CHILE: An Introduction to Intellectual Property
A new international, constitutional and legal framework for the intellectual property rights in Chile as of 2022.
Andrés Melossi
Beuchat, Barros & Pfenniger
www.bbp.cl
Important changes in Chilean law in relation to trade marks, patents, utility models, industrial designs and industrial drawings will enter into force in early 2022. These changes cross paths with a major constitutional reformulation, which is taking place in Chile through a Constitutional Convention elected for the sake of proposing a new constitutional charter for the country.
Both courses of action will mean important and relevant changes, but they are not the only changes; in the first quarter of 2022, Chile will formally join the Madrid Protocol as approved by the Chilean Congress in May 2021.
All of this certainly introduces the need for several changes in local practice and imposes on local practitioners an important effort not only to adapt their knowledge and expertise, but also to update their internal capacity in terms of technological support.
From the international point of view, joining the Madrid Protocol will allow an important number of users to take advantage of this tool to protect their trade mark rights. From the local trade mark owners' perspective, they will need to be alert to defending their rights from Chilean designations from international applicants.
Notwithstanding the above and despite some optimistic assumptions by the authorities when supporting the approval of this treaty (such as that the number of Chilean trade mark applications will rise by 30% or that it is a tool for the Chilean small or medium companies, in circumstances that the real potential local users of this important tool will be the largest Chilean companies and in just a few sectors such as wine), joining the Madrid Protocol is a clear demonstration of the fulfilment of international standards and a new step in favour of multilateralism as a permanent goal of the country in its vision for conducting the economy in relation with the world, where intellectual property has an important role.
From the constitutional point of view, there are some uncertainties since the debate in relation to fundamental rights will not be easy due to the competing visions at stake. However, what can be foreseen is a broad opinion amongst the constituents in favour of extending fundamental rights and making them more enforceable, but major changes are not expected in respect of intellectual property rights as ruled today other than a probable introduction of general mentions regarding traditional knowledge and indigenous rights, as has been the tendency in other multinational or multicultural countries.
It is expected that the constitutional text may be ready before April 2022 and a referendum will decide to adopt that proposed text as a new constitution or keep the current one.
Finally, in relation with the internal legislation on trade marks, patents, utility models, industrial designs and industrial drawings, we can highlight the following 21 changes:
1.- New kinds of trade marks recognised for protection (three-dimensional and olfactory trade marks).
2.- Mandatory use of trade marks in the Chilean territory.
3.- Expiration of trade marks that have become generic and descriptive of goods, and special expiration of appellations of origin and geographical indications.
4.- Abolition of the protection of commercial outlets and industrial outlets and their conversion to classes 35 and 40 respectively.
5.- New rules for paying the initial official fees in respect of trade marks, appellations of origin and geographical indications, patents, utility models, industrial drawings and designs.
6.- New rules for the term to file a renewal application and the term to pay the official renewal fees on trade marks.
7.- New rules for the term to pay for recordals (changes of name, assignments, mergers, encumbrances, prohibitions, licences etc.) in trade marks, appellations of origin and geographical indications, patents, utility models, industrial drawings and industrial designs.
8.- New rules for the payment of maintenance fees on patents, utility models, industrial drawings and industrial designs, as well as on integrated circuits.
9.- Chance to extend the protection of industrial drawings and industrial designs until 15 years.
10.- An alternative automatic registration procedure with no substantive examination in industrial drawings and industrial designs.
11.- New rules in relation to the way to calculate damages in IP infringement cases.
12.- Effective imprisonment for IP infringements.
13.- Changes in the rules for supplementary protection.
14.- Special action in favour of inventors to recover a patent applied for without authorisation or assignment.
15.- New patent right exceptions.
16.- New provisional patents.
17.- New definition in relation to industrial secrets.
18.- New deadline for the reinstatement of rights in case of PCT Chilean National Phases.
19.- Shorter deadline for recovering the procedure without losing priority after abandonment.
20.- Electronic notification as official channel for oppositions and office actions based on substantive grounds.
21.- Deferral of the payment of initial official fees from the application date and increase of initial fees in patent applications with more than 80 pages.
I will focus on some details in relation to six of the above changes that represent the most important from my point of view:
New kinds of trade marks recognised for protection
The new provisions of the law recognise three-dimensional trade marks and olfactory trade marks.
These new categories are added to traditional trade marks, as well as sound marks, collective marks, certification marks and slogans, which are already recognised in our legal system.
Mandatory use of trade marks in the Chilean territory
The reform provides for the cancellation of a trade mark registration for non-use within five years prior to the beginning of the cancellation procedure. This cancellation can be declared at the defendant's request within an opposition or annulment trial and in the context of cancellation demand filed by a third party.
For registered trade marks at the time when the reform enters into force, the burden of use will be applicable after its subsequent renewal, so there is no risk of cancellation for these registrations up to be renewed once the new law enters into force.
Expiration of trade marks that have become generic and descriptive of goods, and special expiration of appellations of origin and geographical indications
A special sanction of expiration of a registered trade mark is provided by the new law when it becomes generic or descriptive of the relevant goods or services.
This forces trade mark owners to take care of how their trade marks are being used in the Chilean market and which measure and policy of use they must adopt.
Chance to extend the protection of industrial drawings and industrial designs until 15 years
The owners of those industrial designs or industrial drawings with pending applications or already granted and valid at the moment when the new law enter into force, will be able to extend the protection by five years by paying the corresponding maintenance fees for this third five-year period of protection.
Alternative automatic registration procedure with no substantive examination in industrial drawings and industrial designs
At the time of filing applications for industrial drawings or industrial designs, the applicant may opt for the general registration procedure, or for an alternative and abbreviated procedure to obtain a certificate of deposit without carrying out a substantive examination.
Notwithstanding the above, it is not possible to file infringement actions against third parties without a previous request of a substantive examination of the industrial design or industrial drawing and the subsequent confirmation of the fulfilment of the substantive requirements for obtaining the protection by the Chilean Office.
New provisional patents
Provisional patents are a new institution in our system and can be used as priorities for subsequent regular national or international applications.
The regular application must be filed no more than 12 months after the provisional patent with the complete set of claims, specifications and drawings.
There is no doubt that all these changes will be beneficial for the protection of intellectual property rights, since they add new alternatives of protection with an encompassed insertion in the multilateral environment of the international intellectual property system.
Andrés Melossi
Attorney at Law
Partner of Beuchat, Barros & Pfenniger
www.bbp.cl