By Mariano Tabanera. Trademarks Lawyer.
A new amendment for the Chilean legislation in connection to Industrial Property has been reformed, updated, and modernized, bringing Chile up to date with some international standards.
The new Industrial Property Law, No. 21355, was published in July 2021 but was not yet in force, as additional regulations from the Executive Branch were necessary. The Supreme Decree that regulates this Law has now been published and is applicable in the entire Chilean territory.
Among the modifications to Trademarks Legislation, we find that the term “susceptible of graphic representation” is removed from the requirements a sign must have to be registered as a trademark, broadening the spectrum of signs that are admissible, and expressly includes olfactive and three-dimensional trademarks to the list.
Another significant change in the legislation refers to the elimination of the registration of trademarks in connection to commercial and industrial establishments. It is only possible to register product or service trademarks, in the 45 International Classes of the Nice Classification.
This law also includes new regulations in connection to collective and certification trademarks.- However, the most relevant amendment to the Trademarks Law, in my opinion, is the inclusion of use requirements and cancellation procedures, which has been a pending matter for Chilean legislation to the date.
New Article 27 bis, item A states that a trademark will be cancelled if:
1. the trademark is not used by its owner for a period of five years prior to the date of filing of the cancellation action; or
2. the registrant has tolerated that the trademark be considered as the usual designation for a determined product or service, losing its distinctiveness. This does not apply if the registrant has consistently used the usual indications of a registered trademark.
Additionally, it is important to highlight that the non-use of a trademark can be justified by the registrant by reasons of force majeure, or that in no way depend on their decisions, such as import regulations, or official requirements applied to the protected products or services.
Cancellation procedures will be sustained before the Chilean IP Office, and only the trademarks that are granted or renewed after this new law is effective will be vulnerable to cancellation actions. Any trademark granted before this date, will not be subject to use requirements, until its renewal.
In order to file a cancellation action, the plaintiff will have to prove a legitimate interest in the cancellation of the trademark, and no cancellation will be issued ex officio. Also, as good sense indicates, the proof of use must be filed by the owner of the registration, who is of course the one best prepared to prove it, inverting the burden of the proof.
Like in most legislations, the cancellation of a trademark can be total or partial. In the latter case, the registration will remain valid for those products that the registrant does use the trademark for, as proved with the evidence brought to the procedure.
Lastly, new Chilean legislation foresees the possibility of filing a cancellation action against a trademark as a counterclaim in a nullity or opposition procedure, using it as a defense. Both the initial claim, and the cancellation action will be solved jointly.
These new amendments to the IP Law have certainly been long expected, and will undoubtedly open new doors and give refreshed possibilities to those who have in the past seen their access to trademark protection limited by the impossibility to register a certain kind of sign, or unable to challenge a prior registration.
This modernization of the Trademarks Legislation, along with their inclusion in the Madrid Protocol, which will be effective as of July 4, 2022, will mean a quicker and straightforward path for applicants to protect their trademarks in this country, and further inclusion for this country in the concert of nations.-
In case of any doubts, or if you require additional advice or assistance, do not hesitate to contact us.