CHILEAN CONGRESS FINALLY APPROVES MADRID PROTOCOL AFTER GOVERNMENT PUSH

01 / 10 / 2021

“Chilean Congress finally approves Madrid Protocol after government push” is the title of the recent article published in the prestigious magazine World Trademark Review, written by Sergio Amenábar, senior advisor of Villaseca Abogados.

We reproduce the article in its entirety below. This was originally released by WTR Daily, part of the World Trademark Review, on August 31st, 2021. For more information, visit www.worldtrademarkreview.com.

Chilean Congress finally approves Madrid Protocol after government push

· Congress has finally approved the Madrid Protocol following an intervention from the government.

· Many parties broadly welcome the approval, considering that accession to the protocol is an inevitable consequence of globalization.

· However, dissenters question the impact on Chilean enterprises, as well as disparities between numbers of foreign and local marks privileged by the treaty.

After two decades of doubts, the Chilean Congress has finally approved the Madrid Protocol for International Registration of Trademarks. This was after the government sent the legislature a new initiative on the subject, which was granted with unusual speed.

According to the message sent to Congress by the government, the objectives for this approval are:

· to actualize Chilean legal norms;

· to support innovation;

· to help Chilean enterprises to enter the global trademark scene; and

· to harmonize local practice with that of other countries, considering the several free trade agreements (FTAs) to which Chile has signed up.

The administrative approval of the treaty has not yet concluded, as it will be necessary to make some internal formal arrangements and to establish national declarations with regard to terms for rejecting international applications, among other matters.

It is predicted that these steps will be finalized by December, when it will at long last be possible for Chile to ratify the protocol with WIPO.

While no uniform reaction from national enterprises is yet known, the opinions of professional experts are, as usual, divided on the subject.

Some share the government’s belief that the protocol is an unavoidable consequence of globalization, as well as of the FTAs that Chile has signed up to, including with the European Union and the United States.

Others do not agree with the approval and claim that there has been a lack of different views on the subject and, in particular, a complete absence of studies into the impact of the protocol on Chilean enterprises. However, despite this, the dissenters largely appear to have accepted the approval, recognizing it as inevitable sooner or later.

However, some specialists continue to maintain that the protocol conflicts with the present Chilean Constitution due to:

· contradictions with property rights that have already granted; and

· significant quantitative difference between the number of foreign and local trademarks privileged by the treaty, as has been the case in other Latin American countries (e.g., Mexico and Colombia) that have already signed up to the Madrid Protocol.

While a convention is currently preparing a new version of the country’s Constitution, the current version will remain valid until a new one comes into force.

From a comparative point of view and regarding recently approved reforms to the Chilean Industrial Property law, this group of critic points to measures designed to prevent the maintenance of speculative registrations, one of the principal risks of the treaty under analysis, which were only hardened by that reform. However, the substantive fact remains that the protocol has already been approved by the two legislative competent state bodies involved.