– Law No. 19.039, in force as of September 30, 1991, modified by Law No. 19.996, in force as of December 1, 2005, amended by Law No. 20.160, in force as of January 26, 2007, amended by Law No. 20.569, in force as of February 6, 2012 (incorporation of TLT Regulations), and amended by Law No. 21.355, in force as of May 9, 2022.
– Decree No. 236 of December 1, 2005, on Regulation Rules of Law No. 19.039, modified by Laws No. 19.996 and 20.160, and further by Supreme Decree No. 29 of May 23, 2012.
– Exempt Resolution No. 184 of 2022, which gives instructions for the processing of international trademarks under the Protocol Relating to the Madrid Agreement, in force as of July 4, 2022.

Note: a new IP Law 21.355 introducing changes to the current Law 19.039 was published on July 5, 2021 and entered into force on May 9, 2022. The new Law introduces changes concerning trademarks such as new types of registrable marks (olfactory and three-dimensional), cancellation for non-use, totally or partially after five years from the date of registration if no effective and real use is proven in Chile, amongst other changes.

– Convention Establishing the World Intellectual Property Organization (WIPO), since June 25, 1975.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, effective June 14, 1991.
– WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), including Trade in Counterfeit Goods, since January 2000. Implementation thereof to internal legislation in Law No. 19.996.
– Trademark Law Treaty, since August 5, 2011.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since August 30, 2016.
– Several bilateral free trade agreements, including IP Chapters.
– Trans-Pacific Partnership (CPTPP), approved by House of Representatives in 2019, but under discussion for its ratification by the Senate.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since July 4, 2022.

Notion of a trademark: any sign able to distinguish products, services, industrial establishments or commercial establishments. Such signs can consist of words, letters, numbers, drawings, and/or color combinations. Propaganda or advertising phrases may also be registered provided they are associated to a registered trademark. Sound trademarks are allowed. Trademarks consisting in letters or numbers have to be represented by a characteristic drawing, which gives distinctiveness to the letter or number. Olfactory and three-dimensional marks are registrable as of May 9, 2022, provided that their representation is accompanied by a written description that matches it and does not extend their scope of protection.

Applicant: any natural or legal person, either national or foreign, may enjoy trademark protection. Natural or legal persons living abroad must appoint an agent or representative in Chile. 

Ownership: the right to a trademark is acquired by registration, and in special cases some limited rights through use. 

Priority: six months under Paris Union.

Applications: each trademark may be applied for and registered for products that must be named, for one or more classes of the International Classification. Services must be specified and determined within the different classes of the International Classification. To the effects of payment of fees the application or recording of a trademark in each class will be considered as a different application or registration. 

Not registrable: (a) coat of arms, flags or any other symbols, the names or initials of any state, of international organizations and of State public services; (b) technical or scientific denominations in respect of the object to which they are destined, plant variety denominations, common international denominations recommended by the World Health Organization and those indicative of therapeutic action; (c) the name, pen name or picture of any natural person, except if consent is given by him or his heirs, if deceased. However, names of historical celebrities may be registered provided at least fifty years from his/her death have elapsed and provided it does not affect his/her honor. Names of persons cannot be registered when this constitutes an infringement of paragraphs (e) (f) (g) and (h); (d) those that reproduce or imitate signs of official guarantee control stamps adopted by a state, without its authorization; and those that reproduce or imitate medals, diplomas or honors granted in national or foreign exhibitions the registration of which is requested by a person other than the one who obtained it; (e) the expressions or signs used to indicate the kind, nature, origin, nationality, source, destination, weight, value or quality of the products, services or establishments; those of general use in trade to name a certain kind of products, services or establishments, and those that do not exhibit an innovating feature or describe the products, services or establishments to which they must be applied. However, those signs that are not inherently distinctive may be registered if they have acquired distinctive character through use in the country; (f) those that may induce error or deceit regarding source, quality or kind of the products, services or establishments; (g) trademarks which are the same as others or those which graphically or phonetically resemble other trademarks registered abroad for the same products, services or commercial and/or industrial establishments in a manner likely to produce confusion, provided they enjoy fame and notoriety. If registration is rejected or invalidated for this reason, the foreign owner shall, within ninety days, apply for registration of the trademark; if he fails to do so, the trademark may be requested by any person, priority being given to the one whose application for registration was rejected or was the subject of the invalidation; trademarks which are identical or similar to prior Chilean well-known registered trademarks, applied for different classes, however related, if the registration could impact the interests of the owner of the well-known trademark; (h) those that are identical or which graphically or phonetically resemble, in a confusingly manner, others already registered or validly applied for earlier in the same class or used in Chile in an effective way prior to the application date. If registration is rejected for this latter reason, the prior user shall, within ninety days, apply for the registration of the trademark. If he fails to do so, the trademark may be requested by any person, priority being given to the one whose application for registration was rejected or was the subject of the invalidation. The Office could allow coexistence agreements, provided that they do not impact prior third parties’ rights or lead consumers to confusion; (i) the shape, color, either of products or of containers and the colors themselves; (j) registering as trademarks those that may lead to error or confusion regarding the origin or properties of the products protected in Chile by an appellation of origin or geographical indication; (k) those contrary to public order, morality and good behavior, comprising therein the principles of fair competition and business ethics.

Classification: International Classification of Goods and Services. 

Territory covered: trademark registrations distinguishing products, services and industrial establishments, shall be valid for all the territory of the Republic of Chile. Trademark registrations protecting commercial establishments are valid only for the region in which the establishment is located. If the interested party wishes to extend his trademark rights to other regions, he shall state so in his application, and shall pay the fee corresponding to a registration by each region. There are 15 regions.

Filing requirements for an application (to be sent to resident agent):
1. Power of attorney; no notarization and/or legalization required;
2. 6 facsimiles, if a trademark refers to a label;
3. List of specific goods/services applied for (can be filed within thirty days from the filing date of the application or renewal application.

Note regarding POA: with respect to notarization and/or legalization, please note that according to new regulations of the Patent and Trademark Office, upon practical implementation of the Trademark Law Treaty (TLT) towards its harmonization with Chilean general legislation, and in order to avoid putting the parties into jeopardy, all power of attorney documents must be authorized by a Notary Public, being necessary that the person executing the document does so on behalf of the assignee (legalization up to the Chilean Consulate is no longer required). For documents to be filed before other Chilean authorities or courts, the Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille) is in full force.

Filing without power of attorney: it is possible to file the document within thirty days (residents) and sixty days (foreigners).

For a change of name:
1. An original or certified copy of an official document issued by a governmental entity evidencing the change, with its translation into Spanish;
2. Power of attorney in the new name, signed before a Notary Public.

For a change of address: no document is required.

Examination: each application is subjected to a preventive examination to establish whether or not it complies with the formal requirements. If not, the Office notifies the applicant within thirty working days. If formal requirements are not fulfilled within that term, the application is considered as abandoned.

Publication: upon acceptance of an application for further processing, it must be published in the Official Gazette within a non-extendible term of twenty working days. 

Opposition: must be filed within a non-extendible thirty-working day term from publication date. 

Response to opposition and official substantive actions: must be filed within a non-extendible thirty-working day term.

Rendering of evidence: within a term of thirty working days from notification, which can be extended for another period of thirty days in qualified cases. 

Appeals: decisions of the Trade Mark Registrar may be appealed within a non-extendible five-working day term, before the Head of the Industrial Property Department; decisions of the Head of the Industrial Property Department may be appealed within a non-extendible fifteen-working day term before the Industrial Property Court.

Disclaimers: available.  

Letters of consent – agreements on coexistence: they may be accepted provided that they do not prejudice third parties’ rights or not induce the consumers into errors or mistakes, but not oblige the Trademark Office; must be notarized.

Rights of prior user: where a non-registered trademark is being used by one or more persons at a time, the person who registers same cannot prosecute those who continue to use it until, at least, a hundred and eighty days have elapsed from the date of registration. Rights are granted when the registration of the mark by a third party is against the commercial good habits. 

Granting fees: must be paid within a non-extendible sixty-working day term from the date of acceptance.

Delivery of document: the registration certificate is issued in digital format only. It is possible to request a paper copy with no extra fee.

Duration – renewals: ten years from the date of registration, renewable for equal periods during the life of the registration. Term of grace for renewal: six months with fine.

Use of trademark: as of May 9, 2022, a trademark registration may be liable to cancellation totally or partially, for non-use if not used within at least five years from registration.

License agreements: must be recorded to have effects against third parties.

Marking: registered goods must exhibit the words “Marca Registrada” or the initials “M.R.”, or the symbol “®”. Failing to comply with this provision, does not affect the registration validity, but the registration owner cannot enforce his rights through criminal actions.

Cancellation actions: based on any of the non-registrable provisions, must be notified within a term of five years from registration date. No prescription term in case of bad faith registration. As of May 9, 2022, it is possible to cancel a trademark registration (totally or partially) if the mark (a) has not been used within at least five years from the date of registration; or (b) for loss of distinctiveness.

Re-filing of identical trademarks: is allowed when they have not been renewed, provided that a third party has not obtained rights to the same trademark. 

Infringements: the following shall be condemned: (a) those who use maliciously with commercial aim a trademark that is the same or similar to the one already registered in the same or similar class of the classification in force; (b) those who use with commercial aim a non-registered, expired or invalidated trademark, with the indications corresponding to a trademark; (c) those who make use of containers or packing bearing a trademark that is not their property, without it being previously erased, except in the case that the marked packing is destined to pack products of a class other than the one protected by the trademark. 

Penalties: a fine in favor of the government; costs and damages to the owner of the trademark; the implements and elements used in the forgery or imitation can be seized to the benefit of the owner of the trademark. Objects with a forged trademark shall be destroyed. The Judge for the case may immediately order its attachment, without prejudice of his authority to take the appropriate preventive measures. Law No. 21.355 incorporates new criminal sanctions for those who counterfeit a trademark, including imprisonment. In addition, the owner of the registration may request compensation of up to 2,000 UTM (Monthly Tax Units) (approximately U.S.$ 140,000) per infringement. In addition, Law No. 19.912 enacted on November 4, 2003, modifies our Intellectual Property Legislation according to TRIPS rules, incorporating border measures, which definitively improves enforcement in Chile. Finally, Law No. 19.996 protects trademarks not only by means of criminal actions, but also through civil actions, and allows the owner of a trademark to start injunctions proceedings.

Exhaustion of trademark rights: international.