Marking Your Territory in Chile: The Trademark Process Explained

Establishing your business in Chile's commercial market without trademarking your brand is like claiming territory in a foreign land without legal protection - you risk invasion. In Chile's competitive commercial landscape, a trademark is a shield to your brand's reputation. 

Nothing highlights this fact better than the "Quilapayún" dispute. In this case, the iconic Chilean folk group Quilapayún became embroiled in a bitter trademark battle following internal disagreements. One of the members registered the name "Quilapayún" without the consent of the others. This led to a split in the group. Two factions emerged, each claiming the right to use the name.

The dispute extended beyond Chile. In 2007, the Court of Appeal of Paris ruled against the faction using the name without proper authorization, imposing fines for each infringement. This decision was upheld by France's highest court in 2009.

In Chile, after protracted litigation spanning nearly 13 years, the Instituto Nacional de Propiedad Industrial (INAPI) finally granted exclusive trademark rights to the "historic" faction led by Eduardo Carrasco in 2015. This resolution allowed that group to continue using the name in Chile, solidifying its legacy.

A registered trademark might be your brand's lifeline when it counts the most - shielding you from internal and external attacks. 

What is a trademark?

“Registering a trademark in Chile grants you legal protection throughout the nation's territory, allowing you to stop unauthorized uses of identical or similar trademarks. In addition, it provides differentiation in the market, credibility with consumers and helps to enhance your presence on the Internet. It is also a valuable asset that you can sell, transfer, license or franchise, generating a potential extra income to your estate. Its protection lasts for 10 years, renewable indefinitely and inheritable, adding value to your trademark in the long term.” - Pamela Silva Fajuri, Trademarkia Lawyer Licensed in Chile. 

According to Chilean Industrial Property Law, a trademark is any sign that is capable of separating your goods or services from those of another enterprise. This includes names, logos, sounds, colors, letters, and even three-dimensional forms. Registering a trademark grants you exclusive rights and protects your brand from unauthorized use and counterfeiting.

A registered trademark sets your products apart from competitors. It also safeguards your brand against fraud and counterfeiting. It helps customers recognize your products and services. It also gives you the legal right to stop others from using a similar mark. 

What is the process of registration? 

Registering a trademark in Chile involves a structured process overseen by the National Institute of Intellectual Property (INAPI). The process of registering a trademark in Chile can be frustrating for beginners and laypersons due to its complexity. In light of this complexity, we have broken down the entire registration process into key steps below:

Step 1: Choosing a registrable trademark 

For a mark to be registered by the INAPI and gain legal protection, it must be new in relation to the goods or services in that market. It also needs to make a clear distinction between your goods or services and others.

Not all marks are registrable. When choosing a mark, be careful not to pick one from the categories below:

• Contain offensive or misleading content.

• Are too generic or descriptive (e.g., "Fresh Apples" for fruit sales).

• Are similar to existing trademarks in the same industry.

• Use national symbols without authorization.

Failure to comply with these requirements may result in your application being rejected by INAPI.

Step 2: Selecting the correct trademark class

The INAPI applies the Nice Classification System when processing trademark applications to ensure consistency with the international trademark classification standards. This system is recognized globally. It simplifies how goods and services are classified for trademark registration. 

There are a total of forty-five classes. The first thirty-four talk about goods, and the last eleven are about services. The class you choose for a trademark depends on the goods or services you want to protect. 

Finding the right class can be tough for beginners and first-time applicants. At Trademarkia, our attorneys can assist you in choosing the right options. We'll ensure your business is protected from every angle. We have also worked on a detailed Nice Classification System Guide that might assist you in your decision-making. This guide applies to all jurisdictions that have adopted the Nice Classification System into their internal trademarks regime, including Chile.

Step 3: Conducting a trademark search 

Before filing your application, conduct a comprehensive search to ensure your chosen trademark isn't already registered. The INAPI provides search engines through which you can check for potential conflicts. 

For broader coverage, you should also consider expanding your search to international databases such as the WIPO Global Brand Database so as to get insights into similar marks registered in other jurisdictions.  

Step 4: Preparing your trademark application 

Once you're sure that your mark is unique and distinctive, you need to gather all relevant and necessary information and documentation required by the INPI to register your mark - this includes:

• Applicant's details (name, address, contact information).
• A clear representation of the trademark (logo, wordmark, etc.).
• A description of the goods or services the trademark will cover.
• The appropriate class(es) under the Nice Classification System of the goods and services that are intended to be protected.
• Proof of prior use (if applicable).
• Power of Attorney (if applying through a representative)

Foreign entities and foreign nationals can register trademarks in Chile. However, they'll need to be represented by a local trademark agent. Original power of attorney documents will need to be sent to Chile. If a trademark is filed without the required power of attorney being presented, the trademark application will face office action.

Step 5: Filing your application 

The INAPI provides six types of forms for filing a trademark application. A single form can be used for one or many classes of goods or services at the same time. The six types of application forms for trademarks are as follows:

• Goods and/or Services (FPI-58): With this form, you can apply for protection of a trademark used to distinguish goods and/or services, whether they're classified under the same class or not. The fee amount depends on the number of classes applied for, independently of the number of goods and/or services that are included in the form.
• Commercial establishments (FPI-60): With this form, you can apply for protection for a trademark used to distinguish an establishment that buys or sells one or more products belonging to one or more classes. You should list the goods belonging to each class (this is the only form that provides protection by region, which means that payment is due for each class and each region the applicant has specified in the form).
• Industrial establishments (FPI-60): With this form, you can apply for protection for a trademark used to distinguish an establishment dedicated to the manufacture of one or more goods belonging to one or more classes. You should list the goods belonging to each class (payment is made for each class or classes of goods that the applicant has specified).
• Slogans (FPI-59): With this form, you can apply for protection for a phrase used to publicize a previously registered trademark. Accordingly, in order to request protection for a slogan, an applicant must first have a registered trademark, and the scope of the slogan will depend on that of the registered trademark the slogan is meant to publicize. In the application for protection for a slogan, you can place limits on the scope that you apply for, but you don't have an exclusive right to publicize a wider scope than that of the related trademark or the trademark that the slogan applies to, which in this context is termed house mark.
• Collective trademarks (FPI-62): With this form, you can apply for protection for a trademark to be used collectively in order to distinguish the origin, material, manufacturing procedure, or other common characteristic of a good or service produced or provided by the members of an association, so as to differentiate them from those produced or provided by others outside the group. This type of trademark cannot be transferred or assigned.
• Certification trademarks (FPI-63): With this form, you (usually a certifying company or an expert qualified to perform certification) can apply for protection of a trademark aimed to certify one or more common characteristics of certain goods and/or services. The purpose of these trademarks is to guarantee that the goods or services involved fulfill certain pre-established standards, which require prior and continuous inspection on behalf of the certifying body.

Once you have selected and filled one or more of the applicable forms above, you can lodge your application for registration with the INAPI. Applications in Chile can be lodged in two ways:

• In-person, by filing the selected typed and printed form at INAPI's office (Avenida Libertador Bernardo O'Higgins Nr. 194, 1st floor, from Monday to Friday, between 9 am to 2 pm). An initial fee must be paid to the Cuenta Única Fiscal (Single Treasury Account) through Form No. 10 on Fiscal Revenue. This payment must previously have been made at a bank or a tax collection agency before filing.
• Online, by filing an electronic application on INAPI's e-filing platform. In this case, the initial fee must be paid via electronic transaction, such as through a bank transfer or credit/debit card.

To access the INAPI's web services, you must be a registered user with valid login credentials. If you do not yet have an account, you can register online.

Step 6: Preliminary examination by INAPI 

At this stage, the INAPI examines your application to check whether it satisfies the requirements of the Industrial Property Law on distinctiveness and registrability. The examination includes carrying out a search of earlier trademarks. If the requirements for registration aren't met, you'll be informed and given an opportunity to amend the application.

During formal examination, your application is assessed to check whether there are any discrepancies between the data you have provided regarding the trademark and its presentation. The main essence of this stage is to ensure that the trademark is published correctly.

If you fail to amend the application as directed or fail to respond to the request to amend within the period specified in the request, the registrar will reject your application. However, if the requirements for registration are met, then the application shall be accepted.

Step 7: Publication and opposition 

If your application is accepted for processing, the INAPI publishes a summary of the application in the Official Journal. This publication is done within 20 days following its acceptance. The abstract must include the trademark applied for, the owner of the label, and the classes and its details.

After publication, there is a 30-day period for opposition. This publication allows third parties to oppose the registration within 30 days. Common grounds for opposition include similarity to existing trademarks or misleading brand identity. 

The only way to oppose a trademark application is through a qualified lawyer filing an opposition within 30 working days from the date of publication of the application in the Official Journal. Oppositions filed after the deadline of 30 days will not be considered. The basis of an opposition should be absolute or relative grounds for refusal. 

Working day means, for purposes of computing time, Monday through Friday, excluding Saturdays, Sundays, and holidays.

In case the INAPI makes substantive comments, the applicant has a 30-day period to answer the comments. Once this deadline has expired, the INAPI communicates the decision to either reject or accept the trademark registration. 

The Chilean trademark system does allow for owners of unregistered trademarks to oppose the registration of their trademarks by third parties in some cases. The general rule, however, is that once the trademark is published in the Official Gazette of Chile, only holders of registered trademarks in Chile can oppose the trademark within 30 days.

Step 8: substantive examination

At this phase, your trademark is examined to confirm whether it meets the following criteria:

• The mark consists of a visually perceptible sign.
• The mark is distinctive and identifies your products and services from others of a different origin.
• The mark is free from any legal prohibitions by virtue of its own constitution, lawfulness, veracity, or availability. 

It's at this stage that the INAPI will also assess all oppositions filed and determine whether they are merited. Mandatory documents will also be analyzed at this stage. These documents include power of attorney, priority claim documents, regulations for the use of collective marks, and technical documentation for certification marks.

If your trademark application satisfies all the checks, it will be registered. 

Step 9: Trademark registration

If the application is accepted, the registration will be ordered, and the applicant should pay the fee within 60 days. You will receive a certificate confirming your exclusive rights over the mark. 

What happens after registration?

It's highly recommended that you use the "registration symbol" together with your trademark once it's registered in Chile. The downside of not using the ® (registration symbol) or M.R. (abbreviation of Marca Registrada - registered mark in Spanish) is that the owner of the trademark may have a harder time prosecuting criminal actions against infringers. However, civil actions will still be available for owners of registered trademarks, regardless of whether the mark was marked as registered when used.

A registered trademark in Chile is valid for ten years, effective from the date of actual registration, and can be renewed indefinitely. Trademark holders should monitor their brand to prevent unauthorized use. Failure to renew on time can result in loss of protection. 

Protect your brand with Trademarkia

A strong brand needs a legally fortified identity. By registering your trademark in Chile, you prevent competitors from capitalizing on your reputation. Whether you're a startup or an established business, strategic trademark protection ensures long-term brand security. For expert assistance, consider working with Trademarkia to navigate the process seamlessly.

Additional resources

• How Online Trademark Monitoring Can Prevent Brand Infringement
• Common Mistakes to Avoid when Registering a Trademark

Glossary of legal terms

• Trademark (Marca Registrada): A legally registered sign, symbol, or name that distinguishes a business's goods or services from competitors.
• Geographical Indication (GI): A sign used on products that have a specific geographical origin and possess qualities or a reputation due to that origin.
• Nice Classification System: An internationally recognized system for classifying goods and services for trademark registration, adopted by Chile's INAPI.
• INAPI (Instituto Nacional de Propiedad Industrial): The Chilean governmental body responsible for trademark, patent, and industrial design registrations.
• Opposition period: A 30-day timeframe after trademark publication, during which third parties can challenge a trademark application before INAPI grants approval.
• Substantive examination: A detailed review by INAPI to assess a trademark's distinctiveness, legality, and compliance with Chilean trademark laws.
• Office actions: Official notifications from INAPI requiring applicants to clarify, amend, or provide additional documentation before final trademark approval.
• Power of Attorney (PoA): A legal document allowing a representative, such as a trademark attorney, to act on behalf of a foreign applicant in Chile.
• Trademark infringement: The unauthorized use of a registered trademark, leading to possible legal action, fines, or restrictions on the infringing party.
• Trademark renewal: The process of extending a trademark's validity beyond its initial 10-year period by submitting a renewal application to INAPI.