Chilean Trademark Protection System
Commercial brands are effective tools for distinguishing products in the market and avoiding confusion among consumers between different products. Trademark registration provides legal protection for the owner, who can prevent third parties from using the trademark without their consent during commercial transactions to distinguish products or services similar to those registered.
In Chile, trademarks can be composed of words (text marks) or combinations of words (mixed marks), numbers, letters, symbols, graphics (graphic marks), and even auditory marks (sound marks).
INAP Introduction to the Chilean National Industrial Property Office
The Chilean National Institute of Industrial Property (INAPI) is responsible for the examination and registration of Chilean patents (including inventions, utility models, designs, industrial drawings, or integrated circuit drawings) as well as trademarks and geographical indications.
Website: www.inapi.cl
Address: Av Libertador Bernardo O’higgins 194, piso 1, Santiago, Chile
Phone:+56 2 2887 0400
Email： inapi@inapi.cl
Introduction to Chilean Trademark Registration
3.1 Definition of Trademark
A trademark is a graphic representation that distinguishes different goods, services, or institutions in the market.
A trademark can be composed of words (text marks) or combinations of words (mixed marks), numbers, letters, symbols, graphics (graphic marks), and even auditory marks (sound marks).
Advertisements and slogans can also be registered as trademarks when assigned to the goods, services, or institutions that will use them.
The protection rights granted to the brand are territorial and temporary – after paying the corresponding fees, they can be indefinitely protected for 10 years nationwide for the same period of time.
3.2 Advantages of Registering a Trademark
Consumers make purchasing decisions when choosing goods or services because a specific brand has certain qualities and characteristics.
Commercial brands are effective tools for distinguishing products in the market and avoiding confusion among consumers between different products.
Trademark registration provides legal protection for the owner, who can prevent third parties from using the trademark without their consent during commercial transactions to distinguish goods or services similar to those registered.
There are two types of legal proceedings for the unauthorized use of registered trademarks: civil litigation and compensation for economic losses incurred by external parties; Criminal proceedings shall be conducted in accordance with the crimes prescribed by law.
3.3 Main reasons why trademarks cannot be registered
Before submitting a trademark registration application to INAPI, it is necessary to consider certain words that are not allowed to be registered as trademarks.
The legal provisions in Chile are very clear in this regard, similar to those in other parts of the world. In Chile, logos that fall under the following circumstances will not be registered as trademarks:
When the logo of a pending trademark lacks unique elements, it is difficult to distinguish its goods or services from those of another company.
When a word is used to specify the category, nature, source, country, purpose, weight, value, or quality of a class of goods or services, it shall not be registered as a trademark.
For example, if an attempt is made to register the SILLA brand (translated as chairs in Chinese) to sell chairs, the brand will be rejected because the word “silla” itself is a generic term for the product.
If you want to register a descriptive brand, such as DULCE (translated as dessert in Chinese), it cannot be registered as a trademark for chocolate because the word is descriptive. That is to say, granting a single chocolate manufacturer the term “dessert” as a trademark to promote their products to ensure their exclusivity is unfair to manufacturers in the same industry.
When a trademark corresponds to a technical or scientific name, a plant variety name, or a name recommended by the World Trade Organization (WTO), it shall not be registered as a trademark.
When a trademark symbol is composed of the shape or color of a commodity or its container, it shall not be registered as a trademark.
When the trademark symbol is the color of the product itself, it cannot be registered as a trademark.
When the trademark symbol to be applied for registration violates morality, public order, or good customs, it shall not be registered as a trademark.
When a trademark symbol corresponds to a national emblem, symbol, flag, national emblem, or any name or abbreviation of a country or government, it shall not be registered as a trademark.
When the trademark symbol to be applied for registration differs, deceives or confuses with the geographical origin, quality or category of the goods and services advertised, it shall not be registered as a trademark.
For example, if you want to sell milk, yogurt, and eggs, and the selected trademark logo highlights the word HUEVO (translated as egg in Chinese), then the application is likely to be rejected as a trademark for both milk and yogurt, as it will entice consumers to confuse the product category by associating the brand with eggs.
When the trademark symbol to be registered conflicts with the rights obtained by a third party, it shall not be registered as a trademark.
When the trademark symbol to be applied for registration is similar in graphic representation or pronunciation to other previously registered trademarks in Chile for the same or similar goods or services, and there is a risk of confusion between the two, it shall not be registered as a trademark.
When the trademark symbol to be applied for registration is identical or similar to a trademark already registered abroad for the same or similar goods or services, it shall not be registered as a trademark.
When the trademark symbol to be applied for registration is composed of the name, stage name, or portrait of any natural person, it shall not be registered as a trademark unless the individual or their successor agrees, or the individual has passed away for more than 50 years without affecting their honor.
When the trademark symbol to be registered may lead to misunderstandings or confusion among the consumer public about the origin or attributes of the goods (such as being the same or similar to a well-known geographical name in Chile), it shall not be registered as a trademark.
Chilean Trademark Registration Procedure
4.1 Procedure for Applying for a Trademark with INAPI
The process of registering a trademark in Chile mainly includes three stages: filling out and examining the application form, processing the excerpts from the official gazette, and examining the background of the application.
The first step is to submit an application, in which the applicant seeks protection for their goods, services, commercial premises, industrial premises, or promotional slogans, and establishes their respective categories based on their types (such as furniture, beer, clothing, financial services brands). According to this requirement, a formal review will be conducted to verify compliance with legal and regulatory requirements. Once the formal examination is approved, the application must be published in the official gazette so that third parties can object if they believe they have better rights. Regardless of whether there are objections, INAPI will conduct substantive examination to confirm that the trademark application will not infringe any unregistered legal basis. Once the substantive examination is approved, the National Director of INAPI grants an administrative resolution for the trademark and its subsequent registration. If the trademark application is rejected, the applicant can appeal to the Industrial Property Court.
4.2 How to apply for trademark registration?
There are two ways to submit a trademark application:
- a) Written submission: Fill out and submit the corresponding form at the INAPI office from 9:00 am to 2:00 pm every Monday to Friday.
- b) Online submission: Enter the online application form on the INAPI website
To log in to the INAPI application process website, you can use the user’s unique password. Online services can also be accessed through an INAPI account, provided that the account was created and registered before April 26, 2017.
4.2.2 Submission of Authorization Letter
When the applicant for trademark registration is a company or multiple individuals, they must act through representatives, and their representatives must submit corresponding authorization letters to authorize them to apply for trademark registration.
Therefore, it is recommended to bring a notarized copy of the notarized certificate and a storage form named “FPI-50” to the INAPI office before submitting the application online or in person.
Once the authentication documents used to testify against the authorized person or co owner representative are submitted, INAPI will grant a power of attorney custody number to avoid attaching the original power of attorney to each document. The above requirements apply to any form and type of application.
If residing in a city outside of San Diego, documents can be sent to INAPI’s office in San Diego via registered mail.
When the applicant is a foreign resident, a permanent representative of Chile must be designated to handle the application on his behalf and continue to act as his representative after obtaining registration. For this purpose, the applicant must implement extended authorization for the selected resident residing in Chile abroad, and specify his/her ID card number and residence registration address in Chile. This power of attorney can be attached to the application form.
Without affecting the aforementioned requirements, the applicant may submit an application through a representative without attaching a power of attorney. However, due to the formal requirements of the processing procedure, the trademark registration application will be required to provide a power of attorney in the form of an examination resolution during INAPI’s examination of the application method to continue the approval of the trademark application. This will mean that the processing time for trademark registration applications will be delayed.
4.2.3 Publish Application
The applicant must apply and pay the fee for publishing their trademark registration application in the “Official Announcement” within 20 working days.
With the announcement of the application on the ‘Official Announcement’, a 30 working day public notice will begin to ensure that no third party has objections to the registration application.
The applicant should go to the office of the National Industrial Property Administration within the time limit specified by INAPI to request the publication of an official announcement, or complete the online application through the website link of the official announcement.
4.3 Classification of Application Forms
INAPI provides six forms of trademark registration application forms. The application can be cross class, which means that the applicant can apply for multiple categories of goods in one trademark application form, or apply for services for different categories in one trademark application form. In addition, trademarks can be applied for both goods and services in the same application form. The differences between the six types of trademark application forms are as follows:
Goods and/or Services (FPI-58): Through this form, trademark protection can be requested to distinguish businesses that purchase or sell one or more corresponding categories of goods. It is necessary to provide a detailed description of each category of goods (it is the only form that covers by region, therefore it pays application fees by category and region).
Industrial enterprises (FPI-61): Through this form, trademark protection can be requested to distinguish enterprises that specialize in manufacturing or refining one or more corresponding categories of goods. Each category of goods must be listed (with fees paid according to the category of the applied goods).
Promotion Phrase (FPI-59): Through this form, you can request protection for phrases used to promote previously registered trademarks. Therefore, protecting promotional phrases necessarily requires trademark registration, and the regional scope of promotional phrases depends on the registered trademark. In the application for protection of promotional phrases, the scope of the applied area can be restricted, but there is no exclusive right to promote a larger area of the corresponding registered trademark, which is defined as a trademark mark.
Collective Trademark (FPI-62): Through this form, protection of collectively used trademarks can be requested to distinguish the source, materials, manufacturing methods, or other common features of goods or services provided by members of a consortium, and to allow them to be distinguished from goods or services provided by persons who do not belong to that group. The above trademarks cannot be transferred or acquired.
Certified Trademark (FPI-63): Through this form, it is possible to request (usually a certification company or a professional capable of certification) protection of a brand to be applied to goods or services to demonstrate one or more recognized features. The function of these trademarks is to prove or ensure that their goods or services comply with certain predetermined standards, and for these standards, personnel responsible for certification should exercise prior and ongoing control.
4.4 Trademark Protection Period
The trademark registration period is 10 years from the date of granting registration. It should also be noted that after trademark registration, it can be renewed indefinitely within its term or within 30 working days after the expiration of the registration period.
For more information, please refer to the official website of INAPI.