Trademarks

What is a trademark?

A trademark is any type of sign that can be graphically represented and can be used to distinguish products, services, or commercial or industrial establishments in the marketplace.

Trademarks may consist of words alone or a combination of words, numbers and/or symbols (denominative trademarks), drawings alone (figurative trademarks), a combination of the two aforementioned (mixed trademarks) and sounds (sound trademarks).”

Slogans can also be registered as long as they are attached to a previously registered trademark of the product, service, or commercial or industrial establishment for which it is intended.

The protection granted by a trademark is territorial and temporary: it is valid nationally for a period of 10 years, indefinitely renewable in 10-year increments, as long as the corresponding fee is paid.

Advantages to registering a trademark

When consumers purchase a product or service, they choose a specific brand due to its quality and known characteristics.

A trademark is an effective tool for distinguishing between products on the market and for differentiating a brand from others, avoiding confusion for consumers.

Registering a trademark offers legal protection for the rightholder, who is able to prevent third parties not having the owner´s consent, from using that trademark in the course of trade, to distinguish goods or services that are the same or similar to those already protected.

• 1. Civil action, for example, by suing for damages.
• 2. Penalties for criminal offenses.

How do I register a trademark?

The procedure for registering a trademark in Chile is divided into three stages: filing and formal examination (preliminary review) of the application, publication of the extract in the Official Gazette, and substantive examination of the application.

Processing fees for commercial trademarks

Payment of fees or duties for new trademarks in Chile is divided into two stages: at the moment of filing an application and at the end of processing, that is, once the application is accepted into the registry (in the latter case, the applicant has a 60-day timeframe to pay the final fees and provide proof of said payment).

The amount of the first fee is 1 UTM (Unidad Tributaria Mensual, or Monthly Tax Unit) and the final fee amounts to 2 UTM for each class covered by the application.

Thus, the total cost of registering a trademark in Chile, counting all fees and duties, is 3 UTM for each class specified in the application.

Note as well that it is currently mandatory, according to Chilean law, to publish an extract of the application in the Chilean Official Gazette after the Trademarks Division has performed a formalities examination and ordered the publication. The cost of this publication depends on the length of the description of the goods and/or services and should be paid directly to the Official Gazette.

Once the applicant has been notified (by a registered letter sent to the place of residence of the applicant or the applicant’s agent) of the final resolution accepting the registration of a trademark, the applicant must make the final payment and provide proof of said payment within a time period of 60 working days.

The following table lists the fees set for the registration of new trademarks in Chile.

Dowload

Payments can be made in person by printing the payment order available at www.inapi.cl and making the payment at any bank in Chile or at the Tesorería General de la República (National Treasury).

If you wish to make a payment in person, do not forget to provide proof of payment INAPI´s offices, which you can do by presenting a receipt of payment to the document reception desk within the set timeframe.

Applications where proof of payment of final fees are not presented to INAPI shall be deemed to have been abandoned and will be archived.

Please remember that you can also make an online payment to the National Treasury through our website. When paying online it is not necessary to provide proof of payment, as the National Treasury will send a confirmation of the payment they received to INAPI.

Also, you should take into account that not all applications result in a successful registration, and the initial processing fees you have paid will not be refunded in case the application is denied. The same applies for the cost of publication.

Procedure Stages

Diagram

Types of trademark forms

INAPI provides 6 types of forms for filing a trademark application. Application forms are multi-class, meaning that a single form can be used for one or many classes of goods, for one or many classes of services, or for one or many classes of goods and services at the same time. The 6 types of application forms for trademarks are as follows:

Goods and/or Services (FPI-58): With this form, you can apply for protection of a trademark used to distinguish goods and/or services, whether they are classified under the same class or not. The fee amount depends on the number of classes applied for, independently of the number of goods and/or services that are included in the form.

Commercial establishments (FPI-60): With this form, you can apply for protection for a trademark used to distinguish an establishment which buys o sells one or more products belonging to one or more classes. You should list the goods belonging to each class (this is the only form that provides protection by region, which means that payment is due for each class and each region the the applicant has specified in the form).

Industrial establishments (FPI-60): With this form, you can apply for protection for a trademark used to distinguish an establishment dedicated to the manufacture of one or more goods belonging to one or more classes. You should list the goods belonging to each class (payment is made for each class or classes of goods that the applicant has specified).

Slogans (FPI-59): 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 to publicize. 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 (FPI-62): 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 trademarks (FPI-63): With this form, you (usually a certifying company or an expert qualified to perform certification) can apply for protection of a trademark aimed to certify one or more common characteristics of certain goods and/or services. The purpose of these trademarks is to guarantee that the or services involved fulfill certain pre-established standards, which require prior and continuous inspection on behalf of the certifying body.

Ways of filing applications

There are two ways to file a trademark application:

a) In person, by filing the correct form at INAPI´s office (Avenida Libertador Bernardo O’Higgins Nr. 194, 1st floor, from Monday to Friday, between 9am to 2pm). Please keep in mind that the form must be typed and that an initial fee must be paid to the Cuenta Única Fiscal (Single Treasury Account) through Form No. 10 on Fiscal Revenue. This payment must previously have been made at a bank or a tax collection agency.

b) Online, by filing an electronic application on our website (www.inapi.cl). In this case, the initial fee must be paid via electronic transaction, such as through a bank transfer or credit/debit card.

To access INAPI’s web services, you can use your INAPI account or your Clave Única (Single Password). If you do not yet have a Clave Única or you do not know what is it, please visit Clave Única

Filing powers of attorney

When a trademark registration applicant is a company, group of people, or a foreigner residing abroad, they must act through representation. The representative shall file the corresponding powers of attorney granting him or her the authority to carry out the application procedure for registering trademark.

To this end, we recommend that, before filing an application in person or online, you supply notarized copies of the creation of the legal entity to our office, as well as registration form FPI-50. Said form can be downloaded here. Once the documents certifying the representative of the legal entity or joint proprietors have been supplied, INAPI will assign a registration number to the power of attorney that, in order to avoid having to include the original copy of said document with every written record, can just be cited in any application filed either in person or online. This includes future applications.

If you should reside outside of Santiago, you can mail the documents via registered mail to Avenida Libertador Bernardo O’Higgins Nr. 194, 1st floor, Oficina de Partes, Santiago.

If your company has been registered under the “Empresa en un Día” (Company in a day) system, you should send an email to inapi@inapi.cl with form PFI-50 containing the requested information and the “Certificado de Estatutos Actualizado” (Current Statutes Certificate) attached in a PDF format.

The “Certificado de Estatutos Actualizado” can be downloaded at the Empresa en un Día website. Once received and processed, we will reply to your email with the assigned registration number.

If the applicant is a foreign resident, he or she must designate a representative resident in Chile to represent the applicant in the processing of the application and again when the registry has been granted. To this end, you should issue a power of attorney abroad, appointing a Chilean resident to represent you, indicating the resident’s Chilean identity number and place of residence in Chile. This power of attorney can be included in the application or registered with the powers of attorney registry outlined above.

Without prejudice to the former, you can file your application through a representative without a power of attorney registration number or the document itself. However, since this is a formal requirement of the application procedure, once INAPI performs the formal examination of your application, a power of attorney will be required as a first office action in order to continue processing your application. This circumstance will alter the normal course of the procedure, delaying its continuation.

Filing documents

The applicant or representative can and/or will be required to file documents to INAPI in response to an application remark performed by our Trademarks Division while conducting either formal or substantive examinations.

You may file these documents in person at our offices or online.

Downloading forms

How do I exploit my commercial trademark?

If the rightholder of the trademark does not wish to abandon rights over the trademark, but instead wishes to exploit it by authorizing its use to a third party, he or she can do so. The most common way is to grant a license (or authorization) of use. If this exchange involves a price, this is considered to be an act of exploiting said trademark. There are several advantages to licensing a trademark, as it creates important additional visibility and is a significant source of income to the rightholder.

How to license a trademark

The rightholder of a registered trademark can grant licenses for their trademarks to other companies. In this case, the owner keeps the right over the trademark but an authorization is granted to one or more companies to use the trademark or trademarks. Licenses are a permit to use a trademark in the national territory where it is registered, and allows the licensee to use said trademark without fear of legal sanctions from the rightholder, who retains exclusive rights over it. The rightholder, on the other hand, benefits from additional income.

In practice, trademark licenses are frequently granted in the framework of business deals wider in scope, such as franchising deals, or deals that include granting a license for other intellectual property rights, such as patents or the specialized knowledge and technical assistance needed in order to manufacture a certain product.

A trademark license is not valid against third parties if it is not annotated in the margins of the trademark registration carried by INAPI. This is done by filling out form FPI-30, provided by INAPI, including the original or notarized copy of the licensing document, and paying the legal fees within the specified timeframe (the amount to be paid is 1 UTM per license granted and the timeframe is 60 days, counting from the date when the license is accepted).

Franchises

The trademark owner can also use a licensing agreement to arrange franchising deals. Through a franchising contract, the licensor has certain control over the activities of the licensee, in order to guarantee quality standards of the product or service. In exchange for granting a license for using a trademark, the rightholder is obliged to supply specific technical knowledge: technical information, technical service, technical assistance, or administrative services relating to manufacturing, commercialization, maintenanceand administration. In return, the licensee is obliged to apply this knowledge and information in the manufacture of goods and/or provision of services under this brand, so as not to harm the value of the trademark.

Thus, franchising is a commercial agreement through which the reputation, technical information, and knowledge of one party is combined with the investment of another with the purpose of selling goods or providing services directly to consumers. The establishment in which said products or services are provided will normally have a registered trademark, a service mark, or a brand name, as well as a special and distinguishing feature. For example, fast food chains, which more often than not operate in the framework of franchising agreements in Chile.

Common characteristics of a franchising agreement:

There is a type of license whereby the holder of the franchise (franchisee) is permitted to use a trademark registered by the franchiser (who licenses the franchise) and is also able to use the system developed by the franchiser for the exploitation of a certain business, in return for payment.

There is an interactive, continual relationship that encompasses multiple sales of the franchised product during a period of time in which the franchiser assists the franchisee in establishing, maintaining, and promoting the location where the franchising (for example, a fast food restaurant) is taking place. The franchiser will also give the franchisee updated information when new techniques have been developed, in order to improve the functioning of said location. The franchisee, in turn, pays a fee to the franchiser during this period for the rights to keep using the franchising system.

The franchiser has the right to determine how the business should function in aspects such as quality control, protecting the franchising system, operational details, among others.

Granting a license for a registered trademark is usually a prerequisite for reaching a franchising agreement, as the franchisee is most concerned with benefiting from the prestige and recognition of the brand in question.

Franchising contract example

Download example

Main grounds for the non-registrability of a trademark

Before filing your application for registering a trademark with INAPI, you should consider that there are certain words that are ineligible to be registered as a trademark.

Our regulations are clear on this matter and similar to those in the rest of the world. In Chile, you cannot register a trademark if it has any of the following characteristics, established under Article 20 of Law Nr. 19,039:

• The sign lacks distinctiveness, that is to say, none of its elements can be used to distinguish that the products or services provided originate from one company and not any other (Article 20(e)). This happens when a word is used to describe the type, nature, origin, nationality, destination, weight, value, or quality of the products or services, or is of common use in the market to designate this type of products or services.
• For example, if a company tries to register the mark SILLA (chair) to sell chairs, the mark will be denied, as this name is the same of the generic term for the product.
• If a company tries to register a descriptive mark such as DULCE (sweet) to sell chocolate, it will be denied for being too descriptive. In fact, it would be considered unfair to grant a sole chocolate manufacturer use of the word “sweet” to commercialize their products.
• The sign is a technical or scientific name for the object for which it is intended; a name of a plant variety, a common international name recommended by the World Health Organization, or a name indicating therapeutic properties (Article 20(b)).
• The sign consists of the shape or color of the product or its packaging.
• The sign consists of the color in itself (Article 20(i)).
• The sign is contrary to morality, public order, or proper practice. An example is registering a trademark for an illegal narcotic (Article 20(k)).
• The sign consists of the emblems and symbols of a State, or the flag, name, or initials of any State. This is the case for flags and national coat of arms of countries, which cannot be appropriated (Article 20(e)).
• Signs that are conducive to error, deception, or confusion regarding the geographic origin, quality, or material of the products or services provided (Article 20(f)).
• For example, if you wish to sell milk, yogurt, and eggs and the trademark emphasizes the word HUEVOS (eggs), the application will very likely to be denied for milk and yogurt. This is because such a mark could lead the consumer to be confused as to the type of product sold, associating the mark with eggs, when the mark is requested to distinguish milk and yogurt.
• Signs that are in conflict with rights owned by third parties.
• Marks that are identical or graphically or phonetically similar to other marks previously registered or legitimately requested in Chile for identical or similar products or services (Article 20(h)).
• Marks that are identical or similar to others registered abroad, for the same products or services, that are famous or wellknown (Article 20(g)).
• Marks that consist of the name, pseudonym, or likeness of any natural person, except with the consent of that person or that person’s heirs, unless 50 years have passed since his or her death and that mark does not prejudice his or her honor (Article 20(c)).
• Signs likely to mislead or create confusion among public consumers, with respect to the source or attributes of the product that a geographical indication or appellation of origin is intended to distinguish in Chile (Article 20(j)).

How long does a trademark last?

A registered trademark lasts 10 years, as from the date the trademark was registered. A trademark can be indefinitely renewed. Renewal may be requested even up to 30 working days after the trademark has expired.

This means that once a trademark has been registered, if it is consistently renewed on time before its period of validity ends, the trademark may last indefinitely.

How do I assign a trademark?

Trademarks are industrial property rights that, in the same way as an asset or object, can be assigned to other people. This is done via a contract by which the owner of the trademark assigns it to another party, usually in exchange for payment (sale).

Assigning a trademark is not valid against third parties if the change of ownership is not annotated at INAPI through an application for the assignment to be registered. This can be done by filling out form FPI-29, provided by INAPI, including the original or an authorized copy of the assignment document, and paying the legal fee within the specified timeframe (the amount to be paid is 1 UTM per registration assigned and the timeframe is 60 days, counting from the date when the assignment is accepted).

If the new rightholder does not reside in Chile, he or she must appoint a representative resident in Chile to represent him or her in every act relating to the trademark.

If two or more registrations are assigned through a sole document, we suggest using the annotation document repository provided by INAPI. For this, you should visit our office with the original or an authorized copy of the assignment document, as well as form FPI-56 for applying to register an annotation document, which can be found at Download forms.

INAPI will assign the document an annotation document repository number, which can be cited in every subsequent application for annotation in order to avoid having to include an original document in every written record.

How do I renew a trademark registration?

In order to renew a trademark registration, you should fill out a trademark renewal application form FPI-57, which can be found at Download forms. The form should indicate the number of the registration that is to be renewed, the trademark, if it is denominative, the complete personal information of the rightholder and representative (if applicable), and whether the renewal is partial or total. If a partial renewal is requested, it shall be indicated the class or classes in which the renewal would take place.

You can file the renewal form at INAPI’s offices in person or through our website. Keep in mind that the renewal process does not involve initial fees, nor do applications for renewal have to be published in the Official Gazette. If you are acting through a representative, the representation should be authorized by including the relevant power of attorney or by citing the registration number (if the power of attorney has been previously registered).

PTEM agreements

PTEM agreements are especially aimed towards those who handle a high volume of applications, allowing the applications to be processed one at a time.

To make use of them, the interested party should make the necessary adjustments to their IT systems, in order for them to be integrated with INAPI´s platform in a simple and secure way, which involves an initial testing phase.

Advantages of entering into PTEM agreements

Benefits include:

Applying for the registration or renewal of multiple trademarks, allowing for sending application and extracting the filing (in PDF format) in bulk.

Making large queries of INAPI’s trademark database, in accordance with the terms of the agreement.

Consulting “digital records”, that is, digitalized records of trademark registration applications, according to the conditions established in the agreement.

To express interest in entering into a PTEM agreement, please write to: inapi@inapi.cl

For more information, consult the agreement here: Download PDF