What is the process for applying for a trademark?
There are four key stages to a trademark application: filing, preliminary examination, publication, and substantive examination.
1. Filing:
Do not forget that, before filing your application online, you should carefully fill out the correct form. Make sure to verify in advance the classification of the goods or services you wish to distinguish. This can be done by using the search tool in the following link Also, make sure that the trademark that you wish to register is sufficiently distinctive and not subject to any grounds for ineligibility (see Article 20 of Law No. 19,039). We especially recommend verifying that it has not previously been registered under the same scope. This can be done by performing a search at the following link
2. Formal examination (preliminary review):
Formal examination of the application: once the application has been received, it will be examined for any error or omission of the formal requirements established by Chilean laws and regulations. If the application complies with the relevant standards, it will be accepted for processing. This will be communicated via INAPI´s daily report, for which reason we stress the importance of continuously checking the administrative state of the application once filed.
Publication: once the application has been accepted for processing, the applicant is obliged to request and pay for the publication of the extract of the application through the link to the Official Gazette. If this cannot be done online, it can be done at the offices of the Official Gazette. The publication process should be carried out within 20 working days after the application has been accepted for processing. If publication is not requested within the given timeframe, the application shall be deemed not to have been filed and it will be archived.
Preliminary examination and formal observations: if, in the preliminary examination, there are observations or remarks, these will be communicated via the daily report, for which reason we stress the importance of continuously checking the administrative state of the application once filed. Observations should be responded accordingly, whether asking for clarification or correction, either by the applicant or representative. Observations must be responded within a 30-day timeframe, through filing a written record with INAPI´s Registrar of Trademarks. If not responded to, the application shall be deemed to have been abandoned and will be archived.
Publication, substantive examination, substantive examination observations, decision, payment or resource
3. Publication:
In the publication stage, an extract of the trademark application is published in the Official Gazette, in order to inform the public in general and/or any interested party of the application in case that party decides to oppose the registration of said application. The applicant will be provided with a proposal of the text to be published; the applicant should verify that the proposal is accurate. The publication extract includes the requested trademark, the name of the applicant, graphical representation or image if any, and the entire scope of goods and services for which the mark has been filed, indicating their corresponding classes.
This step can be performed at the website to the Official Gazette. If this is not possible, it should be done at the offices of the Official Gazette from Monday to Friday, between 9am and 2pm. The applicant should pay the fee, which varies based on the length of the extract. This fee can be paid in cash, by electronic transfer, or via check written out to “Subsecretaría del Interior - Diario Official” (Under secretariat of Homeland Security - Official Gazette).
Once the extract of the application appears in the Industrial Property supplement of the Official Gazette, there is a waiting period of 30 working days. Within this period, oppositions to the application can be filed by any interested party.
4. Substantive examination:
Once 30 working days have passed from the publication of the extract, the application is sent to the Director of INAPI for substantive examination, in order to determine whether the sign is in conflict with any of the regulations established under Article 20 of Law Nr. 19,039, and particularly, if it is distinctive enough and there is no other similar trademark within the same scope.
If the substantive examination finds that there are no grounds for ineligibility for registration, the application is accepted to the registry and the applicant is given a time period of 60 working days to pay and confirm payment of the final fees.
If the substantive examination finds observations:
If the substantive examination finds that there are obstacles to granting the trademark, the Director of INAPI will communicate, via registered mail to the applicant or representative’s place of residence, the grounds for ineligibility for registration. The applicant has 30 days to respond to said observations. Once this time period is over, whether the applicant or representative has answered the observations of the substantive examination or not, the Director issues a decision: if the grounds for ineligibility are reconsidered, this decision may be positive; otherwise, the trademark will be denied. In the latter case, the decision may be appealed to the Industrial Property Court (Tribunal de Propiedad Industrial, TDPI), within the following 15 working days.
If there are oppositions to the application:
If, within 30 working days from the publication of the extract of the application in the Official Gazette, oppositions are filed, the application shall be considered contested.
The opposition or oppositions that comply with formal requirements will be communicated to the applicant or representative, as the case may be, via registered mail, along with any observation found in the substantive examination. Starting from the date of this communication, the applicant or representative has a time period of 30 working days to respond to the oppositions and/or observations.
To contest said oppositions, the interested party must solicit the assistance of a qualified lawyer. It should be noted that there is no obligation to contest oppositions, but if the applicant wishes to do so, it must be done with a lawyer representation.
Whether the oppositions have been contested or not, the arguments put forward by all parties are considered. Should there be substantial and contestable facts pertinent to the application, the grounds for opposition will be tried; otherwise, the parties involved will be immediately cited to hear judgment. Once judgment has been passed, the Director of INAPI will settle the opposition, making a statement on the observations on the substantive examination, if any, and the trademark registration is either accepted or denied.
If, after 15 working days from when the judgment has been communicated via the INAPI´s daily report, no appeal has been filed by any party, the Secretary ratifies the absence of appellation, and the judgment becomes final.
If an appeal is filed, its admissibility will be examined by INAPI. Once accepted, the appeal will be submitted to the Industrial Property Court (Tribunal de Propiedad Industrial, TPI), which will pass a final judgment on the appeal. When filing an appeal, the appellant must provide proof of payment totaling 2 UTM (Monthly Tax Units). This consignment payment will be returned to the appellant should the appeal be successful; otherwise, if the appeal is struck down, the consignment will be retained.
To contest definitive judgments issued in second instance, a final appeal may be filed.
Once a final decision has been reached and the trademark is accepted for registration, the applicant must pay the final fees, totalling 2 UTM per granted class, within a time period of 60 working days.
What is the cost of a commercial trademark application?
There are two costs to consider:
Fees per class: the cost for each requested class is 3 UTM (Monthly Tax Units). However, the cost for initiating the application procedure is 1 UTM for each class; the remaining 2 UTM per class are paid at the final stage of the registration process, when the trademark is accepted. This fee covers the entire national territory, with exceptions detailed further ahead.
Publication fees of the extract in the Official Gazette: the cost varies depending on the length of the extract. The extract to be published should contain the number of the pending application, the requested trademark, the name of the applicant, the classes in which the trademark is requested and their details, and the image of the trademark, if applicable. The website of the Official Gazette lists the cost per character. At present, an average extract costs aproximately 15,000 Chilean pesos.
It should be noted that the Official Gazette charges for extracts according to official fees published once a year. The cost consists of a fixed cost for each publication plus an additional cost per character.
Exceptions:
Application fees for commercial establishments are equivalent to one UTM per requested class and an extra UTM per region. The regions correspond to the administrative divisions of Chile, which are 17 in number.
Application fees for slogans are equivalent to 3 UTMs total, independently of the number of classes registered in the trademark that the slogan is intended to publicize.
Following is a table of costs. Keep in mind that the cost of the publication of the extract in the Official Gazette varies, depending on whether the requested trademark contains an image or not and the length of the extract. The length of the extract is based primarily on the details of the scope.
Finally, in order to determine the cost of publication of the extract of your application, it is necessary to clearly define the activity carried out by your business and what you intend to protect with your trademark, as the details of the goods and services requested will depend on this; and, consequently, so will the fees that need to be paid.
What is the territorial protection granted by the commercial trademark? Will it apply abroad?
A trademark will generally grant rights within national territory, meaning that it only grants protection in the country or countries where the trademark is granted or registered. To obtain a trademark abroad, it is necessary to apply for registration in every single country where protection is sought, in line with the regulations of each relevant country.
What rights are granted by a trademark application in process?
Industrial property rights are valid beginning from the date of registration, which is when a trademark application is accepted. Nevertheless, the sole act of filing a trademark application grants the priority right. This means that the application will have a priority taking precedence over any other applications filed subsequently.
What can be registered as a trademark?
Any fanciful or arbitrary word or expression, names, pseudonyms, letters, numbers, images, symbols, graphics, combination of colors, or any combination of the former. Slogans can also be registered, as long as they are connected to a trademark.
What signs cannot be requested as trademark?
Trademarks, whether denominative, figurative, or mixed, cannot be registered if any grounds for ineligibility detailed under Article 20 of Law Nr. 19,039 apply to the trademark. These are 11 in total, ranging from letters a) to k).
Do I have an obligation to register the trademarks I have created?
No, there is no obligation to register any trademarks you have created. It is up to you to decide whether to register them, as well as to decide whether to renew them.
Nevertheless, in general, only rightholders of valid registered trademarks can take advantage of industrial property rights and enforcement measures established in the Law on Industrial Property.
What does the “principle of specialty” in trademarks mean?
It means that once a trademark registration is accepted, its exclusivity and protection rights only apply to products or services for which that registration has been granted. For this reason, it is possible for identical or similar trademarks that distinguish different, unrelated products or services to coexist, despite belonging to different rightholders. For example, it is possible for the trademark Las Rosas (the roses) to apply to a retirement home, class 43, as well as for bed linen, class 24. The scope is so different that this does not cause consumers any confusion. This principle does not apply to famous or well-known denominative trademarks. In effect, by granting famous trademarks to third parties, public consumers would be confused as to the company origin of products or services, as the company of origin will always be assumed to be the creator of the famous trademark.
Why a trademark application is published in the Official Gazette?
All trademark applications must be published in the Official Gazette. The purpose of this is to make the application public to everyone, so that any interested third parties are able to oppose the trademark being granted, citing the grounds for ineligibility established in Law Nr. 19,309.
What is the process for publishing the extract of a trademark application?
Once a trademark application has been accepted for processing, the applicant is obliged to request and pay for the publication of an extract of the application through the website of the Official Gazette. If this is not possible, it should be done at the offices of the Official Gazette. The publication process should be completed within 20 working days, counting from the date the application was accepted for processing. If the publication process is not completed by the end of this time period, the application shall be deemed not to have been filed.
A copy of your original application will be provided to you along with the extract to be published in the Official Gazette. You should then verify that all details are correct. The extract includes the requested trademark, the applicant´s name, the image of the trademark, if any, and the requested classes and details of said classes. The publication should be requested through the website of the Official Gazette. If this is not possible, it should be done at the offices of the Official Gazette. If there are any substantial errors in the publication, for example when the scope of goods and/or services is incomplete or incorrect, or the image containing the trademark for some reason is not visible in the publication, a second publication will be ordered by INAPI at the applicant’s cost, which is why we stress the need to verify the extract before publication in order to make sure it is correct and complete.
How are goods and/or services in a trademark application classified?
Every trademark application is filed in order to distinguish certain products and/or services. To this end, Chile uses the International (Nice) Classification. When filing a trademark application, it is essential to first consult said classification system so that the products and services covered by the trademark for which protection is sought can be properly classified. You can use INAPI’s Products and Services Classifier available at The Nice Classification for this task. Apart from containing every term employed by the Nice Classification, it contains over 15,000 additional terms recognized by INAPI that can be used for the purposes of classification in trademark applications. The Nice Classification contains 45 classes at the moment. Classes 1 to 34 distinguish products, while classes 35 to 45 list and detail services.
Why should I perform a search to determine whether the term or expression I wish to register has already been applied for or is already a registered trademark?
Before filing an application for a registered trademark, we recommend performing a search in our databases in order to verify that the expression you wish to apply for does not have decisive similarities or it is identical to prior applications or registrations used to distinguish products and/or services similar or identical to those you wish to protect. In this way, you can avoid opposition filings and/or rejection of the application by INAPI.
In effect, a search of Chilean trademarks should be carried out by every interested party independently, through an industrial property agent or by hiring specialized services.
Nevertheless, you should be aware of the fact that INAPI’s database is public and is available at our website, www.inapi.cl for free. You can make searches by accessing the section “trademark search”, where you can perform a basic or advanced query. The latter is done through filters or criteria, which allow every user that wishes to perform research and development (R&D), market research, risk analysis, strategic planning, or are simply looking for innovative and high-impact products, to narrow down searches as much as possible.
An efficient search allows anticipating possible objections from third parties, in case the trademark you wish to register is similar or identical to already registered trademarks within the same class or classes.
The choice of the type of search you wish to perform is up to you, and it will depend on your area of interest.
If it is your first time accessing and using these INAPI services, we recommend performing a standard query, choosing the option “sign” (trademarks), and inputting the word or denomination of interest.
What documents should be included in a trademark application?
The documents that should be included in a trademark application depend on the type of application, but in general the following should be considered:
If the trademark application includes an image (as is the case with mixed or figurative trademarks), 3 examples should be included on paper, in the colors you wish to register; each example should be 7x7 cm in size. If you are applying online, the image should be uploaded at the moment of filing the application in a file format already accepted by INAPI.
If the applicant is a legal person, such as a private limited company, limited liability individual company, sociedad anónima (public limited company), foundation, etc., an original or notarized copy (photocopies are not admissible) of the documentation accrediting the representative acting on behalf of the rightholder must be included.
If the applicant is acting on behalf of a natural person or legal entity, the corresponding power of attorney should be included, which can be a private legal instrument without any additional formalities. That is to say, it can be granted by the interested parties without the requirement of a notary authorizing the act or the signatures on said document. The original or notarized copy of the document should be included (photocopies are not admissible). This step is not necessary if the power of attorney registry mechanism administered by INAPI is used. In this case, it is enough to simply state the registration number corresponding to the relevant power of attorney.
If the application is filed online, and the applicant is a legal entity or acting through a representative, the powers of attorney or documents certifying the representation should be sent through certified mail once the application number is received. This step is not necessary if the power of attorney registry mechanism administered by INAPI is used. In this case, it is enough to simply state the registration number corresponding to the relevant power of attorney.
How do I file an opposition to a trademark application?
The only way to oppose a trademark application is by mean of filing an opposition, through an authorized lawyer, within a timeframe of 30 working days following the publication date of the application that you wish to oppose.
The term working day refers to, as established in Law Nr. 19,039, Monday to Friday. Saturdays, Sundays, and holidays are excluded.
In accordance with the former, it should be noted that prior to publication of the trademark application, even if one is made aware of the application by other means, opposition cannot be filed and any one that is filed before publication will be automatically rejected. Oppositions filed after the time period of 30 days will also be automatically rejected. The only opportunity to file an opposition is within the timeframe of 30 working days, counting from the date of publication of the application.
The opposition should ultimately be founded on the grounds for ineligibility established under Article 20 of Law Nr. 19,039. Please see Which signs cannot be requested as trademarks?
What is the electronic payment process on the INAPI website?
To make electronic payments, the requested information must first be entered into the electronic form and the button marked “Accept” clicked. A “Payment Confirmation” screen will be shown, where the user can review the information provided. If this is correct, the user should again click the “Pay” button, whereupon the system will redirect the user to the website of the National Treasury. On this website, you may select a bank where you hold an account in order to complete the payment. If your bank is not available, please choose the “WebPay Plus” option in order to use a credit card to complete the payment, or the “WebPay Plus Redcompra” option to use a debit card.
Can a license be granted for a registered trademark?
Yes, trademarks can be the subject of all kinds of legal acts, including granting a license to third parties. This is a contract freely regulated between parties, for example, for a given time or indefinitely, subject to certain conditions, or negotiated exclusively for a single licensee or for several licensees simultaneously.
The license will not be considered valid until it is filed with INAPI. The contract should consist of, at least, the original of a private legal instrument signed by the relevant parties. In order to register it with INAPI, this contract should be filed along with the respective annotation form.
The respective annotation form will be analyzed by INAPI examiners. If it complies with the necessary regulations, it will be accepted for registration. Starting from the date it is accepted, the applicant will have a time period of 60 days to pay and provide proof of payment of 1 UTM (Monthly Tax Unit). Once paid, the license will be annotated in the margin of the trademark registration. INAPI reserves the right to require more information in case of reasonable doubts regarding the veracity of the content of the relevant documentation (the licensing contract).
If payment is not made or proof of payment is not provided within the 60-day time period, the application for annotation shall be deemed to have been abandoned.
How do I assign a trademark application?
A trademark application can be assigned to a third party while the application is being processed. For the assignment to be considered valid, it must be communicated to INAPI. This procedure does not incur any payment of duties. INAPI only needs to be informed of the assignment via an application where the assignment contract is included.
The assignment should consist of, at least, an application in writing and the original of a simple document signed by both parties (assignor and assignee). INAPI reserves the right to require more information in case of reasonable doubts regarding the veracity of the content of the document. We suggest reviewing INAPI Memo No. 004, dated November 9th 2012, available at ...
Consequently, the only requirement for assigning an application is that the trademark application is pending, with the final date for filing an assignment contract with INAPI being the same as the end of the time period for paying and confirming payment of the final duties of an application.
If the assignment application is filed after this date, the process for assigning a trademark registration applies instead, which carries a charge of 1 UTM (Monthly Tax Unit).
How do I sell a trademark registration?
Once a trademark registration is granted and registered, it can be sold to a third party. The only formality required for the sale of a trademark is a signed and notarized private legal instrument. Nevertheless, for the sale to be considered valid, it must be filed with INAPI.
Filing a sale of a trademark registration is done by filling out an assignment form. If the sale involves the entire registration, the Total Assignment Form is used. If only one or more classes of products and/or services are sold, in the case where the registration is wider than one class in scope, the Partial Assignment form is used.
The duties for an assignment are 1 UTM (Monthly Tax Unit) for each registration assigned.
How do I use the trademark registration guidelines?
These guidelines are an effort on the part of INAPI to make publicly available and standardize the internal practices used to comply with laws and regulations that regulate the functioning of all trademark registrations and other signs.
What are the different types of trademark application forms?
The 7 types of application forms for commercial trademarks are as follows:
Products: With this form, you can apply for protection for a trademark used to distinguish one or more products, whether they are the same class or not. The fee amount depends on the number of classes applied for, independently of the number of products that the form covers.
Services: With this form, you can apply for protection for a trademark used to distinguish one or more activities consisting in the lawful provision of services.
Commercial establishments: With this form, you can apply for protection for a trademark used to distinguish an establishment where buying and selling of one or more products belonging to one or more classes takes place. You should list the products of each class (this is the only form that provides coverage by region, which means that payment is due for each class and region the form covers).
Industrial establishments: With this form, you can apply for protection for a trademark used to distinguish an establishment dedicated to the manufacture or creation of one or more products belonging to one or more classes. You should list the products belonging to each class (payment is made for each class or classes of products that the form covers).
Slogans: With this form, you can apply for protection for a phrase used to publicize a previously registered trademark. Accordingly, in order to request protection for a slogan, an applicant must first have a registered trademark, and the scope of the slogan will depend on that of the registered trademark the slogan is meant for. In the application for protection for a slogan, you can place limits on the scope that you apply for, but you do not have an exclusive right to publicize a wider scope than that of the related trademark or the trademark that the slogan applies to, which in this context is termed house mark.
Collective trademarks: With this form, you can apply for protection for a trademark to be used collectively in order to distinguish the origin, material, manufacturing procedure, or other common characteristic of a good or service, produced or provided by the members of an association, so as to differentiate them from those produced or provided by others outside the group. This type of trademark cannot be transferred or assigned.
Certification marks: With this form, you (usually a certifying company or an expert qualified to perform certification) can apply for protection for a trademark destined to be used for products or services in order to certify one or more common characteristics of these. The function of these trademarks is to certify or guarantee that the products or services involved fulfill certain pre-established standards, which necessitates prior and continuous inspection on behalf of the certifying body.
When should I renew a trademark registration?
The owner of a registered trademark should request its renewal before its expiration date and ven up to 30 working days after the registration has expired. A trademark registration lasts 10 years, counting from the date when the registration was accepted (Article 24, Law No. 19,039). We suggest applying for renewal within 6 months prior to its expiration.
What is the timeframe for paying renewal fees?
An application for renewal should be paid and proof of payment provided within 6 months following acceptance of the renewal application or expiration of the registration, whichever comes first. However, starting from the second month after the renewal has been accepted, a surcharge of 20% for each month or partial month is applied (Article 24, Law Nr. 19,039). For this reason, we suggest paying and providing proof of payment within the first month of the 6-month time period.
How much does the renewal of a trademark cost?
Renewing a trademark registration costs 6 UTM (Monthly Tax Units) per class of the trademark registration to be renewed (subparagraph 2, Article 18bis B, Law Nr. 19,039).
What are the competent courts to deal with trademark related matters?
To file oppositions to pending trademark applications: INAPI
To file trademark registration invalidity claims: INAPI
To claim trademark offenses: The Prosecution or Guarantee Courts (Criminal Courts)
To claim trademark infringements: ordinary courts (Article 106, Law Nr. 19,039)
Does INAPI have a registry of lawyers and/or trademark agents?
No, INAPI does not keep an official registry or list of lawyers and/or trademark agents. The choice of lawyer, if you wish to hire one, is free.
Do I need a lawyer or a trademark agent in order to apply for a trademark?
No. According to the law, registering a trademark in Chile does not require representation from a lawyer or industrial property agent.
However, keep the following in mind:
The law does not distinguish between an applicant acting alone and an applicant represented by a lawyer or an industrial property agent, meaning the law and procedure is presumed to be completely known by all applicants. For this reason, it is important that you familiarize yourself with the procedure beforehand and are aware of how certain resolutions are communicated, and that you routinely check the state of your application so as not to neglect obligations or procedures that must be carried out within strict timeframes. Otherwise, your application may be deemed to have been abandoned or deemed to not have been filed, simply due to the normal operation of the law. Be especially aware of procedures for responding to preliminary examination observations, requesting publication of the extract, and paying and providing proof of payment for final duties or fees.
Natural persons or legal entities who reside outside of Chile must appoint a representative domiciled within the country.
If an opposition to the application is filed, and you wish to contest said opposition, you must be represented by an authorized lawyer. This is also the case if your trademark application is denied. In order to appeal the decision in the Industrial Property Court, you must hire an authorized lawyer to represent you.
What is the difference between a trademark and a business name?
A trademark allows a person to distinguish different products and/or services in the market. A business name, on the other hand, is the name by which a legal entity is identified. In practice, a legal entity might use its business name as a trademark, but if registered to identify products or services in the market, it is done in order for that term to be used as a trademark.
What is the relationship between a trademark and a domain name or Internet address?
The registration of a domain name or Internet address is the responsibility of the University of Chile. The .CL domain registrar, NIC Chile, is administered by the Computer Sciences Department of the University of Chile, under authority of the IANA (Internet Assigned Numbers Authority). In general, domain registrations are not subject to any kind of prior approval and are assigned on a first-come, first-serve basis (more information is available at ww.nic.cl).
Being the owner of a domain name does not entitle a person to obtain a registered trademark, nor vice-versa. Trademarks do not grant priority in the eyes of NIC Chile.
Consequently, only those domain names that comply with the registration requirements established in the Industrial Property Law are eligible to be registered.
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