figurative elements such as pictures, symbols, color combinations, sound marks and combinations of these signs.  Unlike in some other countries that are party to the TRIPS agreement, you cannot trademark 3-dimensional signs in Chile.

In Chile, contrary to global norms, trademark protection can also be granted to a name or sign that identifies individual industrial and commercial establishments. These trademarks must be registered in the region of Chile where the establishment is located. (Chile has 15 regions).   However, you can ensure the same degree of protection for your business and its establishments merely by registering your trademark for your given product or service with INAPI in Santiago.

Chile follows the classifications laid out by the International Classification of Goods and Services, under the Nice Agreement, a standard global system dividing goods and services into 45 classes eligible for trademark.

 

National Treatment

Each country that is party to the Paris Convention and/or the TRIPS Agreement must treat nationals from any other member country in the same way that it treats its own nationals. A U.S. citizen or company may register a trademark or patent in Chile just as a Chilean can; the process and requirements are the same, and the same protection will be granted.

 

  • Priority Rights

When a request for a trademark registration has been previously filed abroad, the applicant will have a priority period of 6 months during which the filing date in Chile will be considered the same as the original filing date abroad. For example, if you file a trademark in the U.S. on January 1, you have priority rights over the trademark in Chile until June 30, and regardless of when you file it in Chile during that 6-month window, the filing date will be considered January 1. If you do not file during this period, you lose the priority right and the trademark will be evaluated according to the filing date in Chile.

 

Defensive Registrations

Many foreign companies protect their trademarks for defensive reasons, especially when they are well-known trademarks that may attract the attention of cybersquatters or other dubious enterprises. As the saying in Spanish goes, “Mejor prevenir que curar” – better to prevent (through registering) than to cure (through a legal action).

 

Customs

Chilean customs (aduana) has the power to carry to check for IP infringement through administrative procedures, whether they are acting upon petition or ex-officio.   If, based on a simple physical examination of the goods, there is evidence of IP infringement, Customs authorities may hold the goods for a period of 5 days while informing the rights holder.  The rights holder can then initiate a civil action and provide information about the authenticity of the goods. Companies for whom counterfeits and other illegal imports are a concern may contact customs officials to keep them updated and help them recognize genuine products and legal imports.

 

 

Registering Your Trademark

Preliminary steps – Required documentation for application – International classification of your trademark – Post-application process – Costs – Timeframe –Duration & renewal

 

Preliminary

Before applying for a trademark, it’s a good idea to (1) verify that it hasn’t been registered already by another party and (2) determine whether it is likely to be accepted by INAPI.

You can search trademarked words and phrases on the INAPI website for graphic similarities, while phonetic searches of a word mark or logo can only be done via a specialized database that IP lawyers use.  An IP lawyer will also be better able to search for possibly conflicting trademarks and gauge how well yours will fare in the trademark application process.

 

Required Information & Documentation

The application asks for

  • your name;
  • your address (you do not need a legal address in Chile);
  • the international class in which you request trademark protection, and a detail of the goods or services for which you seek protection;
  • if applicable, details of your representative and your power of attorney (if your lawyer is filing for you);
  • if applicable, 6 copies of the logo; and
  • a copy of the payment of the initial official fees (detailed below).

 

Once you file the trademark, you will obtain a copy of your submission with the application number.   This number will allow you to track the status of your application.

 

International Classification

Regarding the international class of your trademark, you can determine which class is most appropriate by taking a look at the interactive international classification interface of the World Intellectual Property Organization:

http://www.wipo.int/classifications/nivilo/

The interface allows you to search and navigate the different international classes that are used worldwide under the Nice Agreement for the International Classification of Goods and Services.

 

Post-Application

After you have submitted your application, it will be processed by INAPI in several steps:

  • INAPI will review your application and determine that it contains all the formal requirements, which at least one month.
  • If the trademark application is accepted, your trademark must be published in the Boletín de Marcas within the Diario Oficial. (Trademark Bulletin in the Official Gazette). The publication must be requested by the applicant and paid for in the offices of the Diario Oficial, ins the INAPI offices. It may also be done online as instructed at INAPI’s web page.
  • A 30-day período de oposiciones (opposition period) will begin with the publication of the trademark. During this time, third parties can claim that your trademark should not be granted, specifying the grounds for opposition. Possible grounds for opposition are established in the law, and include your trademark's bearing confusing similarity with an existing registered trademark, among others.
  • INAPI then examines your application thoroughly to determine if your trademark application is valid and complies with the legal requirements.  If there are any observations, they will be communicated to the applicant, together with any opposition made. You have a 30-day period to address the observations and the oppositions.  (For this process,  you will need an attorney.)
  • INAPI will then consider these arguments, granting or rejecting the trademark application. This decision may be appealed within a period of 15 days.  Appeals are heard and decided by the Industrial Property Tribunal.
  • Once INAPI accepts the trademark for registration, the second and final payment of the official fees must be made within 60 days. Your trademark will be registered as of the day of the payment. You may request a certificate for a small sum.

 

Costs

The costs of filing for a trademark in Chile are the following:

  • Official fees: For each class of product or service for which you request protection, you must pay a fee of 3 UTM (Unidades Tributarias Mensuales, a variable unit of account used in Chile for tax calculation purposes; currently 1 UTM is equivalent to approximately 35,000 Chilean pesos, or about US$80, though the rate is constantly adjusted). When you file your trademark application, you must pay 1 UTM that day for each class for you seek protection, and 2 UTM (approximately 70,000 Chilean pesos, or about US$160) when your trademark is registered. If requesting protection for commercial establishments, the Official fee will include a special fee for each Region.
  • Publication fees: The fee for publishing the extract of your trademark application in the Diario Oficial will depend on the length of the extract; these fees are published on the INAPI web site every year.
  • Legal fees: these will depend on your particular requirements, but you should expect to pay at least US$2,000.

 

Timeframe

Though you can file your application in a matter of hours, the entire trademark registration process takes at least 6 to 8 months, often longer.  Importantly, you’ll be granted a germen de protección as soon as you file your application, meaning that your trademark is technically protected during the registration process, regardless of how long it takes and whether or not you are even granted protection in the end.  If you are not granted trademark protection, of course, this protection automatically expires.

 

Duration and Renewal

A trademark lasts ten years from the time it is granted. It can be renewed indefinitely.  There are no annual maintenance fees for trademarks.  Unlike in some other countries, it is not necessary for you to have used your trademark at any point during its 10-year term in order for you to renew it.  All that matters is that you registered it once and, if you wish to renew, that you register for renewal.

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