Trademark Laws and Regulations of Chile:

Requirements:
In Chile a power of attorney, without further formalities just simple signed is required for trademarks matters.

The order of the application process is as follows:
The trademark application is filed at the National Institute of Industrial Property (INAPI) of Chile.
Multiple-class applications are possible.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
Signs not deemed distinctive in the examination cannot be registered, even if they have been registered in other countries.
Registration applications are published in the Official Gazette and are subject to oppositions or office actions within 30 working days.
Chile has trademark disclaimer practice.
Trademark accelerated examination is possible in Chile.
In Chile Proof of use is not required for trademarks prior to the issuance of a registration or the issuance of a notice of allowance/acceptance.

Duration:
The initial term of registration of a trademark in Chile is: 10 years.
The beginning of the term of a registration is calculated from the registration date in Chile.
Trademark renewals in Chile may be requested six months before the end of the term and up to six months after. Renewal fees are due for payment with the renewal application. Renewals requested after the registration’s expiration will be subject to a surcharge of 20% for each month or a fraction of a month.

A. Time Frame for Obtaining Registration
The approximate time from application to registration (for a regular prosecution, without opposition) is:
around 9 to 12 months. Requesting only preapproved descriptions of goods and services may accelerate prosecution compared with requesting customized descriptions of goods and services.

B. Advantages of Registration
The benefits of registering a trademark include the following:
it is the sole means of obtaining rights in or title to the trademark;
it provides prima facie evidence of ownership and validity
(One of the risks of not registering a trademark is that others may use or register an identical or similar mark that could impede the ability to use or register the mark in Chile.);
it provides regional, national, and/or local protection;
it allows use of "Registered Trademark" or other suitable terms or abbreviations to demonstrate ownership of the trademark
(The words "Marca Registrada," the abbreviation "M.R.," and the symbol ® are valid markings in Chile.);
it allows the registrant access to bring actions in particular courts;
it helps to deter others from unlawfully using the trademark;
it provides a defense to infringement;
enforcement of an unregistered trademark is more difficult and more costly than enforcement of a registered trademark;
it confers the ability to recover maximum monetary damages for infringement;
it encourages licensees and provides the opportunity to generate royalties through licensing.

II. Pre-Filing
A. Registrable Trademarks

The following signs that can be reproduced graphically and are capable of distinguishing the goods or services of one person or entity from another are registrable as a trademark:
words;
names;
devices;
certain three-dimensional shapes;
colors
(combinations of colors);
slogans
(must be registered in combination with a registered house mark);
sounds;
smells (olfactory trademarks);
holograms;
motion;
taste;
touch;

pattern marks, multimedia marks, and any other signs to the extent that these are sufficiently distinctive with respect to the products and/or services they are intended to distinguish, and as long as these signs can be specified and represented or reproduced in the registration in a clear, precise, and complete manner in itself; and that they are also easily accessible, intelligible, durable, and objective, in a way that allows the competent authorities and the general public to clearly and accurately determine the precise object of the requested protection.

The special requirements for the registration of three-dimensional shapes are:

Clear description of the mark and its sides or views; and a graphic or photographic reproduction, showing between three and six different views of the mark.

The special requirements for the registration of colors are:
Image that shows the systematic arrangement of the chosen colors and indication of the codes corresponding to the colors by reference to a generally recognized color code.

The special requirements for the registration of sounds are:
Audio file that reproduces the sound (in MP3 format not exceeding 2 MB); and an exact graphical reproduction of the sound on a musical staff ("pentagrama") or in a phonogram.

The special requirements for the registration of smells are:
Clearly specify and represent the mark in an accurate, self-contained, easily accessible, intelligible, lasting, and objective way, allowing the competent authorities and the general public to clearly and accurately determine the precise object of the requested protection.
There are no special requirements for the registration of holograms.

The special requirements for the registration of motion are:
Video file containing the design in motion as it is intended to be recorded; image that contains sequential views of the complete movement; and an explanatory description.

The special requirements for the registration of taste are:
Clearly specify and represent the mark in an accurate, self-contained, easily accessible, intelligible, lasting, and objective way, allowing the competent authorities and the general public to clearly and accurately determine the precise object of the requested protection.

The special requirements for the registration of touch are:
Clearly specify and represent the mark in an accurate, self-contained, easily accessible, intelligible, lasting, and objective way, allowing the competent authorities and the general public to clearly and accurately determine the precise object of the requested protection.
Marks registered in black and white or grayscale are construed narrowly to protect the mark as registered and not in other color combinations.

In addition to regular trademark registrations, the following types of trademarks are registrable:

collective marks;
certification marks;
well-known marks
(protected through the usual trademark registry);
service marks.
Retail services are registrable provided that the nature of the retail services is clearly identified.

The following are not registrable as trademarks:

marks contrary to moral standards or public order;
generic terms;
names, flags, or symbols of states, nations, regions, or international organizations;
non-distinctive trademarks, absent a showing of acquired distinctiveness (secondary meaning);
common technical, scientific, or health terms.
Geographical indications (GIs) are protected in this jurisdiction.

GIs are protected by way of:

special laws for the protection of geographical indications or appellations of origin;
trademark laws, in the form of collective marks or certification marks;
laws against unfair competition;
consumer protection laws;
specific laws or decrees that recognize individual geographical indications.

The following products or categories are subject to GI protection in this jurisdiction:
Our jurisdiction does not specify products or categories subject to GI protection.

B. Searching

While conducting a private pre-filing search is not mandatory, it is recommended in that it can:
save the applicant the time, effort, and cost entailed in developing, adopting, and applying to register a trademark in which someone else has prior rights.

The national office is accessible online at the following URL:
www.inapi.cl

The official register can be searched online at the following URL:
https://ion.inapi.cl/Marca/BuscarMarca.aspx

C. Use

An applicant benefits from pre-filing use of a trademark.

The benefits of pre-filing use are:

Use may demonstrate acquired distinctiveness (secondary meaning) and help to overcome an objection to an application to register the trademark on the ground of non-distinctiveness.

minimal. Trademark rights are established largely through registration.

 Rights in a mark are acquired mainly through registration, and the first applicant is normally entitled to registration.

When a mark is not registered, use of that mark may provide the following benefits:

Courts may protect unregistered trademarks in some exceptional cases.

 Use can be the basis for an opposition or a cancellation action.

Famous and/or well-known marks are protected via the following mechanism(s):

an administrative process;

a determination by the court resulting from an action for infringement;

a determination by the court (other than one resulting from an action for infringement).

D. International Treaties

This jurisdiction is a member of the following international treaties relating to intellectual property:

Paris Convention;

Trademark Law Treaty;

Nairobi Treaty;

Madrid Protocol.

III. Filing

A. Requirements

If the applicant is not domiciled in this jurisdiction, a local address for service must be provided.

Joint applicants are permitted in this jurisdiction.

Neither actual use nor intent to use is required for application.

Use is a requirement for maintaining the validity of a registration.

The following information is required to COMPLETE an application:

name and address of applicant;

state or country of incorporation;

description of trademark;

representation of trademark (a depiction of the mark an applicant seeks to register);

list of goods/services;

power of attorney;

official filing fee;

priority claim, where priority of an earlier application is claimed.

While ALL of the items noted in the list immediately above are required to COMPLETE an application, ONLY THE FOLLOWING ITEMS from that list are required in order to SECURE A FILING DATE:

name and address of applicant;

state or country of incorporation;

description of trademark;

representation of trademark (a depiction of the mark an applicant seeks to register);

list of goods/services;

official filing fee;

priority claim, where priority of an earlier application is claimed.

The list of goods and services in this jurisdiction may specify:

the relevant class heading;

the relevant local subclass and/or subgroup;

a list of names commonly used in the trade for the specific goods or services of interest;

the relevant entire (long) alphabetical class listing;

 a customized list of goods and services to be protected; or a preapproved description of the goods and services provided by the Trademark Office.

The relevant entire (long) alphabetical class listing is appropriate to use in applications for:

goods and/or services.

The following number of copies of the trademark must be submitted:

N/A.

In this jurisdiction, the following types of registration are available:

local (e.g., state)

(in exceptional cases);

national.

This jurisdiction is a party to the Madrid Protocol but not the Madrid Agreement and may be designated in international applications.

This country is not a member of the European Union; a European Union Trade Mark registration (formerly a Community Trade Mark registration) is not effective in this jurisdiction.

No (other) multinational regional registrations are available in this jurisdiction.

An international application is subject to the same registrability requirements and examination procedure as a locally filed application. (See the entry for the Madrid System.)

Applications can be filed online at the following URL:

 https://tramites.inapi.cl/Account/Login?ReturnUrl=%2FTrademark%2FTrademarkApplication%2FIndexTrademark
A username and password are required to file applications online.

The official file can be accessed online at the following URL:

 https://ion.inapi.cl/Marca/BuscarMarca.aspx
Access is granted to the file prosecution history, but not to the official file itself.

Applications are officially searched as to prior trademarks for

5–10 months, depending on the existence of oppositions.

B. Priority

If an applicant's home country is a signatory to the Paris Convention, the filing date of its home application can be claimed as the filing date in this jurisdiction, provided that its home application was filed within the fixed period of six months preceding the application in this jurisdiction.

If an applicant's home country is a member of the World Trade Organization, it should be possible to claim the home filing date. (Consult a local trademark attorney.)

An International Registration can be based on a national application or registration in this jurisdiction.

C. Classification

This jurisdiction does not use the Nice Classification System precisely, but does use it as a general guide.

If a trademark is or will be used in more than one class of goods and/or services, one application can cover multiple classes of goods or multiple classes of services, but separate applications are also permitted.

For a multi-class application, the applicant must pay class fees on a per-class basis.

D. Representation

An application to register a trademark may be filed directly in this jurisdiction by:

the applicant, even if not a citizen of or domiciled in the jurisdiction

(A local address must be given; the applicant must have a username and password to access the online filing system.);

a trademark representative/attorney/agent, but only if a citizen of or domiciled in the jurisdiction.

IV. Application

A. Publication

The filing particulars of an application are made available to the public.

The filing particulars are made available to the public:

through publication and online.

(The publication of the application must be requested by the applicant within a term set by the Trademark Office.)

The following application details are made available to the public:

mark;

name of applicant;

address of applicant;

state or country of incorporation of applicant;

application number;

application date;

goods/services;

priority claim information;

representation of trademark.

B. Examination

Applications are examined in respect of:

formalities: i.e., for compliance with the filing requirements;

classification: i.e., to ensure that the goods or services fall within the class(es) listed in the application;

clarity: i.e., that descriptions are clear and understandable;

descriptiveness: i.e., to check whether a trademark functions solely to provide information about the goods and services affiliated with the trademark;

distinctiveness: i.e., to ensure that trademarks are capable of being represented graphically and of distinguishing the goods or services of one individual or organization from those of other individuals or organizations;

deceptiveness: i.e., to check whether a trademark is of such a nature as to deceive the public (for instance, as to the nature, quality, or geographic origin of the goods or services);

conflict with prior registration, prior-filed application, or earlier unregistered rights resulting from an official search.

If the local trademark authority issues a preliminary refusal to register a mark based on an earlier registration owned by another:

The existence of a valid coexistence agreement between the applicant and the cited registrant may be accepted as evidence permitting registration of the application; its acceptance is at the discretion of the trademark authority.

This jurisdiction has disclaimer practice (i.e., a practice whereby the applicant must disclaim any exclusive right to an element of a trademark that is not distinctive).

The order of the application process is as follows:

 Formal examination, publication, substantive examination, registration.

C. Prosecution

Accelerated examination may not be requested.

The following rights are established by a pending application:

the filing date of the application establishes a home filing date for purposes of priority;

the pending application can be cited in official examination against a subsequent (later-filed) conflicting application;

the pending application can be used in a third-party opposition proceeding against a subsequent (later-filed) conflicting application.

D. Opposition

Opposition is available.

Opposition is conducted pre-grant.

The following can be grounds for opposition:

proprietary rights, such as an earlier conflicting registration;

the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose, or value of goods or of rendering of services or other characteristics of goods or services;

the mark is not distinctive;

the mark is misleading, deceptive, or disparaging;

breach of copyright;

rights under Article 6bis of the Paris Convention (notorious or well-known mark);

rights under Article 6ter of the Paris Convention (protection of armorial bearings, flags, and other State emblems);

rights under Article 6septies of the Paris Convention (registration in the name of the agent or other representative of the proprietor of the mark);

rights under Article 8 of the Paris Convention (trade names);

registered design rights;

rights in a personal name;

the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;

the mark consists of a geographical indication;

the mark is against public policy or principles of morality;

 rights in a company name;
the mark consists of the product shape;
unauthorized use of specially protected emblems or national insignia.

An application is published for opposition purposes after formal examination of the application

and before substantive examination of the application. If no oppositions are filed, the application undergoes further substantive examination by the Trademark Office.

The opposition period begins on the following date:

on the day the application is published.

The opposition period ends on the following date:

30 business days following publication.

The following parties may initiate an opposition:

any interested party.

Oppositions can be filed online.

E. Proof of Use

Proof of use is not required prior to the issuance of a registration or the issuance of a notice of allowance/acceptance.

V. Assignment, Licensing, and Other Changes to Trademark Records

A. Assignment

An application can be assigned.

A registration can be assigned.

An assignment of an application must be for the entire territory covered by the application.

An assignment of a registration must be for the entire territory covered by the registration.

An assignment of an application can be for some or all of the goods or services listed in the application.

An assignment of a registration can be for some or all of the goods or services listed in the registration.

Goodwill need not be included in an assignment of an application.

Goodwill need not be included in an assignment of a registration.

An assignment document for an application requires:

name of assignor;

address of assignor;

name of assignee;

address of assignee;

details of the trademark being assigned;

goods and services being assigned;

territory being assigned;

effective date of the assignment;

signature by assignor;

signature by assignee;

actual consideration;

consideration (either actual or nominal).

An assignment document for a registration requires:

name of assignor;

address of assignor;

name of assignee;

address of assignee;

details of the trademark being assigned;

goods and services being assigned;

territory being assigned;

effective date of the assignment;

signature by assignor;

signature by assignee;

actual consideration.

Legal verification of a written assignment document of an application is not required.

However, if there is any doubt, the Trademark Office may request legal verification.

Legal verification of a written assignment document of a registration is not required.

However, if there is any doubt, the Trademark Office may request legal verification.

An assignment of an application need not be recorded, but if it is not recorded the assignment may not be effective against a subsequently dated but recorded assignment.

An assignment of a registration need not be recorded, but if it is not recorded the assignment may not be effective against a subsequently dated but recorded assignment.

B. Licensing

Use of a mark that is the subject of an application can be licensed.

Although an application can be licensed, the effect of the license and one's ability to enforce it depend on the grant of the registration.

Use of a registered mark can be licensed.

In this jurisdiction, registered trademark users (as opposed to licensees) cannot be recorded.

A license of an application can be made for a portion of the territory covered by the application.

A license of a registration can be made for a portion of the territory covered by the registration.

A license of an application can be for some or all of the goods or services listed in the application.

A license of a registration can be for some or all of the goods or services listed in the registration.

A license of an application can be exclusive (only one licensee, with the owner excluded).

A license of an application can be sole (only one licensee and the owner).

A license of an application can be non-exclusive (multiple licensees and the owner).

A license of a registration can be exclusive (only one licensee, with the owner excluded).

A license of a registration can be sole (only one licensee and the owner).

A license of a registration can be non-exclusive (multiple licensees and the owner).

Use by a related company of a mark that is the subject of an application need not be licensed.

Licensing and recording of the license is recommended. If the license is not recorded, it may not be effective against a subsequently dated but recorded license.

Use by a related company of a registered mark need not be licensed.

Licensing and recording of the license is recommended. If the license is not recorded, it may not be effective against a subsequently dated but recorded license.

A license of an application can be made with a time limitation.

A license of a registration can be made with or without a time limitation.

A license document for an application requires:

name of licensor;

address of licensor;

name of licensee;

address of licensee;

details of the trademark to be licensed;

goods and services being licensed;

commencement date of the license;

term of the license;

if the license has no limitation of time, a statement so indicating;

territory of the license;

signature by licensor;

signature by licensee;

express permission to sublicense, if appropriate;

 permission to sublicense, if appropriate;     
price, royalty, or compensation mechanism.

A license document for a registration requires:

name of licensor;

address of licensor;

name of licensee;

address of licensee;

details of the trademark to be licensed;

goods and services being licensed;

commencement date of the license;

term of the license;

if the license has no limitation of time, a statement so indicating;

territory of the license;

simple signature by licensor (see below for execution requirements);

simple signature by licensee (see below for execution requirements);

 permission to sublicense, if appropriate;     
price, royalty, or compensation mechanism.

Legal verification of a written agreement to license an application is not required.

However, if there is any doubt, the Trademark Office may request legal verification.

A license of an application need not be recorded, but if it is not recorded the license may not be effective against a subsequently dated but recorded license.

Recordation of a license of a registration need not be recorded, but if it is not recorded the license may not be effective against a subsequently dated but recorded license.

The license for a renewed registration need not be re-recorded.

Legal verification of a written agreement to license a registration is not required.

However, if there is any doubt, the Trademark Office may request legal verification.

C. Other Changes to Trademark Records

The requirements for the recordal of name changes, mergers, and other important corporate updates on trademark records are as follows:

power of attorney, without further formalities;

deed of assignment, without further formalities;

certificate of proof of change of name, without further formalities;

certificate of merger, without further formalities.

 However, if there is any doubt, the Trademark Office may request legal verification.

The requirements regarding the recordal of updated addresses on trademark records are as follows:

Filing a brief requesting the recordal of the updated address, without further formalities. No documentation needed.

The requirements for recording liens against trademark records, such as security interests, are as follows:

 Power of attorney, without further formalities; deed of security interests legalized by the respective consulate/apostille; or certificate of security interests, without further formalities.

VI. Registration

A. Requirements

A fee is required for issuance of the registration.

The following documentation is required for issuance of the registration:

none.

B. Rights

The following rights are established by registration:

the exclusive right to use the registered trademark;

the right to oppose subsequent conflicting applications;

the right to bring a cancellation action against a subsequent conflicting registration;

the right to sue for infringement against confusingly similar third-party trademark use;

the right to license third parties to use the trademark;

the right to apply for seizure by customs authorities of counterfeit goods being imported into this jurisdiction;

the right to obtain damages for infringement;

the right to oppose and/or cancel subsequent applications for transliterated versions of the registered trademark by third parties.

The Roman alphabet is used to represent the official language(s) of this jurisdiction.

A trademark becomes incontestable, that is, the validity of the registration cannot be challenged, after the following time period:

counting from the date of registration of the mark:

 five years from the registration date. If, however, the trademark has been registered in bad faith, it can be contested at any time.

The territorial limit of registration is:

national territory.

C. Term

The initial term of a registration is:

10 years.

The beginning of the term of a registration is calculated from:

the registration date.

D. Marking Requirements

Marking is compulsory for registered trademarks.

Any marking should be in the form(s) mentioned below. Please consult a local trademark attorney in case of doubt.

®;

 Marca Registrada; the abbreviation "M.R."

The use of ® is legally recognized.

The legal consequences of false or misleading marking are:

fine from USD 2,000 to 80,000.

VII. Post-Registration

A. Use Requirements

Attack on the ground of non-use is available.

To avoid being attacked on the ground of non-use, a trademark must be used within the following period of time:

 five years from the registration date or renewal date. In case of trademarks registered prior to May 9, 2022, the five-year term is counted from the next renewal date.

To satisfy the use requirement, the amount of use:

 Chilean law requires only to prove the effective use of the trademark in the national territory. It does not specify the type or amount of proof necessary to satisfy the use requirement.

Use of the trademark must occur in:

this jurisdiction.

The consequences of a trademark's not being used are as follows:

Registration may be canceled at the request of an interested third party.

Periodic statements of use or other mandatory filings by the trademark owner setting forth use of the trademark are not required.

An action for non-use of a trademark can be brought by:

any interested third party.

Non-use can be excused under the following circumstances:

import restrictions;

other government policies.

Resumption of use after non-use for the prescribed period (see above) may cure non-use provided that, in the interim, no third party has:

filed an action for cancellation of the trademark on the ground of non-use.

Use of a registered trademark in a modified form would affect the enforceability of the registration and is not allowed.

Amendment of a registration to conform to a modified form of the trademark is not possible. Depending on the circumstances, a new application to register the modified trademark might be necessary. Consult a local trademark attorney.

B. Cancellation

Cancellation is available.

The following can be grounds for cancellation:

proprietary rights, such as an earlier conflicting registration;

the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose, or value of goods or of rendering of services, or other characteristics of goods or services;

the mark is not distinctive;

the mark is misleading, deceptive, or disparaging;

breach of copyright;

rights under Article 6bis of the Paris Convention (notorious or well-known mark);

rights under Article 6ter of the Paris Convention (protection of armorial bearings, flags, and other State emblems);

rights under Article 6septies of the Paris Convention (registration in the name of the agent or other representative of the proprietor of the mark);

rights under Article 8 of the Paris Convention (trade names);

registered design rights;

rights in a personal name;

the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;

the mark consists of a geographical indication;

the mark is against public policy or principles of morality;

the mark is prohibited in this jurisdiction;

the application for or registration of the mark was made in bad faith.

There is a deadline for bringing a cancellation action.

The deadline for bringing a cancellation action is:

five years from the registration date; no deadlines apply if the registration of the mark was made in bath faith.

The following parties may bring a cancellation action:

any interested party.

Cancellation actions can be filed online at the following URL:

 https://tramites.inapi.cl/Account/Login?ReturnUrl=%2FTrademark%2FTrademarkUserDocument
A username and password are required to file online briefs.

C. Renewal

The following documentation is required for renewal:

power of attorney.

The first renewal date of a registration is:

10 years from the registration grant date.

Subsequent renewals last for the following period of time:

10 years from the renewal date of the registration.

The renewal pre-payment period is:

no more than the following number of months before the renewal date:

 6 months.

There is a grace period for renewing registrations once the renewal date has expired.

The grace period after the renewal date has expired is:

6 months.

The penalty for late renewal is:

a fine

(20% surcharge for each additional month (or fraction of a month) of delayed payment, up to six months);

the registration lapses

(after the six-month grace period).

Renewal can be effected online at the following URL:

 https://tramites.inapi.cl/Account/Login?ReturnUrl=%2FTrademark%2FTrademarkRenewalApplication
A username and password are required to file renewal applications online.

At the completion of renewal, a new registration number is not issued.

VIII. Customs Recordation

A. Customs Recordation

Trademarks that are registered in this jurisdiction can be recorded with the customs authority, the name of which is:

 Servicio Nacional de Aduanas (www.aduana.cl).

Recordation with the customs authority cannot be accomplished online. The following process must be followed:

 The recordal process is informal and can be done through email or personally.

IX. Domain Names

A. Domain Names

A domain name may be protected as a trademark only if the domain name is not merely a Web address but is used or intended to be used in connection with goods or services.

The following approved registrars can register a domain name in this jurisdiction:

NIC Chile.

Availability of domain names in this jurisdiction can be searched through the following website(s):

https://www.nic.cl/

The Country Code Top-Level Domain (ccTLD) for this jurisdiction is:

.cl

To obtain a domain name under the ccTLD in this jurisdiction, the following is required:

a local address.

Domain name registrations can be assigned.

Domain name registrations can be licensed.

A domain name registration may be contested in this jurisdiction through the following mechanisms:

 ordinary courts or NIC Chile Arbitration System.

Once a registration lapses as a result of failure to renew, it cannot be revived or restored.

The application to register a domain name as a trademark will be examined for conflicts with prior trademarks.

An earlier-filed domain name registration can create rights effective against a later-filed trademark registration application filed by another only if the domain name is being used as a trademark in addition to being used as an address.

The parties must overcome this obstacle through opposition, cancellation, or litigation.

In general, the courts do not apply the same principles to domain name disputes as are applied to trademark disputes. The following unique considerations are of particular note:

Domain names are registered on a "first-come, first-serve" basis. In a domain name dispute, the interested third party must accredit a “preferential interest” or “better right” on the domain name, which can be demonstrated through, for example, the prior use of the registered expression (even if it is not a registered trademark in Chile) or the registration of the trademark abroad. The interested third party must also accredit "bad faith" if the domain name is contested after 30 days from the registration date of the domain name.

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