CHILE – Amendments to Industrial Property Act and Accession to Madrid Protocol

A new IP law, No. 21.355, entered into force on 9th May 2022, in which various articles of the current IP Law No. 19.039 dated 1991 and its subsequent iterations were amended. The most significant changes that have been introduced for trademarks, patents and industrial designs are as follows:

TRADE MARKS:

• Non-traditional trade marks such as 3D, holographic and olfactory marks are now provided for in the new law, eliminating the graphical representation requirement.

• Use requirements are provided for, such that it will now be possible to seek cancellation of a trade mark registration if it is not being used. The burden of proving used will lie with the registration holder, and cancellation can be requested after five years from the filing date (or the next renewal date for registrations granted before 9th May 2022).

• Cancellation of a granted registration will also be possible if a trade mark becomes a standard or a commonly-used sign concerning the protected items.

• Additional criminal penalties have been included for trade mark infringement.

• New regulations regarding certification and collective trade marks have been incorporated into the law.

• Trade mark registrations can be renewed within six months immediately before the expiry date and six months after this expiry date. Previously, they could be renewed at any time before the renewal date.

PATENTS:

• The law introduces the possibility of restoring priority within two months of the expiration of the original Convention deadline.

• Provisional patent applications for 12 months are provided for (on filing a clear description of the invention and drawings in Spanish and payment of the official fee).

• Additional official fees must be paid for every 20 sheets over 80 sheets in the patent specification.

• Applicants are provided with a term of 45 days to request the reinstatement of applications that have been considered abandoned, subject to the payment of a reinstatement fee.

• A new regime for the payment of annuities is established, allowing payments to be made annually from the 11th year of validity or en bloc in the form of a single charge of the fees for the remaining 10-year period.

• The regime for supplementary protection has been amended, namely concerning the available period for applying for the extension (which has been shortened from 6 to 2 months from the grant date of the patent), as well as setting five years as the maximum term of additional protection. Such supplementary patent protection is limited only to unjustified administrative process delays.

DRAWINGS AND INDUSTRIAL DESIGNS:

• Protection for industrial designs and drawings has been extended from 10 to 15 years. This benefit also applies to industrial designs granted under the previous expired law.

• An optional abbreviated industrial design and drawing application procedure, which does not involve the substantive examination of the application, has been introduced. This procedure only provides the applicant with a certificate of deposit. It does not allow the rights holder to take legal action until a substantive examination has been requested and approved.

• The renewal or maintenance fees for industrial designs and drawings for the second and third quinquennia can be paid en bloc before the expiration date of the first period or in annual instalments.

ACCESSION TO MADRID PROTOCOL:

The Government of the Republic of Chile deposited its instrument of accession to the Madrid Protocol on 4th April 2022, and this Protocol will enter into force there on 4th July 2022. However, the amendments to the IP law discussed above did not introduce provisions regulating Madrid Protocol filings and designations. It is anticipated that the promulgation of the necessary implementing regulations for handling such cases will occur within the next few weeks.

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