“Important modifications to the industrial property law: what you need to know” is the title of the recent article published in the prestigious magazine World Trademark Review, written by Sergio Amenábar, senior advisor, and Carol Schmeisser, associate, 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 May 28, 2021. For more information, visit www.worldtrademarkreview.com.

It should be noted that the prior constitutionality control referred to was resolved on June 10, 2021, and on July 5, the law was published in the Diario Oficial of Chile.

 

Important modifications to the industrial property law: what you need to know

On 21 April 2021 the Chilean Congress approved a bill that modifies the current Industrial Property Law, which dates back to 1991 and was last modified in 2012. The bill introduces several procedural and substantive modifications, and must now be approved by the Constitutional Court. This is expected to occur within the next few months.

This update highlights the main substantive modifications to the Industrial Property Law.

New types of trademark

Olfactory and three-dimensional trademarks are now included as registrable signs.

Cancellation for non-use

A trademark registration may be totally or partially cancelled if:

• After five years from the date of registration, it has not been put to real and effective use within the national territory, either by the owner or by a third party with the owner’s consent, to distinguish one or more of the products and/or services for which it is registered; or if such use has been suspended uninterruptedly for the same period; and

• if its owner has caused or tolerated its transformation into the usual designation of a product or service for which it is registered, so that it has lost its force or capacity to distinguish the product or service to which it is applied.

The declaration of forfeiture must be requested by an interested third party and cannot be made by the Trademarks Office ex officio. The burden of proof rests on the owner of the registration, which may use all means of proof included in the Industrial Property Law.

Circumstances that arise independently of the owner’s will and constitute an obstacle to the use of the trademark – such as import restrictions or other official requirements imposed on the protected goods or services – shall be recognised as valid reasons for non-use.

Criminal trademark infringement

The new law modifies the provisions on trademark infringement, imposing prison sentences ranging from 541 to 1,095 days for the following conducts

• the falsification of a trademark registered for the same products or services;

• the fabrication or introduction in the country of objects bearing registered trademarks, or the trading or holding of registered trademarks; and

• the possession for commercialisation or the direct commercialisation of products bearing falsified trade or services marks registered for the same products or services.

Incompatibility of geographical indications or appellations of origin with other signs

The modifications clarify issues that had arisen previously in this respect. The new law provides that the following signs cannot be recognised as geographical indications or appellations of origin:

• those that may be confused, graphically, phonetically or conceptually, with other distinctive signs registered in good faith for the same or related products or services;

• those that may lead to confusion with another distinctive sign, which is not registered but has been used in good faith by a third party for the same or related goods or services; and

• those that totally or partially reproduce a notorious trademark, appellation of origin or geographical indication known in Chile in connection with any kind of goods, when this may cause confusion or constitute unfair competition, or may dilute their distinctive power where it is probable that such registration or ulterior use may damage the interests of the owner of the notorious distinctive sign.

Comment

The recently-approved bill constitutes a very important legislative milestone. Some items – such as the introduction of non-use cancellation actions and the recognition of non-traditional trademarks – have been on the table for years. The bill thus represents a crucial step to implement the modernisation of the Chilean state as far as IP is concerned.