New IP Law in Chile (II): main changes in the trade mark system

Robert Pocklington Vicente

IP expert at the Latin America IP SME Helpdesk

 

If you are an attentive person, you already know that previously we were discussing the main changes in the IP Law in Chile, regarding patents. Provisional patents, patent usurpation action, or bolar exemption for agrochemistry, are just some of the figures that were introduced in this new IP Law regarding patents.

The IP landscape in Chile has changed, not only for patents but also: trademarks (today’s article), industrial designs, utility models, trade secrets, geographical indications, and appellations of origin. This reform excludes Plant Variety Protection (due to the pending signature of the CPTTP -Comprehensive and Progressive Agreement for Trans-Pacific Partnership- and UPOV ‘91).

If you are an EU SME willing to protect your brand in Chile, and you would like to know how to register your trade mark, how to enforce your brand in Chile, stay with us, since today’s blog is about the main changes in Chile for the trade mark system.

 

Changes related to trade marks

            1) A new definition of trade mark (say hello to non-traditional TMs)

The new definition of brands in the Republic of Chile excludes the graphic representation requirement. Thanks to this minor amendment to the definition, the IP world can now celebrate the recent signing of Chile FC: non-traditional trade marks. This way, the term “susceptible of graphic representation” is removed from the requirements a sign must have to be registered as a trade mark.

This deletion broadens the spectrum of signs that are admissible, and it expressly includes now olfactive and three-dimensional trade marks, and also animated or moving marks, patterns, combinations of colors and position marks.

            2) Elimination of the registration of trade marks in connection to commercial and industrial establishments.

Bye bye to store brands! If you are an EU SME, bare into account that in Chile from now on it is only possible to register product or service trade marks from the 45 International Classes of the Nice Classification.

EU SMEs who had Commercial and Industrial establishment trade marks in force in Chile, must be renewed as service marks in classes 35 and 40, respectively, to retain the rights acquired.

            3) New regulations in connection to collective and certification trade marks.

New rules are created to effectively regulate collective and certification marks, establishing the requirements when providing the regulations of use, which is much in accordance with international standards. These requirements are:

a) Contain the holder’s identification data

b) Identify the products or services object of the certification

c) Indicate what will be the modalities for the use of the mark

d) Contain the reasons why the use it, and conditions for it to be prohibited to a member of the association (collective mark), or to the previously person (certification mark)

e) Include other references that are established by law

            4) Inclusion of cancellation procedures

As already mentioned under point 2, a new Article (27 bis, item A) states that a trade mark will be cancelled under certain circumstances, if:

1. the trade mark is not used by its owner for a period of five years prior to the date of filing of the cancellation action; or
2. the registrant has tolerated that the trade mark be considered as the usual designation for a determined product or service, losing its distinctiveness. This does not apply if the registrant has consistently used the usual indications of a registered trade mark.

All cancellation procedures will be sustained before the Chilean IP Office, and only the trade marks that are granted or renewed after this new law is effective will be vulnerable to cancellation actions. Any trade mark granted before this date, will not be subject to use requirements, until its renewal.

Regards cancellation, no cancellation will be issued ex officio. To file a cancellation action, the plaintiff will have to prove a legitimate interest in the cancellation of the trade mark. Also, as good sense indicates, the proof of use must be filed by the owner of the registration, who is of course the one best prepared to prove it, inverting the burden of the proof.

As to the cancellation of a trade mark, it can be total or partial. In the latter case, the registration will remain valid for those products that the registrant does use the trade mark for, as proved with the evidence brought to the procedure.

Last, the new Chilean legislation foresees the possibility of filing a “cancellation action” against a trade mark as a counterclaim in a nullity or opposition procedure, using it as a defense. Both the initial claim, and the cancellation action will be solved jointly.

            5) Use of names or pseudonyms

For the first time the new regulations allow, certain legitimate uses of the mark to third-parties who are not the owner.

The rights conferred to the owners of registered trade marks shall not prevent the exercise of the right of any person to use, in the course of commercial operations, his name or pseudonym or the name of his predecessor in business, except when said name is used in such a way that it leads to an error or confusion to the public.

 

The owners of registered trade marks that incorporate geographical, generic or descriptive concepts may not prevent the use of such concepts when this is intended to inform the geographical origin, gender or other descriptive characteristic of the product or service, except when it leads to an error or confusion to the public.

            6) Civil enforcement

In case of a trade mark counterfeiting in Chile, the law authorizes the substitution of damages for a single compensatory sum determined by the court in relation to the seriousness of the infringement, which may not exceed 2,000 UTM (approx. € 130.000) per infringement.

            7) Criminal enforcement

The specific crime of trade mark counterfeiting is typified, establishing a term of imprisonment that ranges from 61 days to three years, together with fines.

The claims that are contemplated are the following:

• Whoever counterfeits a trade mark that is already registered for the same products or services.
• Whoever manufactures, introduces to the country, has for commercialization, or commercializes objects that feature counterfeits of trade marks that are already registered for the same products or services, for profit and for their commercial distribution.

Additionally, it is set forth that whoever has for commercialization or commercializes directly to the public products or services that feature counterfeits of trade marks that are already registered for the same products or services, will be penalized with the penalty of minor imprisonment for a period that ranges between 61 and 541 days.

            8) Renewal of trade marks

Trade mark registrations will remain valid for 10 years from their granting. Notwithstanding the foregoing, the new regulations allow its renewal from 6 months before its expiration date, and up to 6 months after said date. Worth mentioning that a surcharge corresponding to 20% will be applicable for each month of delay with respect to the expiration date.

The owner shall have the right to request its renewal for equal periods during its validity term or within 30 days following the expiration of such term.

 

The TM changes under the new Chilean IP Law in a nutshell:

 

To be always updated with any IP changes in Latin America...

The Latin American landscape is constantly changing and improving not only nationally, but also at an international level. If you would like to be up to date with the latest news about IP in Chile, or any country in Latin America, and you happen to have questions, please let us know by making use of our Helpline. It’s free, fast (maximum 3-working days), and you will get an answer from our IP experts back in English, French, Italian, German, or Portuguese (upon experts’ availability).