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Trademarks in Chile. Developments in the new bill

The new bill entered into the congress on May 7, 2013 to incorporate major amendments in our current legislation on Industrial Property.

The innovations of this project include the incorporation of important institutions in the trademark field, expediting administrative procedures and decreasing costs of trademark registration.

These amendments aim to harmonize our legislation with the current reality, by incorporating new areas of protection and improving existing ones.

The purpose is to promote the development of industry and technology, to develop new ways of doing business provided safety and security standards, thereby complying with the accelerated incorporation of Chile to international markets.

For this purpose, we will set forth the most important changes of this bill in the trademark field:

New categories of marks: Three-dimensional and olfactory

They are one of the most important innovations of the project as includes the registration of three-dimensional marks and olfactory marks.

Trademarks Revocation for reasons of non-use

In contrast with most comparative trademark legislations, at present our country does not provide for revocation of a trademark due to non-use, constituting trademark disused registry a true artificial barrier to market entry.

Indeed, many applications are rejected due to the prior existence of distinctive signs in the same class or related classes, which are not currently in use and are identical or similar to the mark applied for; preventing new stakeholders from registering and marketing their products and services with its mark.

New prohibitions on trademark registration and distinction between absolute and relative grounds

The prohibition for registration of signs that infringe copyright of a third party is established, unless the consent of the latter, and the prohibition on registration as trademarks of those signs which consists of the name of legally recognized indigenous communities or signs used to distinguish its products or services, unless the application is submitted by the community itself or with its express permission.

In addition, under the current legislation there is no distinction between absolute and relative prohibitions, which are incorporated in the current bill improving its systematization

Lower costs for trademark registration and electronic renewals

Reduction in registration fees for applications and renewals filed electronically: so, it will be much cheaper processing marks electronically, as the class registration fee is reduced by 65% and in the case of renewal by 50%.

Reduction in trademark registration deadlines

The trademark registration process is amended by the bill making it more efficient, allowing for the form and content examination to be practiced in the same act, thus reducing processing times.

Creation of INAPI Gazette

It will be free of charge and administered by the INAPI and wherein be published everything related to procedures for granting privileges of Industrial Property.

The aforementioned are only a summary of the major changes proposed in the bill. If the changes are accepted, it will mean a complete restructuring of our industrial property legislation to make it more modern and efficient.

The time required for getting the bill through Congress is estimated to be two years total.

Carmen Sánchez-Puelles