Over the last several years, Chile has signed FTAs with the European Union, South Korea, New Zealand, Singapore, Brunei, China, and Japan. It reached a partial trade agreement with India in 2005 and began negotiations for a full-fledged FTA with India in 2006. Chile conducted trade negotiations in 2007 with Australia, Malaysia, and Thailand, as well as with China to expand an existing agreement beyond just trade in goods. Chile concluded FTA negotiations with Australia and the expanded agreement with China in 2008. The members of the P4 (Chile, Singapore, New Zealand, and Brunei) also plan to conclude a chapter on finance and investment in 2008. The economic international organization the OECD agreed to invite Chile to be among four countries to open discussions in becoming an official member.
Who May Apply?
Any person or legal entity, whether national or foreign, may apply for trademark registration.
What Can Be Registered?
Any sign that can be graphically represented, which is able to distinguish products, services, or industrial or commercial establishments in the market, constitutes a trademark. Such signs may consist of words, including the names of persons, letters, numbers, figurative elements such as images, graphics, symbols, color combinations as well as any combination of such signs. When signs are not intrinsincally distinctive, registrability may be granted provided they have acquired distinctiveness through use in the national market. Slogans or advertising phrases may also be registered provided they are always linked to a registered trademark of the product, service, or commercial or industrial establishment for which they will be used. Names of industrial and commercial establishments may also be registered as trademarks. Registrations of the names of industrial establishments apply to the whole country, while registrations for the names of commercial establishments apply only to the region named in the application. If a trademark contains words, prefixes, suffixes, or common-use roots of a generic or descriptive nature, the registration will be granted subject to a disclaimer stating that the registration does not include protection for those individual elements. Similarly, a trademark consisting of a label protects that label as a whole and not eachb of its component elements separately. However, if the applicant names the label, the word itself will enjoy separate trademark protection.
What Cannot Be Registered?
Coats of arms, flags, or any other symbols, and the names of initials of any state, of international organizations, or of state public services. Technical or scientific denominations for the object to which they refer, common international denominations recommended by the World Health Organization, and those indicative of therapeutic action. The name, pseudonym, or picture of any natural person, except where consent is given by the person or by his or her heirs if the person is deceased; however, the names of historical celebrities may be registered provided at least 50 years have elapsed from the person's death, the person's honour is not affected, and no other provision of the law is violated. Marks that reproduce or imitate signs or official guarantee control seals adopted by a state, without the state's authorizations, and those that reproduce or imitate medals, diplomas, or honours granted in national or foreign exhibitions, the registration of which is requested by a person other than the one whoe obtained the medal, diploma, or honour. The terms used to indicate the kind, nature, origin, nationality, source, destination, weight, value, or quality of the products, services, or establishments; terms of general use in trade to designate a certain kind of product, service, or establishment, and those that do not present an innovative feature or describe the products, services, or establishment to which the marks are applied. Marks that may cause error or confusion regarding source, quality, or kind of the products, services, or establishments. The shape, colour, decorations, and accessories of products or of their packaging. Marks contrary to public order, morality, and good behaviour, comprising therein the principles of fair competition and business ethics.
The rights of third parties can be enforced only through oppositions against the application or by filing suit for the cancellation of a trademark registration. However, when an unregistered trademark has been used by two or more individuals or entities simultaneously, the entity that first obtains registration cannot pursue an action against an entity continuing to use the mark until for a period of one hundred eighty days from the date of registration.
The Trademark Department offers a custom format that must be used by all applicants and can be filed online or on paper copy. The trademark application must contain the name, address, and occupation of the applicant; the trademark itself; and the goods or services to which the mark will be applied. If a print or design is to be registered, six samples must be submitted when filing the application. An extra print must be furnished for each additional class. Applicants are not required to hire local trademark attorneys to file applications. However, if a third party files an opposition, the applicant must reply through an attorney. Persons or legal entities residing abroad must appoint an agent or representative in Chile. A power of attorney must be executed before a notary public and, when issued in a foregin country, legalized by a Chilean consul. Documents issued in languages other than Spanish must be translated. Informal translations are accepted.
Evaluation & Review
After an application has been filed, the trademark registrar shall verify that all formatlities required have been fulfilled. If the trademark registrar finds any error or omission in this formal examination, the applicant is advised to make the necessary correction or clarifications within 30 days in order to avoid forfeiting the application priority date. Once an application is accepted to prosecution, an extract of the application must be published in the Official Gazette. This publication begins an opposition period of 30 days. When the period to file oppositions has expired, the head of the department makes an analysis of the substance of the application and determines whether there are reasons to officially reject the petition. This determination is issued to the applicant, who must respond within the time established to reply to any oppositions filed. Once this period expires and the other actions ordered in the prodcedure have been completed, the head of the department renders his final resolution and decides whether to accept or reject the application.
Trademarks are registered for 10 years and can be renewed indefinitely. To renew a trademark registration, an application for renewal may be filed up to 3- working days after the expiration date. The renewed trademark will be granted a new registration number and date. If the trademark owner fails to renew its trademark within this time, the owner loses rights in the trademark.
It is not necessary to use a trademark to maintain its registration. A trademark is thus not vulnerable to cancellation due to lack of use. However, if a mark is used, it must be used exactly as registered.
The registry which reserves domain names with the .cl country code is called Nic Chile. Applications for domain name registration may be filed online through Nic Chile. The domain name registrar does not perform any examination of applications to determine if there is any conflict with registered trademarks. A domain name registration lasts two years. However, after the first renewal it is possible to register the domain name for a term of 10 years. The trademark owner can initiate a domain name dispute resolution proceeding. The owner of a prior mark can obtain the cancellation of a domain name identical to his or her mark and reserved after his or her mark's registration date. The trademark owner can have the domain name registration transferred to him or her. The procedure is set forth in the Rules for the Registration of .CL Domain Names and generally consists of mediation and, in absense of a settlement, arbitration. The domain name registrar provides the dispute resolution process. Parties may also elect to initiate proceedings with the court. The registrant of a domain name can have the domain name cancelled and is required to submit to a mandatory dispute resolution proceeding in the event that a third party asserts that (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the registrant has no rights or legitimate interests in the domain name; and (iii) the domain name has been registered and is being used in bad faith. During the administrative proceedings, the complainant must prove each of these three elements.
Infringement of trademark rights is a criminal offense. The following actions are prohibited: (1) maliciously using a trademark that is the same as or similar to one already registered in the same class. (2) defrauding others while making use of a registered trademark. (3) committing fraud by using or imitating through advertising a registered trademark in the same class. (4) using an unregistered, expired, or cancelled trademark with the indications corresponding to a registered trademark. (5) using containers or packaging bearing a registered trademark that is not their property without it being previously deleted, except if the marked package is destined to contain products of a class other than the one protected by the trademark. If the plaintiff is awarded a favorable judgment for infringement, the elements and objects used for the infringement will be destroyed and the objects with the infringing mark will be seized. In addition, fines may be imposed. If within five years an infringer is again convincted of trademark infringement, he or she may be subject to a fine twice of that originally imposed.