In order to protect trademarks in Chile, they must necessarily be registered locally. Chile, as in most countries in Latin America, are the first to file jurisdiction when it comes to trademarks.
If you are doing business in Chile or are planning to do so you need to register your trademark. Owners of products or commercial establishments are in real danger of having their trademarks registered in Chile by third parties. Currently use of a trademark is not a requirement. Therefore, cases of trademarks being registered in bad faith are not uncommon.
No trademark rights are given to users of unregistered trademarks in Chile. There is no way to legally stop the use of an unregistered trademark. Trademark infringement in Chile can only be persecuted by the holder of a registered trademark.
The Chilean trademark system does allow for owners of unregistered trademarks to oppose the registration of their trademarks by third parties in some cases. The general rule however is that once the trademark is published in the official gazette of Chile only holders of registered trademarks in Chile can oppose the trademark within 30 days.
The registration of trademarks in Chile must be done through the National Institute of Intellectual Property (INAPI).
Foreign entities and foreign nationals can register trademarks in Chile. However, they will need to be represented by a local trademark agent. Original power of attorney documents will need to be sent to Chile. If a trademark is filed without the required power of attorney being presented the trademark application will face office actions.
In Chile trademark searches can be carried out through the Chile trademark office database search tool. Only word elements in a trademark are publicly available when using the free Chile trademark search tool.
Although an initial trademark search in Chile may allow you to see if identical trademarks exist, it may not be enough to determine the real probabilities for a successful registration process.
At iGERENT we offer full trademark searches that are carried out by local Chilean trademark attorneys. This is important as not only identical trademarks will be considered. Similar trademarks as well as other considerations for refusal of a trademark in Chile are considered. Our full search also includes search of logos and trademark designs that may conflict with yours.
The trademark registration process in Chile takes around 9 months if not office action or third party oppositions are received. A full trademark search done by our experts can go a long way in order to identify possible problems and determine if it is worth the time and money it will take to initiate a trademark process.
Actual use of a trademark is not necessary in order to file or register a trademark in Chile.
Once a trademark is filed the Chilean trademark office will first proceed with a formalities check. After the formalities check there will be a 20 day period for the owner or representative of the trademark to pay the publication fees. If the publication fees for the trademark are not paid, the trademark application will automatically lapse.
After the trademark is published there will be a 30 day period for other holder’s of Chilean trademarks to oppose the application. At the end of this period the Chilean trademark office will carry out a substantive trademark examination. This examination will include a formal search. The Chile trademark office search considers prior trademarks that may be considered similar.
If no office action is received and no third party oppositions are received the trademark will be accepted. After the trademark is accepted there are 60 days for the final fees to be paid. Only after the final fee is paid will the trademark be registered in Chile.
The days considered to determine a deadline are working days and include only Monday through Friday. Public holidays are not considered. For this reason the registration process in Chile may be longer in practice than when just considering the terms stated by the trademark office.
Once you have a Chile trademark registration the trademarks office will issue a digital certificate of registration. No hard copy of this certificate is issued.
It is highly recommended you use the “registration symbol” together with your trademark once it is registered in Chile. If a registered trademark is not marked with the ® (registration symbol) or with M.R. (abbreviation of Marca Registrada - registered mark in Spanish) when used, the owner of the trademark will not be able to prosecute criminal actions against infringers. However, civil actions will still be available for owners of registered trademarks, regardless of whether the mark was marked as registered when used.
Use of a trademark is not presently required to keep a registration live in Chile.
A registered trademark in Chile may be subject to a cancellation action if it has been registered in bad faith.
A registered trademark in Chile will be valid for 10 years. The registration period begins from the date of actual registration.
Trademarks may be renewed up to 6 months before the expiry date and may be renewed every 10 years. The trademark can also be renewed during the grace period of six months after the expiry date. Late renewals are subject to additional fees depending on how many months have passed from the trademark’s expiration.
All our trademarks fees for Chile are all inclusive. Although national government fees have to be paid in Chilean pesos, payments to iGERENT are available in USD, EUR and GDP.
Regardless of the specific services you require for your trademark in Chile, we will always quote an exact amount. Are prices are flat and include government fees and professional fees.