Attorney at Law, ClarkeModet Chile
A couple of months ago, the Chamber of Deputies & the Senate approved the adherence of Chile to the Agreement of the Madrid Protocol for the International Registration of Trade marks, which is expected to be in force in March of the next year 2022 (since the deposit of the instrument before the World Intellectual Property Organization WIPO should take place on January of 2022).
With this adherence, Chile will be part of a small group of Latin American countries that have already implemented the System, such as Colombia (2012), Mexico (2013), and more recently Brazil (2019).
In this context, it is important to analyze what can we expect for Chile with the incorporation of this System, and what could be the legal, social and economic implications, the advantages and challenges that this may represent for our country, which are closely related to the definition of public policies that Chile wishes to adopt.
Advantages of the Madrid system
Cost & Time saving
We can identify a few advantages that this tool for international registration of trade marks could represent for the trade mark holders, such as a considerable saving in time and money for the effective protection of their trade marks, by optimizing the current process as well as the associated costs involved in applying separately for the registration of the trade mark in each of the countries in which the interested party requires it.
Indeed, the applicant for an international trade mark registration using the Madrid System can do so through a single trade mark application, paying a single set of fees in a single currency (Swiss franc), using a single power of attorney (PoA) and in a single language (which can be English, French or Spanish), with a single registration number and a single renewal date, having access to more than 108 members currently covering 124 countries around the world, offering the possibility to access in markets that represent more than 80 percent of the World Trade.
Foreign investment in the country and costs reduction
Together with the above mentioned, it is expected that Chile's entry into the Madrid Protocol could generate two beneficial effects for the national economy: i) On one hand, a potential increase of the foreign investment, since trade mark owners from member countries will be able to use this registration system to designate Chile and register their trade marks in our country, to offer the products or services that these trade marks protect within the relevant national market; and ii) On the other hand, small and medium-sized companies (SMEs) will have real and effective access for the international protection of their trade marks, which now is extremely difficult for them due to the costs involved.
Challenges of the Madrid System
Nevertheless, the implementation of this system of international registration of trade marks also represents a series of challenges that must be addressed for a successful the result.
The so called “Central Attack”
The first of these challenges is the dependence or vulnerability of the international trade mark registration to the so-called "Central Attack", by which it becomes invalid if the application or registration that is used as its basis is finally rejected to registration, abandoned, canceled, annulled, or expired due to lack of renewal within 5 years from the date of the international registration. This has become a huge problem, especially in those countries which have Trade mark Registration Offices that are stricter in terms of review and granting the trade mark registrations, which undoubtedly represents an enormous challenge for the Chilean Trade mark Office (INAPI).
INAPI’s implementation of the Madrid System – internal transformation
Along with the above, the costs that the implementation of this International Trade mark Registration System could significate for Chile and INAPI must be responsibly evaluated, since a reform of this nature requires a necessary transformation, which could imply an increase in the number of examiners or qualified personnel to know about these matters, its infrastructure and the technological platform, its databases and its electronic networks for the proper functioning of the System.
The good news is that the Chilean Trade mark Office (INAPI) has been recognized worldwide as very efficient and fast for the filing and registration of trade marks, so we can expect that there would be no delays regarding the implementation of the Madrid Protocol.
TM protection strategy – training plan
Additionally, it is very important to design a trade mark protection strategy according to the special needs of each trade mark holder, since the requirements of a multinational company are not comparable with those of small and medium-sized enterprises (SMEs), an issue that also requires an adequate training of the legal IP professionals and other stakeholders for the correct use of the System. We have information that INAPI is currently designing a training plan for the local users, which could start within the next months.
System should function adequately
Finally, it is essential for the proper functioning of the System to have an adequate surveillance or brand watch service of registrations and applications for national trade marks, since it is expected a tremendous increase in applications for registration that will come from abroad (by designations of Chile), which will generate an increase in the litigation and defense of these intangible assets within the country, as happened in the past with the adherence to the Protocol of the other Latin American countries, Colombia, Mexico and Brazil.
We will have to be patient and wait to see how this System works once it enters into force in March of the next year, but our legal recommendation is to start from now designing the strategy of filing, prosecution and enforcement of your trade marks in Chile for the next decade. To begin with your TM strategy in Chile and benefit from the Madrid system in Latin America, don’t forget to contact the Latin America IP HD Helpline.
- Publication date
- 21 September 2021