Contributed By SCR Abogados
Trade marks are governed by the Chilean Industrial Property Act No 19.039 and its subsequent amendments (CIPA).
These are statutory rights stem from registration rather than use, even though the Unfair Competition Act No 20.169 (UCA) indirectly contemplates the possibility of enforcing non-registered trade marks.
Chile is a civil law country and, therefore, there is no case law. Cases are usually decided under similar parameters, but prior decisions are not binding on courts.
Chile is a member of the Paris Convention, TRIPS and TLT.
The CIPA contemplates:
There are no specific marks protected in a way that differs from ordinary marks.
Section 20 (g) of the CIPA expressly contemplates the relative grounds for refusal for based on the existence of foreign registered trade marks which are well-known or famous in their country of origin.
Chilean trademarks generally last for ten years counted as from registration, renewable indefinitely for ten-year periods.
The exceptions to this rule are slogans and geographical indications and appellations of origin. The first expire along with the mark on which they depend, and the latter have an indefinite duration.
Section 19 bis E of the CIPA expressly contemplates the exhaustion of trade mark rights as follows: “The right conferred by a trademark does not allow its owner to prevent third parties from using the same in connection with products legitimately commercialized in any country under the said mark by the owner or with its express consent”.
There are no common law rights in Chile.
Section 25 of the CIPA indicates that “Any registered mark used in commerce shall bear visible marking indicating “Marca Registrada” the acronym "M.R." or letter "R" within a circle.”
Omission of this requirement does not affect the validity of the registered mark, but deprives a non-compliant owner from exercising their rights against criminal actions contemplated in this law.
Section 14 of the CIPA indicates that any agreement concerning a trade mark registration needs to be in writing. The practice of the Chilean National Industrial Property Institute (INAPI) has been to request documents to be signed at least in blue ink, and preferably before a notary public. With regards to assignments, in particular, they may refer to registered marks or pending applications.
In the first case, an assignment form must be filed and a tax needs to be paid per registration (regardless of the number of classes covered therein). In the latter, a brief referencing the assignment suffices. No taxes are due in connection with pending applications.
The assignment both for registrations or pending applications needs to be approved by INAPI to confirm formalities have been met and/or that the assignment is not likely to cause confusion among consumers. This is particularly possible with partial assignments, although it is rare for INAPI to object an assignment on substantive grounds.
Similar to assignments, licences need to be in writing and shall be recorded before INAPI against each of the trade marks included in the agreement. Recording the licence is subject to a tax per registration, against which the licence is recorded.
No substantive review from the INAPI is performed. Recording the licence is a formal proceeding and operates in the same manner as for assignments.
As to the contents of the licence, they can be freely determined by the parties without there being substantive restrictions in the CIPA which limit the autonomy of the parties. Accordingly, they may be exclusive, non exclusive or sole licensees, for limited or perpetual duration, limited territories or worldwide, potentially subject to payment of royalties, potentially contemplate minimum payments, etc.
Absence of registration does not affect the validity of the licence between the parties but the terms of the same are unenforceable against third parties. Absence of registration of the assignment does not transfer title as the trade mark registry is administered by INAPI.
The problem of failing to record an assignment or licence is that this may result in a third party acquiring the trade mark in between and recording the acquisition thus affecting the prior assignment which it will not be possible to record.
Absence of registration of a licence may make the same unenforceable against a successor of the licensor should the trade mark be assigned after the licence was granted thus affecting the licensed rights.
In order for an assignment agreement to be valid, it needs to be in writing and subsequently recorded before INAPI. No special mentions are necessary to record an assignment other than the registration number and identification of the mark being assigned.
Licence agreements are not reviewed from a substantive standpoint by INAPI but subject to a formal review to confirm that the trade mark(s) involved have been correctly identified in the agreement.
It is possible to assign a pending application subject to a formal declaration from the owner assigning the same within the application process. There is no need to pay fees to record the assignment of a pending trade mark application.
As to the possibility or licensing an application or even a non-registered mark, it is worth pointing out that while an agreement may grant a licence over a non-registered or a pending trade mark application, it will not be possible to record such agreement unless there is a trade mark registration, accordingly, while the agreement will be valid between the parties, it may not be enforced against third parties.
The CIPA expressly contemplates this possibility subject to the document wherein the security is given is in writing and subsequently recorded before INAPI. Again, a tax is due for recording this lien or security.
While the CIPA recognises rights stemming from use, pursuant to Section 2 of the same industrial property rights, trade mark rights, in particular, are consolidated with registration.
INAPI’s Trademark Under Directorate is responsible for the trade mark registry. There is an open database detailing trade mark registrations made since the late 1980’s. This is customarily consulted in the context of a prior rights search before applying for a mark.
Third-party vendors search databases with images and/or similarity indexes, and the same are usually consulted in availability searches.
A trade mark registration is in force for a ten-year period, counted from the registration date.
A trade mark registration may be renewed for ten-year periods while the same is in force, and within a grace period of up to 30 working days (Monday through Friday) counted from the mark’s expiration date. This is automatic as no special request, other than the renewal request, needs to be submitted to the INAPI.
It is not possible to refresh an application. The only possible amendment relates to re-classification upon renewal in light of differences between the classification applicable by the time of the registration and the relevant renewal.
The application may be filed on paper or in e-format. It will be necessary to identify the applicant and the representative (if applicable), one of which will need to have a tax ID number. If the mark includes a device, the same must be submitted in jpg or png format.
Trade marks may be registered in the name of anyone holding a recognised legal capacity (individuals, corporations, funds, etc).
Any symbol suitable for graphic depiction may be filed as a trade mark. Accordingly, words, images, shapes, colours, scents, sound, etc, as long as they are suitable for graphic depiction or description).
Multi-class applications are allowed for goods, services and combinations thereof.
Chile does not contemplate a use requirement to file a trade mark application or to maintain a trade mark registration in force.
Chile does not contemplate series marks.
Prior registrations are considered as relevant to registrability in Section 20 of the CIPA. Relevant sections are:
(c) symbols which correspond to the name, pseudonym or portrayal of an individual;
(f) likelihood of confusion as to the source or origin of goods or services;
(g) likelihood of confusion with prior foreign registrations which are well-known or famous in their country of origin;
(h) likelihood of confusion with prior Chilean trade mark registrations, trade mark applications or non-registered trade marks used in Chile; and
(k) symbols against good faith and commercial practice.
The INAPI usually grounds objections on grounds (c), (f), (h) and (k). Prior foreign registrations are to be asserted in opposition proceedings.
Interested third parties (who feel the potential grant would impact their existing rights) are allowed to file an opposition on the basis of relative or absolute grounds for refusal, which may apply in connection with a given application (Section 20 of the CIPA).
Upon publication of the trade mark in the official gazette, there is a 30-working day term to file an opposition. The opposition should be filed in writing in form of a complaint, including a section for facts and another for legal arguments, and should be signed by a practising lawyer.
There are no third-party observations contemplated in the CIPA other than oppositions. However, the INAPI may issue ex officio office actions if the examiner deems any of the grounds for refusal apply in connection with a trade mark application.
The threshold for having standing is to be an interested third party, and no special requirement is set in the CIPA.
It is possible to correct or amend errors and/or omissions in the identification of applicant, description of goods or services, translations, etc, by submitting a request to the INAPI. If there is any doubt, supporting evidence will be requested. New items cannot be added to the description of goods or services after the filing.
It is possible to withdraw an application before registration is granted. After it is granted, it is possible to cancel a registration either totally or partially.
Pursuant to Section 21 of the CIPA, while an application covering several classes is still pending, its owner may divide the application, upon request, into one or more “divisional applications” indicating the distribution of goods/services. Each divisional application is considered a new application for formalities and fee payment purposes, but maintains the original application’s priority date.
There are no special sanctions for misrepresenting information included in a trade mark application. However, if it was made in bad faith or in a grossly negligent manner, this may affect the statute of limitations for a potential cancellation action; if the misrepresentation was material and made in bad faith, there is no statute of limitations defence in such proceedings. The burden of proof will lie on the plaintiff.
The claim will be heard and decided by a court.
Section 20 of the CIPA contemplates several absolute grounds for refusal in the letters listed below:
(a) shields, flags, emblems, acronym or names of countries, international organisations and public agencies;
(b) as related to an object, technical or scientific names, names of plant varieties, DCI or INN set by the WHO or therapeutical indications;
(d) reproductions or imitations of quality control symbols adopted by a government absent its authorisation; or, of medals, diplomas or distinctions granted in foreign fairs or meetings, unless requested by an awardee;
(e) expressions or symbols used to express genus, nature, source, nationality, origin, use, weight, value or quality of goods, services or establishments; expressions or symbols which are of common use of lack of distinctiveness;
(i) colour or shape of products or containers;
(j) likelihood of confusion with geographical indications or appellations of origin; and
(k) symbols against public order, morality and civility.
Any refusal (whether resulting from an opposition or an office action) may be appealed before the Industrial Property Court within 15 days, counted from the date of service of the decision. Appeals need to include factual and legal support, concrete requests, be signed by a practising attorney, and the payment of appeal fees (approximately USD150).
Any refusal on formal grounds may be subject to a review by the National Director of the INAPI. The National Director, as head of the agency, will issue a ruling on the basis of administrative law principles and rules.
Chile does not participate in the Madrid System, however, approval of the Madrid protocol is being discussed in Congress.
Upon publication of the trade mark in the official gazette there is a 30-working day term to file an opposition.
The opposition deadline is non-extendible.
Legal grounds for filing an opposition can be found in Section 20 of the CIPA (elaborated in 4.4 Consideration of Prior Rights in Registration and 4.9 Refusal of Registration).
The UCA impliedly recognised dilution as grounds for legal action and, indirectly, could serve to ground an opposition under Section 20 (k) of the CIPA
Any interested third party (namely anyone whose rights may be affected by the grant of the applied mark) can file an opposition.
Since the opposition is a legal action, the individual or entity filing an opposition needs to be sponsored by a practising attorney.
There are no official fees associated with the filing of oppositions. Legal fees vary significantly between practitioners and are customarily fixed-fee arrangements, hourly rates for evidence term, or fixed fees for appeals.
Depending on the grounds for the opposition, the opponent may require a prior registration or application, but opposition may be grounded on absolute grounds for refusal and on non-registered marks as well.
The opposition procedure begins with the filing of an opposition. The same is reviewed by an examiner of the INAPI to confirm that formal requirements of the opposition are met and, at the same time, will perform a substantive analysis of the application. If the examiner deems there are grounds for refusal (which may be the same as those on which the opponent grounded its opposition), the INAPI will issue a substantive office action.
The opposition, along with a potential substantive office action, is served to the applicant who will be given a 30-working day term. If there are disputed facts between the parties, an evidence term is open (usually when grounded on Sections 20 (f), (g), (h) or (k)). The evidence term is of 30 days and may be extended for additional 30 days. There are no discovery in these proceedings.
After the response term elapses and/or the evidence term elapses, a decision is rendered. The decision may be appealed before the Industrial Property Court.
The opposition procedure before the INAPI is resolved through motion practice. The proceeding before the Industrial Property Court is resolved in a hearing.
The decision of INAPI may be appealed by the losing party (or by both parties if the decision partially affects them). The term for filing an appeal is 15 days, counted as from the date of service of the decision.
Once appealed, the appeal brief is reviewed on formal grounds by INAPI. If the said requirements are met, the case file is sent to the Industrial Property Court. Within three months, counted as from the date of delivery of the case file to the Industrial Property Court, a hearing is set and a decision is rendered on the same day of the hearing or shortly after.
The decision of the Industrial Property Court may be subject to an annulment recourse to be heard by the Supreme Court. Such recourse cannot challenge the facts of the decision but only the legal arguments. Annulment recourses can take 12 months to be heard.
The statute of limitations for filing a cancellation action is of five years counted as from the registration date. If the registration was obtained in bad faith, the statute of limitations does not apply.
A cancellation can be grounded on a wrongful grant. Accordingly, any ground for refusal of an applied mark which may have been applicable by the time of the filing of the application (currently those of Section 20 of the CIPA) can be used to ground the cancellation action.
Any interested third party (to whom the cancellation of the mark may affect) may request a cancellation. Grounds for cancellation will need to relate to the plaintiff and, for the cancellation to proceed, should apply by the time of the filing of the trade mark application whose cancellation is sought.
The competent court to hear cancellation actions against trade mark registrations is the head of the INAPI.
If the cancellation action affects only a part of the goods or services a partial cancellation may be filed (although this alternative is not expressly contemplated in the CIPA).
The trade mark owner may cancel its trade mark registration, totally or partially, at any time. No amendments are allowed on existing descriptions of goods or services unless they constitute limitations.
The competent courts differ. Cancellation actions are heard by the head of the INAPI, whereas infringement actions are heard by the competent civil or criminal court.
Since proceedings, competent courts and available recourses differ, timelines for decisions in cancellation and infringement actions will differ accordingly.
Criminal actions have a statute of limitations of five years, counted from the date on which the infringing act took place.
Civil actions have a statute of limitations of four years, counted from the date on which the infringing act took place.
Pursuant to the CIPA, criminal actions are available for malicious use, to commercial ends, of a sign identical or similar to a registered mark, as long as it is used in connection with the same or related goods or services compared to those included in the description.
Likewise, the CIPA contemplates civil actions for the unauthorised use of a sign identical or similar to a registered mark.
Unregistered marks cannot serve to ground infringement actions pursuant to the CIPA. However, if the unregistered mark has goodwill which is being taken advantage of by a third party, the owner of the unregistered mark may file a civil action grounded on the UCA.
There are no special grounds for action based on dilution or cybersquatting, however, trade mark owners facing dilution or cybersquatting situations may bring action under the CIPA, the UCA or general tort rules depending on the facts of the case.
Any interested party and the trade mark owner of record are recognised as having standing to bring an infringement action.
While Section 19 bis D of the CIPA recognises the trade mark owner as the potential claimant, Section 107 recognises this possibility to any interested party. Accordingly, if an interest can be asserted (and potentially evidenced), an infringement claim may be brought by a licensee.
Pending trade marks do not give rise to trade mark infringement actions under the CIPA. Prior to registration, an action may be brought grounded on the UCA or general tort rules.
Representative or collective actions are not permitted in Chile.
Only criminal actions, as noted in Section 25, require the marking requirements to have been met for criminal action to be available.
Any threat to sue may be responded to with a formal request to sue pursuant to the same within a given time frame as set out in the civil procedural code. If the action is not brought within the said timeframe, the action lapses and cannot be filed subsequently on the same grounds of the threat.
Misuse claims can be asserted pursuant to the UCA or antitrust rules.
Since the competent court hearing infringement actions is an ordinary court (civil or criminal) pleading standards are the same as those in non-intellectual property proceedings.
All arguments should be put forward in the initial complaint and the response. Additional arguments may not be put forward afterwards.
The defendant can initiate a lawsuit in response, although it is arguable whether the same can be pursued in the same trial.
For civil actions, the first instance is heard by the competent civil court, the second instance by the competent court of appeals, and annulment actions by the Supreme Court.
For criminal actions, the case is tried before the ordinary criminal court. Annulment actions against their decisions are heard by the Supreme Court or the Court of Appeals, depending on the grounds for the annulment recourse.
Before filing a lawsuit, it is advisable to notarise evidence, send warning letters, and potentially file pre-trial evidence motions. The costs of notarisation and notary-certified warning letters is relatively low. The cost for pre-trial motions will depend on the legal fees for counsel and the costs of service.
Representation by counsel is required to appear before an ordinary court of law (civil or criminal).
In principle, the trade mark office has no effect on infringement action decisions. The competent court is the ordinary civil or criminal court. However, since the registration may be cancelled by the head of the INAPI, pending cancellation actions may lead to the issuance of stays before ordinary courts or, in the event of cancellation, to a ground for rejection of the infringement claim.
There are no declaratory judgement proceedings in Chile.
Civil and criminal actions encompass the remedies addressing counterfeit marks. Also, to prevent counterfeit imports, it is possible to record registered trade marks before Customs.
The relevant statutes are the CIPA, the criminal code and the law on border measures.
Infringement cases are tried under summary trial rules (complaint, response hearing, evidence and decision).
The case is determined by legal judge who does not necessarily have a trade mark background.
The parties have no influence on the decision maker as the general rules of jurisdiction determine which judge will be competent to hear the case.
Although advisable to establish trade mark use by the time of the filing, it is not necessary to do so in order to file an action. In order to prevail in such action (both in civil and criminal proceedings), evidence of use is necessary for a purely descriptive use will not infringe a mark.
Since Chile is a civil law country where decisions are not binding, CIPA (not any other statute provides such factors) infringement will be determined by the court on a case by case basis over the merits of the case and using the parameters set out by the court in its own criterion.
Under the CIPA unauthorised use. Under the UCA, any use likely to divert by unlawful means your clients to a competitor. This could encompass cybersquatting and dilution in general.
The unauthorised use of a mark identical to a registered trade mark, and concerning the same goods or services, is presumed to be an infringing use.
There is no closed list of defences. Any defence which may dispute the assertions of the plaintiff in its claim is valid. That said, the usual defences and non-infringing use (outside of the scope of the registered mark), authorised use whether by contract – in case of a licence – or implicit authorisation, ie estoppel, laches or acquiescence. The CIPA expressly contemplates good faith of the distributor as a defence in Section 109 and the first sale doctrine in Section 19 bis E Defences grounded on own-name and violation of competition law can be asserted, but will likely need a pronouncement from a court competent on competition law (a specialised antitrust tribunal).
Priority has very limited application as it is contemplated for a limited period of time (180 days) counted as from the registration.
Objection on non-use is unlikely to be considered as a sole argument as there is no use requirement under the CIPA.
Forfeiture, limitations or abandonment could have a better result if a mark was indeed abandoned or limited excluding the objected use.
It is possible to file a pre-trial motion requesting access to documents from the future defendant as long as such access is necessary to bring action against it. To this end, a motion is filed before the competent court and the same will review the request and grant the same if, in its sole judgement, the request has merit. The access to documents does not include confidential documents.
During a trial, such request can be made during the evidence term.
In trade mark matters, surveys and experts are not usually relied upon by courts. Experts in Chile (for court purposes) are only those registered as such with the relevant court of appeals. Such experts are not trade mark experts and thus their reports are usually not useful.
Surveys and reports produced by the applicant are considered documents for the purposes of assessing their merit.
Criminal actions are available in case of wilful infringement of a trade mark for a commercial purpose.
There are no fees due to the judge. There is a free access to justice principle in Chile and, thus, ordinary courts are not subject to the payment of any fees to the parties. Arbitration tribunals are subject to remuneration. Also, court proceedings performed by court officers may be subject to fees for the service of summons, recording of hearings or issuance of expert reports, as the case may be.
This said, attorney fees may be substantive (especially relative to court costs) depending on the fee arrangement with the attorney of record.
All injunctions available under civil procedure are available for trade marks. In addition, the CIPA contemplates in Section 112 additional injunctions for:
Section 108 contemplates general rules for damages under civil law (actual damages) or, at the plaintiff’s choice:
The judge can only issue a pronouncement on the choice made by the plaintiff and over the basis of the evidence on record.
Criminal actions contemplate the impoundment and destruction of infringing goods. The means for the manufacture of the infringing goods may also be impounded and subsequently destroyed or distribution for the benefit of others at the criminal judge’s choice.
There are no court fees due to the tribunal. Court proceedings performed by court officers may be subject to fees for the service of summons, recording of hearings or issuance of expert reports, as the case may be. All of them are to be paid by the interested party (usually the plaintiff).
The losing party may be order to reimburse the prevailing party’s court costs and attorney fees (the first as evidenced by receipts and the latter as assessed by the court) only if the plaintiff wins on all counts and, even then the judge may exempt the losing party from paying such fees if they deem the said party had plausible reasons to litigate.
The trade mark owner can seek injunctive relief with the court without notice to the alleged infringer, even prior to the beginning of the trial, provided that it indicates the action it intends to file and its grounds, there is fear of irreparable harm and substantive antecedents of the infringement. The court may request the issuance of a bond or security. If the pre-trial request is granted, a formal lawsuit shall be filed within ten days, extendible for up to 30 days.
There is a declaration of non-infringement and, if the plaintiff is fully defeated and the court deems it had no valid reasons to litigate, award of costs.
Pursuant to the border measures act, once a shipment is detected, and provided the owner has recorded trade marks with customs, a notice will be sent to the owner to inform of the shipment. If deemed counterfeit, the trade mark owner is entitled to request the shipment not to be released.
The shipment will be detained for up to ten working days, term in which the owner must bring action. Otherwise, the shipment will be released. If it an evident counterfeit, customs may act ex officio.
Remedies do not differ for different types of trade marks.
In litigation scenarios, in principle, the parties may settle the dispute before, during or even after a ruling is entered as long as they are in agreement and reciprocal concessions are made. In the context of a civil trial, there is a mandatory call to settle the existing dispute following the discussion phase. The court will propose terms for a settlement and will present them to the parties who may, or may not, agree to them. They can further propose settlement terms ex officio prior to a judgment being entered.
ADR for trade mark disputes is not mandatory nor is there a legal body contemplating that possibility in particular. That said, contract provisions may lead to the settlement of trade mark disputes between the contract parties before an arbitration tribunal.
In theory, other court proceedings do not have influence on any current proceedings. The Courts have a duty to decide on the merits of the facts on record as they exist by the time of the decision making. However, on occasion, courts do issue stays to prevent conflicting decisions from being issued.
The decision of the first instance court on an infringement case may be appealed before the relevant Court of Appeals. This is true for the decision on the merits of the case and for several ancillary decisions within the process.
Depending on the Court of Appeals, decisions on appeal take from three-12 month to be issued.
General rules for appeals apply in trade mark proceedings. If related to infringement, the Court of Appeals has no specialisation on trade mark law. In regards to application and cancellation proceedings, the Industrial Property Court is formed exclusively by judges with experience in industrial property law (mostly trade marks).
The review of infringement cases on appeal by the relevant Court of Appeals, and that of the Industrial Property Court in cancellation or application proceedings, is a full review (factual and legal) with the possibility of adding new evidence if available.
The review of the Supreme court on annulment recourses is only legal.
If a symbol is eligible for protection under the copyright act and the CIPA there is no objection to double protection.
Moral rights cannot be waived. However, in practice, this is not an issue as most works eligible for protection under copyright law are created under work for hire provisions from corporations who secure the relevant rights and authorisations to the entity acquiring the same.
There are no grounds for refusal based on copyrights or related rights. However, if clearly identified with the author, the said author may ground an opposition under Section 20 (f) on its copyright.
Potentially conflicting authorisations from the copyright holder and the trade mark owner could have a similar purpose (for example, authorisations to reproduce the work and authorisation to manufacture t-shirts bearing the same work) and this could create a potential problem, but there are no examples and, in any event, it would likely be resolved in favour of the copyright owner.
Shapes cannot be registered as trade marks as an absolute ground for refusal under Section 20 (i) of the CIPA.
There is no specific recognition of publicity rights in Chilean legislation. In general, jurisprudence has recognised them under tort law principles and this is not limited to celebrities but for any individual who may be identified from a given image.
If a trade mark includes the portrayal, pseudonym or name of an individual, they may file an opposition to (or request the cancellation of) the trade mark (registration) under Section 20 (c) of the CIPA.
This said, causes of action under publicity rights and trade marks may be available if the owner is the same individual.
The UCA supplements the CIPA and provides examples of specific unfair competition cases, as well as a general unfair competition definition which assists to the enforcement of infringement situations not expressly contemplated by the CIPA. However, if both UCA and CIPA actions are available, those of the CIPA will be preferred, given the existence of a more favourable damages rule.
The most significant development expected for the coming year is the approval by Chilean Congress of the Madrid Protocol.
There are no special rules for trade marks in the Internet. The most relevant connection is the Chilean domain name UDRP arbitration system which, in general, settles revocation claims in favour of trade mark owners.
The CIPA establishes exceptions to trade mark rights in 19 bis D, 19 bis E and 109. Of these, 19 bis D indicates that a registered mark may be used as it was registered, 19 bis E sets out the grounds for a first sale doctrine to apply and lastly, Section 109 exempts distributors of goods from liability associated to their distribution if the same were not manufactured by them and they did not know they were infringing third-party rights.