In order to protect trademarks in Chile, they must necessarily be registered locally. Exceptionally, opposition or cancelation action may be presented against trademarks by owners of famous and well-known trademarks that have yet to be filed locally.
The registration of trademarks in Chile must be done through the National Institute of Intellectual Property (INAPI).
Actual use of a trademark is not necessary in order to file or register a trademark in Chile. However, if a trademark is initially refused during the examination process based on lack of distinctiveness, prior and effective use of the mark in the Chilean marketplace may prove to be useful in order to overturn the initial refusal. Once registered, trademarks do not have to be used in order to maintain their status as registered, as cancellation actions against trademarks based on non-use are not possible in Chile.
If you register a combined trademark (which includes both word elements and figurative elements) in Chile, the exclusive right to use the trademark is limited to a use of the trademark in the exact configuration or way in which it was filed and registered. If you wish to use the word element of your trademark separately from the logo (or vice versa), it is recommended you register for another trademark including only the word or figurative elements you wish to use and protect separately.
Nevertheless, if a third party eventually intends to register or use a trademark for similar goods or services that includes a primary or distinct part or portion of your trademark, you will have the right to oppose the application based on confusing similarity. Probabilities of success for an opposition will vary in each case depending on the circumstances.
Opposition actions against filed trademarks may be presented within thirty (30) business days after the trademark is published in the official journal.
A registered trademark in Chile will be valid for ten (10) years, term that begins from the date of actual registration. Trademarks may be renewed up to six (6) months before the expiry date and may be renewed every ten (10) years. The trademark can also be renewed during the grace period of six months after the expiry date, subject to the payment of additional fees.
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.
If you would like for the figurative or design elements of your trademark to be considered when assessing your trademark for registration in Chile (Trademark Search Report), contact us directly in order to determine if we may be able to offer this in this jurisdiction. In such cases, prices for service and estimated delivery times may vary.
Once the trademark has registered, the trademarks office will issue a digital certificate of registration. No hard copy of this certificate is issued.