1. Why register a trademark?
For both commercial and protection reasons, trademarks should be registered. Trademark use alone does not create any benefit; trademark rights are acquired through registration. The risk of not registering a trademark is that others may register an identical or similar mark that could impede the ability to use or register the mark in Chile. Registration is prima facie evidence of ownership and validity.
2. Is registration of a mark mandatory?
Registration is not compulsory, but it is highly advisable. Trademark rights depend upon ownership of a registration and, as discussed below, the legal benefits of registration may not be available otherwise.
3. What is registrable?
Any visible sign or symbol capable of distinguishing goods, services, or industrial or commercial establishments is registrable. Advertising slogans may also be registered provided they are somehow tied to or associated with a registered trademark.
4. Can a trademark be registered for retail and like services?
Retail services should be registered in different classes depending on how they are carried out. If retail is accomplished through a store, Chilean legislation provides for a special class. While trademarks protecting goods, services or industrial establishments have coverage over the entire country, trademarks regarding commercial establishments provide for protection for a specific region of the country. Chile has 13 regions. Online or telephone retail services should be applied for in International Class 35.
5. How are domain names protected?
To register a domain under .cl, a completed form must be sent to hostmaster@nic.cl. The form can be found at www.nic.cl. Domain registrations under .cl require a local presence in Chile. Foreign applicants must provide the name and tax number of an administrative contact with an address in Chile. Information about the registered domains and their contacts can be obtained at www.nic.cl.
6. Should a trademark be searched before filing?
Applications are officially searched as to prior marks, within approximately two to three months from the filing date. If the applicant makes no prefiling search, and the official search is clear, the cost of the prefiling search is saved. However, if the official search is not clear, the prefiling search could have saved the applicant the cost of filing an application. If the mark is to be used in many countries, a prefiling search is recommended, at least in major countries, to avoid unnecessary costs entailed by adopting, developing, and filing a mark that has already been registered by someone else.
7. How do I file?
An applicant may file either via a home trademark attorney or by directly contacting a Chilean trademark attorney.
8. What information must be provided before filing?
Before filing, an applicant must provide full details of the applicant, a specimen of the mark sought to be registered, a list of goods/services to be covered, and a notarized power of attorney legalized by a Chilean consul. If registration of a design or print is sought, the applicant must provide six specimens. When specimens are sent electronically via email, only one file is needed.
9. Is local registration the only option, or are there international alternatives?
A Chilean application is the only option for registering in Chile.
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
Multiclass filing is permitted, but a single application cannot cover both goods and services.
11. Is it possible to take advantage of a home application or registration?
If an applicant抯 home country is a member of the Paris Convention, and provided its home application has been filed within the six months preceding a Chilean application, the filing date of the home application can be claimed as the filing date in Chile.
12. Must a trademark be used after registration, and what happens if a trademark is not used?
Use is not necessary to maintain or renew a registration. However, this may change in the future.
13. Is using a variation of the trademark allowable?
No. A mark must be used exactly in the form in which it is registered. A Chilean trademark attorney should be consulted on this issue.
14. Is there any advantage to using a trademark before filing an application?
No. Rights to a mark are acquired only through registration, and the first applicant is normally entitled to registration.
15. For an application to be valid, are there any particular requirements that must be met?
No.
16. What information is first published about an application/ registration and when is it published?
An application is normally published for opposition purposes within eight to twelve weeks from the filing date, once the Trademark Office has conducted an initial examination and is of the opinion that the mark complies with the formal and general registration requirements provided by Chilean legislation. Publication shows the name of the applicant, the country of origin, the applied mark and the scope of protection.
17. What kind of examination (if any) will a new application undergo?
An application will receive an initial formal examination to determine compliance with formal and general requirements. If the mark is accepted, it must be published for opposition within ten working days at the applicant抯 expense. If within 30 working days no oppositions are filed, the application undergoes further substantive examination by the Trademark Office.
18. What response to official objections is required?
An application will be deemed abandoned if the applicant fails to have the mark published within ten days from the date it orders publication. Similarly, if an applicant fails to pay the registration tax within 60 working days of acceptance, the application will be deemed abandoned. In case of rejection, an applicant may ask for reconsideration or appeal depending on the stage of proceedings.
19. How long is the registration process?
The registration process takes at least ten months from the date of filing.
20. What rights does an application confer?
The application can be cited against, or used to oppose, a subsequent conflicting application.
21. What is the legal effect of a registration?
The registrant may use the mark and sue for infringement and cancellation of subsequent conflicting applications and registrations. Trademark infringement is a criminal offense.
22. Can an application be opposed or cancelled by third parties?
Yes. Third parties may file an opposition against an application within 30 days following publication of the mark. Registrations can be annulled within the five-year term from the granting date.
23. Can an application or registration be assigned?
A trademark application or registration may be assigned, and registrations encompassing multiple classes also may be assigned per class. Registrations must be assigned through a public deed granted before a Notary Public.
24. Must an assignment include goodwill?
No.
25. Does an assignment have to be recorded?
Yes. If an assignment duly legalized by a Chilean consulate is not recorded, it will not be effective against third parties.
26. Can an application or registration be licensed?
Yes.
27. Does a license have to be recorded?
Not necessarily, but it is highly advisable. A nonrecorded license will not be effective against third parties.
28. What is the territorial limit of a registration?
The territorial jurisdiction is Chile. However, regarding the commercial establishments mentioned in question 4 above, the territorial jurisdiction is the specific region (13 in total).
29. How long does a registration last?
The term of registration is ten years from date of grant of registration, and is renewable for ten-year periods if a renewal application is filed immediately before or within 30 days after the expiration date. Renewed trademarks receive a new registration number and date.
30. What is required to renew a registration?
A renewal application must be filed immediately before or within 30 days after the expiration date. A valid legalized power of attorney and six specimens - in the instance of design marks - will be requested. When specimens are sent electronically via email, only one file is needed.
31. Is it necessary to indicate a trademark registration on goods or services?
Yes. The use of the markings 揗arca Registrada,?揗.R.,?or the ?symbol is compulsory.
32. Does the International Classification System apply?
Yes.
33. Is your national office accessible online?
Yes, at www.dpi.cl. A username and password are provided at no charge. Electronic filing is possible. |
