Trade Marks & Copyright 2024 Comparisons

Trade marks are governed by Law No 19.039 (the IP Law), which was enacted in 1991 and has been widely modified, with the last modification coming into force in May 2022.

Copyright is ruled by Law 17.336 (Ley de Derecho de Autor – LDA), which came into force in 1970 and has also been widely modified. The last relevant modification occurred in 2010.

In addition to these ruling laws, the administrative authorities – such as the Instituto National de Propiedad Industrial (INAPI) and the copyright authorities – issue several rules and regulations specifying relevant matters.

Chile is a member of the World Intellectual Property Organization (WIPO). In trade marks, the most relevant ratified treaties are the Paris Convention for the Protection of Industrial Property, the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), the Trademark Law Treaty and the Madrid Protocol.

Chile maintains free trade agreements with a long list of countries, with the most relevant being an Association Agreement with the European Union and a free trade agreement with the United States of America.

Relevant to copyright, Chile is a signatory of:

• the Berne Convention;
• the Universal Copyright Convention;
• the Inter-American Convention on the Rights of the Author in Literary, Scientific and Artistic works;
• the Rome Convention for the Protection of Performers, Producers of Phonographs and Broadcasting Organisations;
• the WIPO Copyright Treaty; and
• the WIPO Performances and Phonograms Treaty.

Rights of foreign trade mark and copyright holders are governed by the same rules as apply to Chilean holders.

Copyright protection requires no formalities, and is vested in the author from the sole act of creation. Foreign copyright is automatically protected in Chile, in accordance with the Berne Convention.

Regarding trade marks, the general rule is that they require registration with the local authority (INAPI), but Chilean law, regulations and practice do afford strong rights to famous foreign trade marks, in accordance with the Paris Convention and local law.

The Chilean Industrial Property Law states that a trade mark includes any sign capable of distinguishing products or services in the market. Such signs may consist of words, including the names of people, letters, numbers, figurative elements such as images, graphics, symbols, combinations of colours, sounds, smells or three-dimensional shapes, as well as combinations of these signs.

When signs are not intrinsically distinctive, registration may be granted if they have acquired distinctiveness through use in the national market.

Propaganda or advertising phrases may also be registered, provided that they are linked or attached to a registered trade mark of the product or service for which they are going to be used. The nature of the product or service to which the trade mark is to be applied will in no case be an obstacle to the registration of the trade mark.

The trade mark confers on its owner the exclusive right to use it in economic traffic in the manner conferred and to distinguish the products or services included in the registration. Consequently, the owner of a registered trade mark may prevent any third party from using identical or similar marks in the course of commercial operations for goods or services that are identical or similar to those for which registration has been granted, without consent, provided that the use made by the third party may lead to error or confusion. When the use by the third party relates to an identical mark for identical products or services, confusion will be presumed to exist.

Chilean IP law recognises different types of trade marks, such as Word or denomination, Label (figurative), Mixed, Sound, Three dimensional, Of movement, Multimedia, Hologram, and other non-traditional brands. The form of packaging is usually protected through Industrial Design, unless it is so distinctive that it may be considered a three-dimensional trade mark.

It is forbidden to register trade marks that are the same or that are graphically or phonetically similar, in such a way that they can be confused with others registered abroad to distinguish the same or related products or services, provided that such products enjoy fame and notoriety in the relevant sector among the public that usually consumes those products or demands those services, in the country of origin of the registration.

If the registration is rejected or annulled for this reason, the owner of the well-known trade mark registered abroad must request registration of the trade mark, within 90 days. If such registration is not applied for, the trade mark may be requested by any person, with priority within 90 days following the expiration of the right of the owner of the trade mark registered abroad or the person whose application has been rejected or whose licence has been annulled.

The IP Law states that the following cannot be registered as trade marks:

• shields, flags or other emblems, and names or acronyms of any state, international organisation or state public services;
• marks that reproduce or imitate official guarantee control signs or markings adopted by a state, without its authorisation; and
• marks that reproduce or imitate medals, diplomas or distinctions awarded in national or foreign exhibitions, whose registration is requested by a person other than the person who obtained them.

Registration does not require previous use. The applied-for trade mark should be distinctive, so the following may not be registered:

• expressions or signs used to indicate the gender, nature, origin, nationality, provenance, destination, weight, value or quality of the products or services;
• marks that are generally used in commerce to designate a certain class of products or services; and
• marks that do not have a distinctive character or do not describe the products or services to which they should be applied.

A mark may be registered when it acquires secondary meaning, which is proved by any kind of evidence, excepting witnesses, that shows that a relevant portion of the corresponding market recognises the expression as a trade mark rather than a generic expression.

The IP law expressly states that a trade mark confers on its owner the exclusive right to use it in economic traffic in the manner conferred and to distinguish the products or services included in the registration.

Consequently, the owner of a registered trade mark may prevent any third party from using identical or similar marks in the course of commercial operations for goods or services that are identical or similar to those for which registration has been granted, without consent, provided that the use made by the third party may lead to error or confusion. When the use by the third party relates to an identical mark for identical products or services, confusion will be presumed to exist.

Generally, these rights persist during the entire ten-year period of registration, and during any further renewals.

There are no specific rules under the Industrial Property Law equivalent to the anti-circumvention rule contained in Article 11 of the WIPO Copyright Treaty.

The IP Law sanctions those who maliciously use, for commercial purposes, a trade mark equal to or similar to another already registered for the same products or services or with respect to products, services or establishments related to those included in the registered trade mark.

If the defendant has offered the products or services in the market, this is considered use, as are the actual transactions of goods or services under the registered trade mark.

The IP Law sates that every trade mark registered and used in commerce must visibly bear the words Marca Registrada or the initials “M.R.”, or the letter “R” inside a circle. The omission of this requirement does not affect the validity of the registered trade mark, but those who do not comply with this provision will not be able to assert the criminal actions referred to under this law. The lack of use of these indications does not prevent the trade mark owner from initiating civil actions for infringement.

A trade mark, logo or a mix thereof may also be protected by copyright. This is common when dealing with cartoon characters, such as Spongebob or Condorito.

The IP Law states that the name, pseudonym or portrait of any natural person cannot be registered, unless consent is given by them or by their heirs if they have died. However, the names of historical figures may be registered when at least 50 years have passed since their death, as long as it does not affect the historical figure's honour.

However, the names of people may not be registered when doing so constitutes a violation of any other registration prohibition.

The following are especially protected under LDA (this list is non-exhaustive):

• books, pamphlets, articles and writings, whatever their form and nature, including encyclopaedias, guides, dictionaries, anthologies and compilations of all kinds;
• conferences, speeches, lessons, memories, comments and works of the same nature, both in oral form and in their written or recorded versions;
• dramatic, dramatic-musical and theatrical works in general, as well as choreographic and pantomimic works, whose development is established in writing or in another form;
• musical compositions, with or without text;
• radio or television adaptations of any literary production and works originally produced by radio or television, as well as the corresponding scripts;
• newspapers, magazines or other publications of the same nature;
• photographs, engravings and lithographs;
• cinematographic works;
• architectural projects, sketches and models, and map-making systems;
• geographic or armillary spheres, as well as plastic works related to geography, topography or any other science, and audiovisual materials in general;
• paintings, drawings, illustrations, etc;
• sculptures and works of analogous figurative arts, even if they are applied to industry, provided that their artistic value can be considered separately from the industrial character of the object in which they are incorporated;
• scenographic sketches and the respective sets when their author is the sketch artist;
• adaptations, translations and other transformations, when they have been authorised by the author of the original work if they do not belong to the common cultural heritage;
• videograms and slideshows;
• computer programs, whatever the mode or form of expression, such as source programs or object programs, and even the preparatory documentation, its technical description and user manuals;
• compilations of data or other materials, in machine-readable form or in another form, that constitute creations of an intellectual nature for reasons of the selection or arrangement of their contents – this protection does not cover the data or materials themselves, and is without prejudice to any copyright that subsists in respect of the data or materials contained in the compilation; and
• textile drawings or models.

Industrial designs are not eligible for copyright protection, as they are expressly recognised and regulated by the Industrial Property Law.

Copyright protection is obtained without the need for any official procedure. A work is automatically protected from the moment it is created, so it is not necessary to make a special registration, deposit or payment, nor to fulfil any other formal requirement.

To be protected by copyright, a work must be original. An original work is a work created independently and not copied from another work or from material that is part of the public domain. Originality is related to the form of expression and not to the basic idea; it must be the result of the author's creativity and have a distinctive character.

Generally, the copyright holder in a work is the original creator or author of the work.

An author is the natural person who carries out intellectual creation in the literary, artistic or scientific field, individually or jointly with other creators. The copyright holder is the one who can exploit the creation. The law says that the author of a work is presumed to be whoever appears as such when it is disclosed, unless proven otherwise, by indicating their name, pseudonym, signature or sign that identifies them in the usual way, or whoever, according to the respective inscription, belongs to the work.

Regarding work for hire, the right is generally vested in the author, but the parties may agree on the contrary. A special rule governs software, as the law states that the rights of the author of computer programs produced on behalf of a third party will be considered to be transferred to the third party, unless otherwise stated in writing.

The situation derived from works created by AI is not yet clear in Chile, as the subject is not regulated by law and there is no relevant judicial precedent.

Authors can claim protection anonymously or pseudonymously, and the same general rules are applied. To maintain the work anonymously or under a pseudonym constitutes an oral right, expressly recognised by law.

LDA expressly defines “collaborative works” as those that are produced, jointly, by two or more natural persons whose contributions cannot be separated. The powers inherent to the patrimonial rights and the pecuniary benefits of the work in collaboration correspond to all of its co-authors. Any of the collaborators may demand the publication of the work. Those who do not agree with its publication may only demand the exclusion of their name by maintaining their property rights.

LDA grants both patrimonial and moral rights; patrimonial rights include neighbouring rights (Derechos conexos).

The patrimonial right confers on the copyright holder the powers to use the work directly and personally, to transfer, totally or partially, their rights over it and to authorise its use by third parties.

Only the copyright holder or those who are expressly authorised by said entity will have the right to use the work in any of the following ways:

• to publish it by editing, recording, radio or television broadcast, representation, performance, reading, recitation, display and, in general, any other means of public communication currently known or known in the future;
• to reproduce it by any procedure;
• to adapt it to another genre or use it in any other form that involves a variation, adaptation or transformation of the original work, including translation;
• to execute it publicly by broadcasting radio or television recordings, phonograph records, movies, cinematographic films, tapes or other media material suitable for use in sound and voice players, with or without images, or by any other means; and
• to distribute to the public through sale, or any other transfer of ownership of the original or of the copies of the work that have not been subject to sale or other authorised transfer of ownership by the copyright holder or in accordance with the law.

No one may publicly use a work that is in the private domain without having obtained express authorisation from the copyright holder.

LDA expressly recognises moral rights, stating that the author, as exclusive owner of the moral right, has the following powers for life:

• to claim the paternity of the work, associating the same name or pseudonym known to it;
• to oppose any deformation, mutilation or other modification made without express and prior consent – no conservation, reconstitution or restoration of works that have suffered damage that alters or impairs their artistic value will be considered as such;
• to keep the unpublished work;
• to authorise third parties to finish the unfinished work, with the prior consent of the publisher or the assignee if there is one; and
• to demand the respect of the will to keep the work anonymous or pseudonymous as long as it does not belong to the common cultural heritage.

General rules are applied to synchronisation rights. LDA includes videograms and slideshows as protected works.

The protection granted by law lasts for the entire life of the author, and extends up to 70 years more after the date of the author's death.

If the work is deemed to belong to an employer and said employer is a legal entity, the protection will last for 70 years from the first publication.

The owner of a property right on a work may use the symbol “©” in the copy, prefixing it to the year of the first publication and to the owner's name.

Copies of phonograms or those in their wrappers may have a “(p)” symbol prefixed to the year of first publication and the name of the producer.

Natural or legal persons whose name appears in the manner indicated in the subsections above will be presumed to be the holders of the respective rights.

Collective management of copyrights and related matters may only be carried out by entities that have been authorised in accordance with the provisions of LDA.

The collective management entities of intellectual rights must be constituted as Chilean private law corporations, in accordance with the provisions of the Civil Code. Their objective may only consist of carrying out the activities of administering, protecting and collecting intellectual rights referred to in the law.

Collective management entities will always be obliged to accept the administration of copyright and other intellectual property entrusted to them in accordance with its objectives or purposes.

It has been suggested that the system is too fragmented.

According to the provisions of LDA, the following Chilean private law corporations have been created and are currently authorised to function as collective management entities of intellectual rights.

• The Chilean Copyright Society (SCD) is authorised to function as a collective management entity and administers the copyright and related rights of authors, composers, artists, performers and other holders of rights to musical works. The SCD created the Centre for Intellectual Property Studies and Legal Services (CESPI), which provides legal support to members of all organisations that bring together national creators and performers.
• The Society of Literary Rights (SADEL) is a private law corporation formed by editors and writers. It was authorised to function as a collective management entity by exempt Resolution of the Ministry of Education No 8,817, of 2009 (published in the Official Gazette on 20 January 2009), and deals with the field of reprography and the uses of written works in digital and multimedia networks, among other topics.
• The Collective Management Entity of Rights of Audiovisual Producers of Chile (EGEDA-Chile).
• The Association of National Authors of Theatre, Cinema and Audiovisuals (ATN) is a non-profit private law corporation that brings together the authors of dramatic, film and audiovisual works.
• The Management Society of Fixed Image Creators (CREAIMAGEN).
• The Chilean Actors Corporation (CHILEACTORES) was authorised to carry out the collective management of moral and patrimonial rights of the interpreters of artistic performances in audiovisual format. It protects the intellectual rights of associated actors.

• The Society of Phonographic and Videographic Producers of Chile (PROFOVI).
• The Corporation of Audiovisual Directors and Screenwriters (DYGA).

Copyright registration is not mandatory in order for a work to be protected by law. According to Chilean legislation, copyright protection is granted automatically from the moment the work is created, without the need to carry out any registration procedure.

However, registration is still recommended as it can facilitate the defence of copyright in case of legal disputes. Registration provides formal evidence of the work's existence on a specific date and can be useful in proving copyright ownership in legal situations.

Copyright registration in Chile is carried out before the Department of Intellectual Rights (DDI) of the Ministry of Cultures, Arts and Heritage. Although not an essential requirement, it may be a prudent measure for authors who wish to strengthen their legal position and protect their copyright more effectively.

Anyone can apply for and obtain registration of copyright. No attorney representation is required.

A copyright applicant must complete a registration form and pay the nominal registration fees (less than USD50). Among other information, the Form shall contain:

• complete information on the owner;
• the name of the work and a short description of it; and
• a copy of the work.

If the work is software, the application must also contain:

• a copy of the software in a digital file;
• the user manual of the software in a word file, containing the name of the software, the name of its owner and the name of its authors – if there is no user manual, the applicant should make a very simple one that allows anyone to execute the basic functions of the software;
• the licence for the base program used; and
• a signed statement detailing the workers who have participated in the development of the software.

There are no established consequences for providing incorrect information or errors. The information submitted may be corrected.

The registration of copyright may be refused in very few, specific circumstances.

A copyright can also be protected by trade mark or related rights – eg, in the case of logos, labels or mixed trade marks.

Rights over a trade mark only arise from its registration with the INAPI. Generally, no rights arise from prior use.

In order to register a trade mark, the mark must be distinctive and must not fall within the prohibitions established by law.

It is possible to register originally non-distinctive trade marks when they have acquired a “secondary meaning”: when signs are not intrinsically distinctive, registration may be granted if they have acquired distinctiveness through use in the national market.

NAPI is the body in charge of the administration and care of industrial property services in Chile. It is also responsible for promoting the protection provided by industrial property and disseminating the technological heritage and information available to it. It only has one register; there are no supplemental or secondary registers.

At the beginning of the registration period, INAPI conducts searches to determine the registrability of the applied-for trade mark. Applicants usually also conducts availability searches prior to filing.

INAPI has a public database, which is not particularly useful, as it only provides searches for identical trade marks. Specialised legal firms have more complex search engines, providing a wide possibility of searches, including phonetical.

It is not possible to apply for serial trade marks. Each mark requires a single application.

The term of registration is ten years, from the date of inscription. The registration may be renewed indefinitely. Once the term has lapsed, the trade mark owner has a grace period of six months to renew, but renewal taxes are increased by 20% for each extra month. There are no special requirements to renew the registration.

An expired trade mark cannot be revived: a fresh application should be filed.

It is possible to update data regarding the owner's address, and the owner can also delete part of the list of goods and services covered by the registration; however, it is not possible to add new goods or services, nor to alter or modify any element of the trade mark.

Any natural or juridical, national or foreign person, association or trade body may file an application for the registration of a trade mark, through a form prepared by INAPI, containing information about the applicant and about the trade mark, such as its identification, class or classes and goods or services to be covered, etc. The application may be filed materially or online. Multi-class applications are allowed.

No evidence of use is required, as the use or non-use is not relevant for registration.

In applications for logos, labels or mixed trade marks, the applicant must provide a specimen of the trade mark.

The official registration fees are established in a unit that is adjustable for inflation, each month, called the UTM. Three UTMs shall be paid for each class covered by the application; this is currently approximately USD250.

Foreign applicants not domiciled in Chile shall act through a representative. Said representative does not need to be an attorney, but it is advisable to have an attorney as any oppositions can only be responded to by attorneys.

No prior use is required.

Regardless of whether or not an opposition has been presented, INAPI carries out a substantive examination to verify that the trade mark application does not fall under any of the legal causes of unregistrability. The matters reviewed include the possibility of prior rights – ie, a prior registration or pending application in the name of a third party for an identical or confusingly similar trade mark in the same or related classes.

A letter of consent may be granted by the owner of a conflicting prior trade mark, but INAPI is not obliged to consider it. Said letters are usually very short, stating that the previous owner agrees to the registration of the later trade mark as they believe that no likelihood of confusion exists.

Any third party may file an opposition to a trade mark application, through an attorney, within 30 working days from publication of the application in the Official Gazette. The opposer only needs to identify the legal cause for prohibition of registration on which the opposition is based.

Once the opposition is filed, it is notified by INAPI to the applicant, who then has 30 working days to reply to it. These terms are not extendable.

With or without oppositions, the Trademarks Office may reject the application if it considers that it infringes any prohibition of registration.

During the process of registration, the applicant may drop the application. There will be no refund of any fees paid. The application may not be modified, unless the modification refers to a limitation of the original coverage.

Any application that lists several classes of products and/or services (“initial application”) may be divided into two or more applications (“divisional applications”), at the request of the applicant. For this purpose, the applicant must indicate in each application the distribution of the products and/or services. Divisional applications will retain the date of submission of the initial application and the benefit of the right of priority, if any. A divisional application will give rise to the corresponding payments, as if it were a new application.

The request to divide an application for registration of a trade mark can be formulated before INAPI makes its final decision on the initial application for registration, whether it is an application with or without opposition proceedings pending. Likewise, the request may be presented during the appeal or complaint against the decision regarding the registration of the trade mark.

Current trade mark registrations may always be divided. In cases where validity is being challenged before INAPI or during the appeal in a trial for the invalidity of a registered trade mark, a division may be requested in terms similar to those indicated in the preceding paragraphs.

During the processing of a substantive observation (ex officio rejection), opposition procedure, annulment procedure or other appeal pending, division of the application or registration will only be applicable when, as a result of the division, the substantive observation, opposition trial, annulment trial or appeal in question is limited to one of the requests or one of the split records.

Minor formal mistakes may be corrected. Incorrect information, if relevant, may serve as a basis for an action for cancellation of the registration.

An application may be refused ex officio by the Trademarks Office when said body believes the application infringes any of the established prohibitions on registration. Some of them may be considered as absolute grounds, with the following examples:

• when the sign lacks distinctive elements and is therefore not suitable to distinguish products or services as coming from a business origin and not from some other origin – this happens when a sign serves to designate gender, nature, origin, nationality, destination, weight, value or a quality of the products or services, or if it is commonly used in commerce to designate that type of product or service;
• when the sign corresponds to a technical or scientific name, the name of a plant variety or a denomination recommended by the WHO or indicative of therapeutic action;
• when the sign consists of the colour itself;
• when the sign to be registered is contrary to morality, public order or good manners;
• when the sign corresponds to the emblems and symbols of a state, or to its flag or to the name or acronym of any country or state. This is the case for flags and national coats of arms of countries; or
• when a sign may lead to error or confusion amongst the public regarding the origin or attributes of the product because the sign is the same or similar to a Geographical Indication or Denomination of Origin recognised in Chile.

When facing an ex officio rejection, the party may file for a Reconsideration before the Head of INAPI. If rejected, the party may then file an appeal before the Second Instance Industrial Property Court.

An appeal before the special Industrial Property Court against resolutions issued in the first instance by the Head of the Department will proceed regardless of whether or not there has been opposition. Such appeal must be filed within 15 days from the notification of the resolution to be heard by the Industrial Property Court.

The appeal will proceed against resolutions that are final or interlocutory in nature. Cassation on the merits will proceed against the final rulings of the second instance, before the Supreme Court.

No extensions of terms are available.

Chile has been a member of the Madrid Protocol since July 2022. There are no particular requirements, and the application for international registration should be made through INAPI, online.

Any third party may file an opposition within 30 working days from publication of the application abstract in the Official Gazette, based on one or more prohibitions of registration (absolute or relative) established in Article 20 of the IP Law.

The parties may agree to ask INAPI to suspend the trial in order to negotiate a possible agreement.

Article 20 of the IP Law establishes the following prohibitions of registration, upon which an opposition – and cancellation action – may be based:

• when the sign lacks distinctive elements so is not suitable to distinguish products or services as coming from a business origin and not from some other origin – this happens when a sign serves to designate gender, nature, origin, nationality, destination, weight, value or a quality of products or services, or if it is commonly used in commerce to designate that type of product or service;
• when the sign corresponds to a technical or scientific name, the name of a plant variety or a denomination recommended by the WHO or indicative of therapeutic action;
• when the sign consists of the colour itself;

• when the sign to be registered is contrary to morality, public order or good manners;
• when the sign corresponds to the emblems and symbols of a state, or to its flag or the name or acronym of any country or state;

• when the sign is likely to induce error, deception or confusion regarding the geographical origin, quality or gender of products and services;
• when brands are the same or graphically or phonetically similar in such a way that they can be confused with others already registered or validly requested in Chile for identical or similar products or services;

• when trade marks are the same or similar to another mark registered abroad for the same products or services, which enjoy fame and notoriety;
• when trade marks consist of the name, pseudonym or portrait of any natural person, unless said person or their heirs give their consent or 50 years have passed since the person's death, and provided that it does not affect their honour; and
• when signs may lead to error or confusion amongst the consumer public regarding the origin or attributes of the product because it is the same or similar to a Geographical Indication or Denomination of Origin recognised in Chile.

Generally, dilution is considered by the Trademarks Office when analysing the registrability of a trade mark.

Any third party may file an opposition, based on the legal prohibitions of registration established in the law. There are no official fees, but attorneys' fees may be around USD400.

Once the abstract of a trade mark application has been published in the Official Gazette, any party may file opposition against it, within 30 working days. The opposition is notified by the Trademarks Office to the applicant, who has 30 working days to reply to it. These deadlines are not extendable.

Depending on the merit of the allegations, the Trademarks Office may open a probatory term of 30 days, extendable for another 30 days, if required by any party. Any kind of evidence is accepted, except for witnesses. There is no discovery in the Chilean legal system.

The decision is issued by the Head of the Trademarks Office, without oral hearings.

An appeal before the special Industrial Property Court against resolutions issued in the first instance by the Head of the Department will proceed regardless of whether or not there has been opposition. Such appeal must be filed within 15 days from the notification of the resolution to be heard by the Industrial Property Court.

The appeal will proceed against resolutions that are final or interlocutory in nature. Cassation on the merits will proceed against the final rulings of the second instance, before the Supreme Court.

No extensions of terms are available.

A distinction should be made between cancellation and revocation. Cancellation (invalidation or nullity) corresponds to nullity – ie, a registration is cancelled when it was null or void in its origin as it falls within one or more prohibitions of registration. Revocation corresponds to the elimination of a trade mark for other reasons – eg, lack of use.

The action to invalidate the registration of a trade mark will expire within five years, counted from the date of registration. This does not apply to registrations obtained in bad faith.

Copyright registrations cannot be revoked.

The declaration of the cancellation or nullity of a trade mark registration will proceed when any of the prohibitions of registration established in Article 20 of the IP Law has been violated.

Revocation of registered trade marks is possible, at the request of a party, when the registration has not been used in commerce for five consecutive years.

The Trademarks Office First Instance decision in a cancellation or revocation action may be appealed, and the Second Instance decision may be subject to cassation before the Supreme Court of Justice.

There are no re-examination or expungement procedures.

There is no copyright cancellation action in Chile. Regarding trade marks, any interested party may file an action of cancellation, including a prior trade mark owner or anyone interested in the law being respected in connection with absolute prohibitions of registration.

Any interested party may ask for the revocation of a registration that has not been used for five consecutive years – eg, someone interested in registering and using the same or a similar trade mark.

There is no copyright cancellation/revocation action in Chile. Actions for either cancellation or revocation for non-use are filed before INAPI, which resolves at First Instance.

It is possible to cancel and revoke a trade mark registration partially – eg, for nullity (cancellation) or lack of use, or if the registration refers to only one class of a multi-class registration or to specific goods or services within a class.

No amendments to the cancellation/revocation processes are possible after the action is notified to the defendant. They may only be ceased by the plaintiff.

Cancellation and revocation actions against trade mark registrations are not heard together; although they are decided by the same Trademarks Office, the procedures follow independent paths.

Regarding copyright, there is no possibility of revocation as the registration does not give rise to the copyright, but is a mere administrative act that serves as a simple presumption of the creation and date of the work; if fraudulent, it may be challenged by other means of proof.

Cancellation actions against fraudulent registrations of trade marks may proceed. Registrations are not affected by legal actions against them, until the final decision is made. However, the defendant may ask the Trademarks Office for a precautionary measure, consisting of prohibiting the granting of any licence or conducting any assignment of the challenged registration.

There are no relevant precedents establishing consequences derived from the fraudulent filing of a trade mark.       

The total or partial transfer of the copyright or related rights to any title must be registered within 60 days from the date of celebration of the respective act or contract. The transfer must be carried out by public instrument or by private instrument authorised before a notary.

The termination of the contract that originated the transfer must also be registered, within the same timeframe.

It is possible to register a copyright licence agreement in Chile. Although registration is not mandatory in order for the contract to be valid, it can be beneficial for the parties involved.

The registration of copyright licence contracts is carried out before the DDI of the National Copyright Service (SENADI). Registering the contract creates an official record, which can be useful in case of disputes or to prove the existence and terms of the agreement.

It is possible to assign an application for a trade mark or copyright, and to grant a licence in relation to it during the application process. There are no trademark applications based on intent to use.

The registration with the Trademarks Office of assignments, use licences, pledges and name changes, and any other type of encumbrances that may affect a trade mark, will be made after the payment of a fee equivalent to one monthly tax unit, the payment of which will be credited at the time of submitting the respective application. The aforementioned acts will not be enforceable against third parties until they are registered with the Trademarks Office.

If the transfer was done legally and in accordance with general law, the rights cannot be recaptured.

It is possible to grant a copyright as a guarantee in Chile. Chilean law allows copyrights to be collateralised, meaning they can be used as collateral for a loan or other financial transaction.

Although registration is not mandatory in order for the guarantee to be valid, it may be advisable to register the pledge or mortgage in the Intellectual Property Registry as this provides adequate publicity about the existence of the warranty and may be helpful in the event of disputes.

It is also possible to constitute a pledge over a trade mark. The contract shall be in writing. If granted in Chile, the signatures must be authorised by a notary public; if granted abroad, the contract should be legalised by the corresponding Chilean Consulate, or apostilled. The contract should be registered at the Trademark Office, against the relevant registration, in order to be opposable against third parties.

There are no special rules for copyright or trade marks: the general rules on the statute of limitations apply.

Civil and criminal actions against infringement are available in both copyright and trade mark matters. Copyright arises from the creation of the work, with no registration being necessary, and the same infringement actions proceed whether or not a copyright has been registered.

Anyone who uses works of another's domain that are protected by copyright law, unpublished or published, in any of the forms or by any of the means established in the law, without being expressly authorised to do so, commits copyright infringement, as does anyone who uses the protected interpretations, productions and broadcasts of the owners of the related rights, without being expressly authorised to do so. Anyone who markets or rents directly to the public copies of works, performances or phonograms, whatever their medium, reproduced in contravention of the provisions of the law and who, for profit, manufactures, imports, has or acquires copies of such for commercial distribution, is also guilty of copyright infringement.

The court may order the following precautionary measures at any time during the infringement process:

• the immediate suspension of the sale, display, performance, representation or any other form of allegedly infringing exploitation;
• the seizure of allegedly unlawful copies;
• the prohibition of executing or performing any acts and contracts, including the prohibition to advertise or promote the products or services that are the subject matter of the alleged infringement; or
• the seizure of materials, machinery and implements that have been used for the production of allegedly unlawful copies or for the allegedly infringing activity, where necessary to prevent further infringement.

Trade Marks

The enforcement of a trade mark, by means of the Industrial Property Law, requires the trade mark to be registered in Chile. Available actions consist of border measures, criminal actions and civil actions.

Border Measures

Border measures are regulated by the TRIPS Agreement, established by Law No 19,911 in 2003, and must be followed by actions in the relevant courts. When properly supported, border measures are usually very effective.

Criminal Actions

Criminal actions are available before the ordinary criminal court with competence in the area where the offence was allegedly committed. These actions are sanctioned by fines, and are available when a third party is using a trade mark that is identical or confusingly similar to another that is already registered in the name of a third party for goods or services that are the same or related to those covered by the registration, without authorisation and in bad faith.

Criminal fault is committed when:

• an unregistered, expired or cancelled trade mark is used, for commercial purposes, with the indications corresponding to a registered trade mark or simulating them; and
• someone makes use of containers or packaging that bear a registered trade mark, for commercial purposes, without having the right to use it and without it having been previously erased, unless the marked packaging is intended to package different products not related to those that protect the brand.

The following will be punished with the minimum to medium degree of imprisonment:

• anyone who falsifies a trade mark that is already registered for the same products or services; and
• anyone who manufactures, introduces into the country, markets or sells objects that bear counterfeits of trade marks already registered for the same products or services, for profit and for commercial distribution.

As mentioned in 2.5 Notices and Symbols, in order to file criminal actions, it is necessary for the registered trade mark to bear the words Marca Registrada (Registered Trademark), the initials MR or the symbol ® in a visible form. The penalties consist of a fine and the confiscation and destruction of the products bearing the infringed registration. The court decides how to dispose of the tools and materials used to commit the infringement by ordering their destruction or their distribution to charitable institutions. There are also provisions that sanction those who counterfeit a trade mark, including with imprisonment.

Civil Actions

Civil actions are decided by the ordinary court that has competence over the defendant’s domicile, and are available against any kind of violation of a registered trade mark. The object of civil actions is to put an end to the infringement, to obtain indemnification for damages and to seek a court order implementing the necessary measures to prevent the infringement from continuing. Compensation for damages may be determined by taking into account one of the following options in accordance with the plaintiff's choice:

• the general rules of civil law (more cumbersome);
• the profits that the owner failed to receive as a consequence of the infringement;
• the profits that the infringer would have received as a consequence of the violation; or
• the price of a licence, taking into account the value of the infringed rights and the contractual licences that may have already been granted.

As in criminal procedures, preliminary and precautionary measures are contemplated in the case of civil actions. In addition, in counterfeiting cases, the owner of the trade mark that has been subject to counterfeiting may request that compensation for damages caused could be substituted by a single fine that cannot exceed 2,000 monthly tax units per infringement. Such an option may be exercised in a claim for indemnity from damages.

Civil infringement actions to protect unregistered trade marks may be available under the Unfair Competition Law No 20,169, but not under the Industrial Property Law.

In copyright and trade mark cases, the objective factor is the unauthorised use of the owner’s right.

The notion of a “public action” exists in copyright cases, which means that any person may file the action. In both criminal and civil trade marks cases, the plaintiff should be an interested party.

Collective actions are not regulated in the Copyright Law or the Trademarks Law.

There are no specific prerequisites or restrictions to filing lawsuits in copyright and trade mark infringement cases. However, when defining the criminal infringing action, the Trademarks Law includes the phrase “Those who maliciously …” The “malicious” requirement has been interpreted in the sense that the infringer should have had actual knowledge that it was infringing. Therefore, it is highly advisable to secure evidence that the defendant was in that position, before filing the action;before filing the criminal action, it is advisable to send a cease-and-desist letter, by registered post, through a notary public or other means enabling the plaintiff to allege that the letter was received.

In copyright infringing matters, both civil and criminal courts have competence in the First Instance. Decisions may be appealed to the regular competent Courts of Appeal, and may also occur before the Supreme Court of Justice, through cassation.

In trade mark matters, all cases relating to oppositions, cancellation and revocation are decided by INAPI. Decisions may be appealed to a special Second Instance Industrial Property Court, and can occur before the Supreme Court of Justice, through cassation.

In trade mark infringing cases both civil and criminal courts have competence in the First Instance. Decisions may be appealed to the regular competent Courts of Appeal, and may also occur before the Supreme Court of Justice, through cassation.

In both copyright and trade mark infringing cases, the parties shall be represented by a local attorney. Foreign trademark infringing cases require local registration. Foreign copyright is fully recognised in accordance with the Berne Convention. No registration is necessary, but it can be very helpful.

There are no official costs for litigating but civil courts, in their decisions, may fix an amount as procedural costs, to be paid by the defeated party.

Attorney fees obviously vary, but the cost for preparing and sending a cease-and-desist letter may be around USD150, and legal costs before filing are usually very low.

Any legal action shall comply with basic general requirements, such as:

• the designation of the court before which it is filed;
• the name, address and profession or trade of the plaintiff and the people who represent them, and the nature of the representation;
• the name, address and profession or trade of the defendant;
• the clear exposition of the facts and legal foundations on which the action is based; and
• the precise and clear enunciation, recorded in the conclusion of the petitions that are submitted to the court's ruling.

There are no special provisions for copyright and trade mark cases.

In criminal cases, the prosecutor leads the investigation before criminal courts. In civil cases, the plaintiff can supplement arguments before the defendant's notification of the action. It is always possible for the defendant to initiate a counterclaim.       

In civil cases, a party may initiate what is called a “boasting” case, which is a legal situation that occurs when a person claims to be entitled to a right that they are not enjoying, which enables the person affected by said boast to request that said person be forced to file a claim within ten days, under the warning of not being heard later on that person’s right.

It is always possible to achieve a settlement in civil cases. In fact, at the beginning of the procedure, the judge calls the parties to negotiate an agreement.

Judicial resolutions only bind intervening parties. In the Chilean legal system, judicial rulings do not constitute law and do not bind other courts, although they are usually considered when issued by high courts.

The term “counterfeiting” as it is used in industrial property matters refers especially to the malicious use, with commercial ends, of a trade mark that is identical or similar to others for the same products, services or establishments. The procedures and remedies established for infringement apply.

Bootlegging is not dealt with specially under copyright or trade mark law. The general rules on copyright and trade marks apply.

There are no special litigation rules for copyright infringement or trade mark infringement cases. The cases are decided by legal judges; there are no jury trials in Chile. The parties do not have influence on who is the decision maker, apart from deciding to file a criminal or civil action.

As far as copyright is concerned, registration only constitutes a mere presumption of date and that the owner is the person in whose name the work was registered. However, this is a simple presumption that may be invalidated by other probatory means.

Trade marks should be registered in order to be used as a basis for litigation.

In an infringement case, it is not necessary to prove use of the registered trade mark, but clearly its use would help, as it would enable an applicant to determine and claim compensation damages.

The Chilean legal system has no mechanisms by which a party to a trade mark or copyright action can obtain relevant information and evidence from the other party or a third party; there is no disclosure or discovery in Chile.

Expert witnesses and surveys are allowed, and may be filed by any party. Their value would depend on the prestige of the expert or of the survey entity. In exceptional cases, even a court may appoint an expert to give an opinion through what is called a “measure to better resolve”.

The costs would depend on many factors, such as:

• whether it is a criminal or a civil action;
• the complexity of the case;
• the professional fees of the legal firm; and
• the activity or inactivity of the counterpart, etc.

Trade mark and copyright infringement are not considered administrative offences, so shall be dealt with through the courts.

Defences would vary in criminal and civil cases. In criminal cases, the lack of fraud or malice is a good defence. Specific defences are not established by statute.

Chilean law establishes a set of exemptions in connection with copyright, which can be summarised as follows:

• the use of short fragments for quotation or for the purposes of criticism, illustration, teaching and research;
• a broad exception for the disabled;
• an exception for lessons in classes and public speeches;
• an exception for demonstration to the public in equipment sales rooms;
• an exception for the reproduction of works installed in public spaces;
• a specific group of exceptions for non-profit libraries and archives;
• exceptions for educational purposes;
• an exception for communication to the public in domestic, educational and cultural spaces;
• an exception for reverse engineering, back-up and study and compatibility of computer programs;
• an exception for temporary copies;
• an exception for satire and parody;
• an exception for fair or incidental uses;
• a translation exception for private use; and
• an exception for reproduction and communication to the public for administrative, judicial and legislative uses.

In connection with trade marks, although no exceptions are mentioned in the Trademarks Law, the use of third party trade marks for the occasion of comparative advertising has been recognised in practice and precedents, and later in the Unfair Competition Law. The Law requires that the comparison should be truthful and demonstrable.

It is possible to carry out the translation of works originally written in a foreign language and legitimately acquired, for personal use purposes, without requiring authorisation from the author or owner, nor the payment of remuneration.

The Chilean Copyright Law defines “Service Provider” as a company providing transmission, routing or connections for online digital communications, without modification of its content, between specified points by the user of the material they select, or a company provider or operator of service facilities in line or network access.

Without prejudice to the general rules on applicable civil liability, in violations of the rights protected by the Copyright Law committed by third parties that occur through systems or networks that are controlled or operated by natural persons or legal entities that provide some of the services indicated in the law, the providers of such services will not be obliged to compensate the damage, in the measure that they comply with the conditions provided in the same law to limit such liability, according to the nature of the service provided.

The service provider's data transmission, routing or provisioning connections will not be considered responsible for the data transmitted if the provider:

• does not modify or select the content of the transmission – for these purposes, any technological manipulation of the material that is necessary to facilitate the transmission across the network, such as packet splitting, will not be considered content modification;
• does not initiate the transmission; and
• does not select the recipients of the information.

Chilean law recognises the exhaustion of rights (parallel imports are expressly allowed), as the trade mark owner cannot prohibit third parties importing and selling products that are lawfully distributed in any country by the trade mark owner or with their consent.

Copyright law incorporates the rights of distribution and international exhaustion upon the first sale or transfer of the ownership of the original or copy of the work sold or transferred.

A non-profit library or archive may reproduce a work that is not available on the market without requiring authorisation from the author or owner or making payment of any remuneration, in the following cases:

• when the copy is in its permanent collection and this is necessary for the purposes of preserving said copy or replacing it in case of loss or deterioration, up to a maximum of two copies;
• to replace a copy from another library or archive that has been lost or destroyed, up to a maximum of two copies; and
• to add a copy to its permanent collection.

In order to apply the exception, the copy of the work must not have been available for sale to the public in the national or international market in the last three years.

Civil and criminal actions are available against infringement in both copyright and trade mark matters.

The court may order the following precautionary measures at any time during the infringement process:

• the immediate suspension of the sale, display, performance, representation or any other form of allegedly infringing exploitation;
• the seizure of allegedly unlawful copies;
• the prohibition of executing or performing any acts and contracts, including the prohibition to advertise or promote the products or services that are the subject matter of the alleged infringement; or
• the seizure of materials, machinery and implements that have been used for the production of allegedly unlawful copies or for the allegedly infringing activity, where doing so is necessary to prevent further infringement.

The precautionary measures are usually granted by judges when it appears they are dealing with a good prima facie case, and when it appears reasonable to secure the effectiveness of the infringement action, if accepted.

Chilean law provides that, as a general rule, infringing goods should be destroyed, at the cost of the infringer.

The judge may order the posting of a bond by the plaintiff for obtaining a preliminary injunction, but this is not usually required, as cases of infringement tend to be clear.

The copyright owner is entitled to request compensation damages for the economic and moral damages suffered. When determining pecuniary damage, the court will consider the legitimate retail value of the goods on which the violation occurs, among other factors. The court may also sentence the offender to repay the profits that they have obtained, which are attributable to the infringement and have not been considered in the calculation of the damages.

Regardless of the existence of patrimonial damage, for the purposes of determining the moral damage, the court will consider the circumstances of the infraction, the severity of the injury, the impairment to the author’s reputation and the objective degree of illicit dissemination of the work. When making the compensation of damages, the court may order – at the request of a party and without prejudice to the rights that may be asserted against third parties – the seizure and delivery to the right holder of the product of recitation, representation, reproduction, performance or any other form of illicit exploitation.

In trade mark civil cases, compensation for damages may be determined by taking into account one of the following options in accordance with the plaintiff's choice:

• the general rules of civil law (more cumbersome);
• the profits that the owner failed to receive as a consequence of the infringement;
• the profits that the infringer would have received as a consequence of the violation; or

• the price of a licence, taking into account the value of the infringed rights and the contractual licences that may have already been granted.

There are no court fees, except where the court orders an expert opinion, in which case it will state how such fees are paid.

Each party usually pays its own attorney fees and expenses, but both civil and criminal courts, in their final judgment, will usually order the defeated party to pay the procedural fees (attorney fees and expenses), with the same court fixing the amount.

It is not possible for a trade mark or copyright owner to seek relief without giving notice to the defendant. One of the basic principles of the Chilean judicial system is that of the bilateral nature of the hearing, which implies that, as a general rule, every party must be heard.

The National Customs Service (Servicio Nacional de Aduanas) is in charge of border measures. Law 19,912 establishes border measures for the enforcement of industrial property rights, in order to prevent the entry and exit from the country of products infringing intellectual property. The Customs Service can apply ex officio measures when discovering goods with falsified registered trade marks or goods infringing on copyright entering the country. In such cases, the goods are seized and the IP right holder or its registered representative is notified, and has ten working days in which to file a criminal action. If no action is filed, the goods are liberated. Otherwise, the court orders the maintenance of the seizure. Also, any person can request the measure before a court.

The parties may settle the dispute at any time, by any alternative means. There are no formal mechanisms in the corresponding laws.

It is always possible for the parties to solve a dispute by alternative methods, such as negotiation, arbitration, mediation, etc. It is not compulsory to do so, but it is perfectly possible if both parties agree.

Other court proceedings such as cancellation/revocation do not necessarily have an influence on other infringing proceedings, but a court may take a cancellation (nullity) case into account and suspend the infringement case until the cancellation is decided.

In civil cases, decisions on infringement cases can be appealed to the competent Courts of Appeal, in accordance with general procedural law. There are no special courts of appeal.

Regular procedural law also applies in criminal cases, and the decisions can be cancelled through an action filed by a party.

In civil cases, the appeal shall be filed within 15 days from notification of the decision. The decision of the appeal takes approximately one year.

In criminal cases, the cancellation action should be filed within ten days from the issuance of the ruling. It takes approximately six to eight months to be decided.

There are no special procedures for the appellate procedure.

The appeal does not imply a complete revision but rather control of the grievances that the appellant represents.

Although there are no express rules in Chilean law regulating the right to the proper image, such right is recognised in doctrine and also in precedents.

Chilean courts, including the Supreme Court of Justice, have established that anyone has a right to decide the use of their own image, not just celebrities. This has been construed from Article 24 No 4 of the Chilean Constitution, which outlines the right to a secure private life and honour.

It has been decided that the right to one's own image is an attribute of personality, which is why it is inherent to every person. It has also been said that the lack of textual consecration of the right to one's own image with constitutional protection does not imply its defencelessness; this comes from the right to privacy and if a person publishes their photo on the internet it does not imply a waiver of its availability by its owner.

Chile has an Unfair Competition Law. As stated in the OECD Chile – Accession Report on Competition Law and Policy 2010, Chile’s competition law is unusually simple and general, but it nonetheless supports effective policy and enforcement against restrictive agreements and concerted actions, unilateral abusive dominance and predatory exclusion and anti-competitive mergers. Content is being supplied by case experience, which is increasingly based on the application of economic analysis.

There are currently no emerging issues. The Trademark Law was amended in 2022 to include protection for three-dimensional trade marks and other non-traditional trade marks, and to establish the possibility of cancelling trade marks that have not been used for five consecutive years.

In copyright, there is a tension between creators and copyright owners on one side, and public use on the other. There is pressure for increased possibility of the free use of works and diffusion of knowledge and art, as Chilean copyright law is inclined towards the interests of the authors, but this tension has existed for many years.

Unauthorised use of protected works or trade marks in any way, including through the internet, represents an infringement. The responsibility of internet providers is very restricted in Chile.

There are no special rules or norms regarding trade marks or copyrights as used in business.