Intellectual Property - iChileLaw - Published by UB & Co Attorneys and Counselors

Intellectual Property

1. Which is the Chilean legal frame regarding Intellectual Property Protection?

Intellectual property rights in Chile are granted constitutional recognition and protection. In addition, two key statutes on intellectual property are in effect in Chile: the so called "Industrial Property" Act, which governs patents of invention, utility models, industrial designs and trademarks; and the Copyright Act, which governs copyrights and moral rights (understood as the rights of an author over his or her work.)

Chile is a party to the Bern Convention (Paris Text); the Paris Convention (Stockholm Text); the Convention Establishing the World Intellectual Property Organization; the Geneva Convention; the Inter-American Copyright Convention; the Rome Convention; and the Universal Copyright Convention (Geneva Text). Chile is also a party to the Trade-Related Aspects of Intellectual Property Rights Pact (TRIPS).

In addition to these legal texts, when examining intellectual property, intellectual property licensing, and other related issues, one must also take into account general contract law, consumer protection laws, antitrust laws, and resolutions issued by Chile's Antitrust Board.

Protecting industrial and intellectual property rights is of paramount importance in Chile. Regrettably, persons other than their legitimate holders have registered business, domain names and trademarks, which may lead have to choose either to contest the registrations of the business names, domain names and trademarks (a lengthy and expensive process) or even to buy the registrations.

1.1. What is a Trademark in the Chilean system?

The Industrial Property Act defines "trademark" as a visible, original, and characteristic sign capable of distinguishing goods, services, and/or commercial or industrial establishments. To be granted trademark protection for such goods, services and/or establishments, the trademark must be registered with the Industrial Property Department (IPD). The mere use of a trademark, thus, does not grant any kind of protection.

1.1.1. Does the system protect only trademarks? Or is extended to other aspects?

Trademark registrations in Chile are not limited to trademarks but also include trade names, service names, business names, logos or labels and slogans.

1.1.2. Which are the mecanisms to protect Trademarks involved in the business?

The registration process commences by filing an application with the IPD that must include the information relative to the proposed coverage. In this connection, the International Classification of goods and services established by the Nice Agreement is applicable in Chile.

When a trademark application is submitted, it will go through a double examination process. The first examination is practiced over the formal aspects of the application and its purpose is not to check that the trademark is already registered or available. At this stage, the examination only determines if the power of attorney and coverage requested fulfill the legal requirements. If the application passes this examination, details are then published in the Official Gazette and a period is allowed for objections to the registration to be made. Due to the fact that a trademark search is not conducted during the preliminary examination, it is indispensable for trademark owners to permanently watch those applications that are published in the Official Gazette, in order to file oppositions if applicable.

The second examination analyzes the potential causes of rejection that could affect the requested trademarks.

1.1.3. How long does the trademark registration procedure takes?

Registration of a trademark in Chile takes approximately one year if no objections are raised by the IPD or by third parties; if objections are raised, the registration process may take two to three years. Upon completion of the registration process, the holder of record is regarded as the legitimate owner of the relevant trademark.

1.1.4. Are there any restrictions regarding territorial aspects?

As regards territorial enforceability, a registered trademark filed for goods, services or industrial establishments is valid throughout the territory of Chile; the registered trademark of a commercial establishment, however, is enforceable only in the Region regarding which the application was filed. In the event that a trademark owner wishes to extend the trademark's enforcement to other regions, this will entail payment of an application fee plus a registration fee per Region added (Chile has fifteen Regions and each Region is considered as a separate class for tax or official fee purposes).

1.1.5. Once the trademark is granted, how long does the protection last?

The registration of a trademark gives its owner exclusive use of it in Chile for 10 years. A trademark registration is successively renewable for another 10 years period. Once a trademark has been registered, its owner may license the use of the trademark to others. In Chile, use is not required in order to maintain or renew a trademark.

1.2. How can a business name be protected?

There are no specific statutory rights for business names in Chile. When a corporation is formed in Chile, the Registry of Commerce will not check if a corporation already exists with the same name. If another corporation exists with the same name, it is down to one of the corporations to bring an action against the new one in an attempt to stop the use of the name.

The incorporation of a corporation does not grant any right to the name of the same. Similarly, when a limited liability partnership or branch is formed, the Registry of Commerce will not check for the same name and consequently the same name may priory exist. There are no provisions for a limited liability partnership or agencies to bring an action against other limited liability partnerships or agencies with the same name. While provisions of the Paris Convention (that protect business names) are in force in Chile, the best way to protect and secure rights over a business name is to register it as a trademark in Chile.

1.3. Which are the main provisions regarding Patent Registration?

In Chile, inventions may be protected by the registration of a patent. As per patent registration in Chile, the Industrial Property Act defines an invention as a solution to a technical problem that originates an industrial activity, including any useful improvements thereof.

The invention may be a product or a procedure or something related to either of these.

1.3.1. What is the time extension of a patent?

If an application is approved, a patent may be granted for up to 20 years as from the application’s date.

1.3.2. Are there any mechanisms to grant international protection to an invention? Which is the procedure?

Usually where foreign investors are concerned, the inventions they wish to protect are already the subject of patents or pending patents elsewhere.

As the Paris Convention is in force in Chile if the patent has been registered (or is pending registration) in one of the other member countries, the applicant will have a priority period in which to register its patent in Chile. This priority period is one year as from the date of the filing of the registration application in the other member country.

In order to find out if a patent is already registered, it is necessary to carry out a patent search. This process can be carried out in approximately 2 weeks.

1.3.3. Which is the procedure that has to be carried out in order to register a patent?

Patent applications are filed with the Patent Office. Once filed, an expert appointed by the Patent Office will examine the application.

In order to be entitled to initiate criminal actions against patent violators, the Industrial Property Act requires that the registrant utilizes the words "Patente de Invención" or the initials "P.I." and the registration number on the patented object or on its packaging.

1.4. How can Copyrights be protected?

Copyright notice and/or registration in Chile are not required since the law affords copyright protection by virtue of merely creating the work.

Chile is a signatory to the Berne Copyright Convention, which gives copyright protection to works originating in the member countries. Nonetheless, registration is advisable because it gives rise to a presumption of authorship. Also, by registering the date of the work’s creation, an author records the commencement date for the period of the copyright. Both details may later assist an author in copyright claims.

1.4.1. What kinds of works are subject to copyright protection?

Copyright protection is available for any original work of authorship fixed in some material form. In other words, protection is granted to authors of creative works in the literary, artistic and scientific fields.

Software, computer programs, and literature supporting such works such as books, catalogs, and instruction manuals, are eligible for copyright protection.

Furthermore, Chilean copyright law protects not only the economic or pecuniary rights of the author of a work but also his or her moral rights throughout the duration of the copyright.

1.4.2. What are moral rights and what do they involve?

Moral rights include granting to the author the right to claim authorship of a work; the right to preserve the integrity of his or her work, which encompasses the right to reject mutilations, distortions, or other modifications of the work; the right to leave the work unpublished; the right to authorize or prevent a third party from completing an unfinished work; and the right to maintain anonymity as to authorship.

1.4.3. How does the copyright registration procedure must be carried out?

In order to register, a copy of the work must be filed with the Copyright Registry. Also, if a copyright notice is inserted in the work, the copyright conventions to which Chile is a party will apply.

1.4.4. For how long will the copyrights exist?

The copyright will exist for the lifetime of the author plus 70 years. The copyright will be extended if at the author’s death he is survived by a wife, an unmarried daughter or a married daughter with a spouse who is affected by a disability such that he will be unable to work during his lifetime. In such cases, the copyright will expire 70 years after the death of the latest qualifying survivor. Copyright of anonymous works lasts for 50 years.

These terms may not be extended. There are both civil and criminal sanctions for the violation of copyright.

1.4.5. Is the material author always the owner of the copyright?

In some cases (such as computer programming), if a work is made by an employee in the course of his or her employment, the employer will be deemed to be the author of the work, unless otherwise agreed to by the parties. Similarly, if a work is commissioned to an independent contractor, copyright will be afforded to the person who commissioned the work, unless otherwise agreed to by the parties.