The protection of product packaging is an unresolved issue in Chile. Article 20(i) of the Industrial Property Act (Law 19,039 as amended) establishes that "the shape or colour of products or of the packaging and colour itself" cannot be registered as trademarks; however, applicants have found ways to bypass this provision in an attempt to register packaging as figurative trademarks.
To date, the National Institute of Industrial Property (INAPI) and the Industrial Property Appeals Court – which is responsible for deciding in first and second instances on trademark applications – have been unable to agree a uniform standard regarding this matter.
Based on Article 20(i), the INAPI has systematically rejected all trademark applications that have sought to register – in the form of a label – the representation of packaging, bottles or containers of products. The Industrial Property Appeals Court has adopted the opposite position, revoking first-instance rejections in several decisions.
Applicants have argued that figurative trademarks do not correspond to the shape of the product or its packaging, but instead to a two-dimensional image of a bottle, box or any other kind of packaging, which would be perfectly registrable, as the law does not forbid such images from appearing on applied labels. The court has accepted this argument and in a recent decision stated that:
"[A]s long as the image applied as a label trademark is a two-dimensional representation and does not imply the protection of a tri-dimensional figure (which would actually correspond to the product's packaging), there are no legal impediments to grant the trademark registration to such a label."(1)
It would seem that the only option is to wait for the INAPI to adopt the same criterion as the Industrial Property Appeals Court, so it will no longer be necessary to appeal to the court each time in order to obtain the registration of figurative trademarks.
For further information on this topic please contact Juan Pablo Zamora Iturra? at Montt y Cia SA by telephone (+56 22 233 8266) or email (firstname.lastname@example.org). The Montt y Cia SA website can be accessed at www.monttcia.cl.
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