“INAPI issues proposal for new IP regulations: 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 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 January 25, 2022. For more information, visit www.worldtrademarkreview.com.

INAPI issues proposal for new IP regulations: what you need to know

The amendments to the Industrial Property Law are due to come into force when the corresponding regulations are promulgated.

Although the regulations have yet to be officially published, INAPI has set the standards for the final regulations.

A key change is that the “graphical representation” requirement has been withdrawn.

The Chilean Industrial Property Law was modified in July 2021 to bring it into line with international standards. It was necessary to promulgate the corresponding regulations in order for the modifications to enter into force, which had to be done by January 2022. Although such regulations had not been officially published at the time of writing, the National Institute of Industrial Property (INAPI) had sent to the executive power a “Project for New Regulations” setting the standards for the final regulations.
This update highlights the main dispositions of the project.

General dispositions
     • In order to meet the requirements of the Digitalisation State Law, and as a general rule, the requirement to physically file documents and analogic antecedents with applications and procedures has been eliminated; these now have to be filed digitally.

     • Pursuant to the Regulations for the Execution of a Law, the new text has removed the repetition of concepts in the law, which was ineffectual and could cause misunderstandings.

     • The draft proposed by INAPI advises to completely derogate the previous regulations, as they are ordered organically or replaced by the new text. The latter deals with all the matters necessary for the implementation of the Industrial Property Law, which will be in force as of the date of publication of the proposed regulations.

Trademarks and signs

Based on the new regulations, and on the old rules that are being maintained, the following novel rules dealing with distinctive signs are the most significant:
     • A key provision states that trademarks may be represented in any adequate form (ie, which is sufficientlyclear and can be contained in the register), as the new law has withdrawn the “graphical representation” requirement. This change is intended to allow the protection of non-traditional trademarks, such as olfactory and gustative marks.
     • Applications for collective and certification marks must be filed together with their rules for use. According to the new requirements established by the law, those rules must include:
        o the components, origin or any other quality of the products and services that will be certified or guaranteed by the collective or certification mark;
        o the requirements for users to be affiliated to the collective mark;
        o the rights and duties of the authorised users of the mark;
        o the sanctions for not complying with the rules of use; and
        o the ways of modifying the rules of use.

     • With regard to geographical indications and appellations of origin, the regulations, according to the current text, clarify that these are “distinctive signs” and establish that the rules for use and control of such signs must include:
        o the description of the product covered;
        o the description of the processes used;
        o the delimitation of the corresponding geographical zones;
        o the institution administrating the geographical indication or appellation of origin;
        o the description of the methods for control;
        o the rights and duties of users; and
        o the ways of modifying the rules.

     • The acceptance of any industrial property rights, which comprise trademarks and distinctive signs, must be notified through a daily written status and sent to an electronic email address provided by the applicant or its attorney.

Comment
INAPI’s proposal is to be welcomed, as it removes inconvenient reiterations and is more accurate and precise than the former regulations, thereby meeting the necessary requirements to implement the recently modified law.