TRADEMARKS REGISTERATION AND FILLING IN CHILE
Chile ranks high on the World Bank‘s list of doing business and attracts more and more commercial innovators. To compete with other opportunity-seekers it is essential to register your trademark in Chile. By registering trademark in Chile, the applicant can secure its business’ revenue and brand’s omnipresence.
A registered trademark in Chile will legally protect the owner’s brand and give him exclusive rights to his invention for a period of 10 years, which can be extended successively for the same period of time.
Where to register a trademark in Chile?
The National Institute of Industrial Property (Instituto Nacional de Propiedad Industrial, INAPI) is in charge of the administration of filing, prosecution and registration of industrial property in Chile. The trademark owner to register his trademark in Chile needs to submit the completed application the National Institute of Industrial Property .
The law that governs trademark protection and registration in Chile is the Industrial Property Law N.19039.
What is a trademark in Chile?
A trademark is any type of sign that can be graphically represented and can be used to distinguish products, services, or commercial or industrial establishments in the marketplace.
Trademarks may consist of words alone or a combination of words, numbers and/or symbols (denominative trademarks), drawings alone (figurative trademarks), a combination of the two aforementioned (mixed trademarks) and sounds (sound trademarks).”
Slogans can also be registered as long as they are attached to a previously registered trademark of the product, service, or commercial or industrial establishment for which it is intended.
The protection granted by a trademark is territorial and temporary: it is valid nationally for a period of 10 years, indefinitely renewable in 10-year increments, as long as the corresponding fee is paid.
How to register a trademark in Chile?
The procedure for registering a trademark in Chile is divided into three stages: filing and formal examination (preliminary review) of the application, publication of the extract in the Official Gazette, and substantive examination of the application.
Ways of filing applications
There are two ways to file a trademark application in Chile:
a) In person, by filing the correct form at INAPI´s office (Avenida Libertador Bernardo O’Higgins Nr. 194, 1st floor, from Monday to Friday, between 9am to 2pm). Please keep in mind that the form must be typed and that an initial fee must be paid to the Cuenta Única Fiscal (Single Treasury Account) through Form No. 10 on Fiscal Revenue. This payment must previously have been made at a bank or a tax collection agency.
b) Online, by filing an electronic application on the official website (www.inapi.cl). In this case, the initial fee must be paid via electronic transaction, such as through a bank transfer or credit/debit card.
To access INAPI’s web services, owner can use his INAPI account or his Clave Única (Single Password). If you do not yet have a Clave Única or you do not know what is it, please visit Clave Única
Filing Power of Attorney
When a trademark registration applicant is a company, group of people, or a foreigner residing abroad, they must act through representation. The representative shall file the corresponding powers of attorney granting him or her the authority to carry out the application procedure for registering trademark.
If the applicant is a foreign resident, he or she must designate a representative resident in Chile to represent the applicant in the processing of the application.
Filing documents in response to Application remark
The applicant or representative can and/or will be required to file documents to INAPI in response to an application remark performed by the Trademarks Division while conducting either formal or substantive examinations. These documents can be filed in person at the offices or online.
Main grounds for the non-registrability of a trademark in Chile
Before filing the application for registering a trademark with INAPI, the applicant should consider that there are certain words that are ineligible to be registered as a trademark.
The regulations are clear on this matter and similar to those in the rest of the world. In Chile, you cannot register a trademark if it has any of the following characteristics, established under Article 20 of Law Nr. 19,039:
- The sign lacks distinctiveness, that is to say, none of its elements can be used to distinguish that the products or services provided originate from one company and not any other (Article 20(e)). This happens when a word is used to describe the type, nature, origin, nationality, destination, weight, value, or quality of the products or services, or is of common use in the market to designate this type of products or services.
- The sign is a technical or scientific name for the object for which it is intended; a name of a plant variety, a common international name recommended by the World Health Organization, or a name indicating therapeutic properties (Article 20(b)).
- The sign consists of the shape or color of the product or its packaging.
- The sign consists of the color in itself (Article 20(i)).
- The sign is contrary to morality, public order, or proper practice. An example is registering a trademark for an illegal narcotic (Article 20(k)).
- The sign consists of the emblems and symbols of a State, or the flag, name, or initials of any State. This is the case for flags and national coat of arms of countries, which cannot be appropriated (Article 20(e)).
- Signs that are conducive to error, deception, or confusion regarding the geographic origin, quality, or material of the products or services provided (Article 20(f)).
- Signs that are in conflict with rights owned by third parties.
- Marks that are identical or graphically or phonetically similar to other marks previously registered or legitimately requested in Chile for identical or similar products or services (Article 20(h)).
- Marks that are identical or similar to others registered abroad, for the same products or services, that are famous or wellknown (Article 20(g)).
- Marks that consist of the name, pseudonym, or likeness of any natural person, except with the consent of that person or that person’s heirs, unless 50 years have passed since his or her death and that mark does not prejudice his or her honor (Article 20(c)).
- Signs likely to mislead or create confusion among public consumers, with respect to the source or attributes of the product that a geographical indication or appellation of origin is intended to distinguish in Chile (Article 20(j)).
Trademark Renewal in Chile
A trademark is registered for a period of 10 years and can be indefinitely renewed. Renewal may be requested even up to 30 working days after the trademark has expired.
This means that once a trademark has been registered, if it is consistently renewed on time before its period of validity ends, the trademark may last indefinitely.
An opposition may be filed against an application within 30 working days from the publication of the application in the Official Gazette. If the opposition complies with the formal requirements, it will be communicated to the Applicant, who would be required to file a response to the opposition within a period of 30 working days.
To contest an opposition, the parties are required to seek lawyer representation.
There is no obligation on the Applicant to contest the opposition, and in all oppositions (whether contested or not) the arguments of the parties are considered before a decision/judgment is passed by the Director of Chilean Institute of Industrial Property (INAPI) regarding registration / refusal of the application.
An appeal against the said decision may be filed within 15 working days of communication of the same via INAPI’s daily report, and if no appeal is filed within this period, the Secretary ratifies the absence of appellation, and the judgment becomes final.