Industrial property matters in Chile are governed by:
- Law 19,039 of 1991 (regarding industrial privileges and protection of industrial property rights);
- Law 17,336 of 1970 (regarding copyright);
- the Ministry of Economy's Supreme Decree 177 of 1991;
- the 1991 Paris Convention for the Protection of Industrial Property Rights; and
- the International Classification of Goods and Services.
Trademark protection is granted for an initial period of 10 years, renewable for unlimited periods of 10 years. Chilean IP law does not impose a use requirement in order to maintain the protection of a trademark.
Notwithstanding the foregoing, if used in commerce, any trademark must bear the words 'Marca Registrada' (Registered Trademark) or the acronym 'MR' or the letter 'R' inside a circle. Non-compliance with this requirement does not affect the validity of the registered trademark, but the owner will not be able to file a criminal action for trademark infringement.
The following are documents and other information that must be filed with an application to register a trademark (or service mark):
- particulars of the trademark to be registered. For word marks (ie, trademarks comprising only words), no specimens are necessary. If the trademark includes devices, six samples of the design are needed;
- an indication of products or services to be protected by the trademark. The applicant can protect all the products in a class (classes 1 to 34 of the International Classification of Goods and Services). However, each service within a class (classes 35 to 42) must be described if more than one service is to be protected;
- the full name and address of the applicant (whether a natural or legal person);
- the particulars of any priority invoked pursuant to the Paris Convention. Priority can be invoked in the case of a pending foreign application that was made up to six months before the Chilean application;
- if an attorney is representing the applicant, a copy of the general power of attorney. This document must be executed before a notary public and approved by a Chilean consulate if the application is made from abroad.
An application is open to opposition by third parties for 30 days following the date of publication in the Official Gazette. Decisions issued by the head of the Patents and Trademarks Office can be appealed to a special Industrial Property Appeals Court.
Law 19,039 provides that an invention must satisfy three criteria to be patented:
- it must be new;
- it must involve an inventive step; and
- it must have an industrial use.
'New' means that it is not known to the public (including, it has not been previously published in a pending patent application). The invention involves and 'inventive step' if it would not be obvious to a person knowledgeable about the subject area of the invention. An invention will have an 'industrial use' when it can be produced or used in an industry. (For these purposes the term 'industry' is used in its widest sense.)
In Chile, utility designs and industrial models may also be protected. Under Chilean law, a 'utility model' is any instrument, apparatus, tool, device, object or any part of these, that is capable of having some utility that did not exist beforehand. An 'industrial design' is any three dimensional shape or industrial or handcrafted article that serves as a pattern for the manufacture of other units and can be distinguished from other similar shapes or articles (ie, it has an original, new and different physiognomy).
The following information and documents must be filed with an application for a patent:
- particulars of the applicant;
- particulars of the inventor;
- title of the invention;
- if priority is invoked, the date of the application for the foreign patent or the date of the grant of the foreign patent;
- if the inventor has assigned the invention to the applicant, the assignment documents (which must be notarized and, if coming from abroad, approved by a Chilean consulate);
- an abstract and description of the invention;
- a certified copy of the priority document, if applicable;
- a copy of the result of the search regarding novelty; and
- if an attorney is representing the applicant, a general power of attorney (executed before a notary public and, if applicable, approved by a Chilean consulate).
In Chile, it is possible to file a validation or confirmation patent with the industrial property authorities. If granted, the patent only provides protection for as long as the original patent (ie, the foreign patent), but up to a maximum period of 15 years.
To determine novelty, the Patent Office looks to see whether the invention has been used, commercialized or made public in Chile during the period beginning with the expiration of the priority date (ie, the date the patent application was filed in the foreign country) and ending with the filing date of the validation patent in Chile.
Law 17,336 and the Berne Convention for the Protection of Literary and Artistic Works regulate copyright. The rights of copyright are acquired by the author simply by creating a literary, artistic or scientific work. Therefore, there are no formal registration requirements as with patents and trademarks (although registration is recommended so that the true owner of a copyright can be more easily proved). Copyright protection lasts for 50 years after the death of the author.
The rights arising from copyright allow the author, artist or performer to forbid others from (i) using, distributing or producing their work, and (ii) receiving any type of payment from such unauthorized use.
To register a copyright, the following information and documents are required:
- particulars of the author;
- a sample of the work;
- if the application is for software, the complete magnetic code and the complete operational manual;
- if an attorney is representing the applicant, a general power of attorney (executed before a notary public and approved, if applicable, before a Chilean consulate).
A domain name is used to identify a web address. In Chile, the regional domain '.cl' is registered with the Network Information Centre (NIC). The NIC is managed by the Department of Computer Sciences (DCC) of the University of Chile.
The legal requirements to register a domain name include the following:
- A natural person must be domiciled or legally residing in Chile, while a legal person must be organized in Chile or duly licensed to do business in Chile. Individuals or bodies corporate that do not reside in Chile may request domain registrations if a person domiciled in the country represents them. This representative will act as an administrative contact and will be considered the applicant under the law. A power of attorney will suffice for these purposes.
- A declaration must be made whereby the applicant agrees to abide by the regulations governing the registration of '.cl' and to have any disputes settled by arbitration. A copy of this declaration must be submitted with the application.
- Bodies corporate must submit a photocopy of their tax registration number and a photocopy of the identity card of the legal representative, if any. The DCC may also require copies of documents proving the legal incorporation of an enterprise. Failure to deliver this information is grounds for rejecting the application.
- A registration fee of Ps25,000 (about $50) must be paid.
- A power of attorney must be executed before a notary public and, if applicable, approved by a Chilean consulate.
Domain name applications that are pending approval by the DCC may be opposed. The opposition party must file for registration of the same domain name within 30 days of the original application being made. When the DCC confirms that two or more parties have filed to register an identical domain name, it will immediately initiate arbitration proceedings.
For further information on this topic please contact Guillermo Carey or Carlos Elton at Carey y Cía by telephone (+56 2 365 7200) or by fax (+56 2 365 7319) or by e-mail ([email protected] or [email protected]).
The materials contained on this web site are for general information purposes only and are subject to the disclaimer.