INTA daily news, 07 May 2013, Alli Pyrah

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Countries in Latin America and the Caribbean are cracking down on trademark squatters, combating pirates with tougher border measures and expanding IP rights to bring them in line with those in more developed countries. In particular, well-known and famous brands are gaining increased protection in Latin America as a result of international agreements and precedents set by recent cases.

Thwarting trademark squatters in Chile

In Chile, a new bill being considered by the country’s Congress aims to increase protection for brand owners but may meet with objections on constitutional grounds. The Chilean Industrial Property Law, which was published in March 2005, would bring the country’s law into line with international treaties, including the TRIPS agreement. “This new law will change many very important aspects of the current law,” says Rodrigo Velasco Santelices of Alessandri in Chile, who will be focusing on the proposed legislation during today’s session.

The law would introduce use as a requirement for maintaining ownership of a trademark. At present, Chile is one of few countries which do not have this requirement. The new legislation would allow anyone to file a cancellation action against a trademark on the grounds of non-use. Velasco says this aspect of the law will have important consequences for brand owners, particularly in the pharmaceutical industry.

In Chile, it is common practice to register and not use a trademark. “This has also unfortunately helped trademark piracy,” says Velasco. “If you don’t have use requirements it’s very easy to obtain a trademark registration because the legitimate owner of that trademark can’t file a cancellation due to non-use. I think this amendment has the intention of fighting piracy.”

The practice of registering a trademark with no intent to use it in the foreseeable future was partly due to the fact that historically, it took a long time to register a trademark—as long as four to five years if appeals were filed.The law requires certain types of products, such as new drugs, to have a corresponding trademark registered before they are launched. As a result, pharmaceutical companies have many stock trademarks registered.

In recent years, the Chilean government has made efforts to improve the efficiency of the registration process. The Chilean trademark office has now been separated from other branches of the government and given more resources, and it is now possible to file trademark applications online. Velasco says that an application without objections is now typically granted within a year. In a few cases, he has seen a registration completed in as little as eight to 10 months from the filing date.

The new law would also allow marks that are not intrinsically distinctive to be registered if they have acquired distinctiveness through use in the Chilean market; boost protection for famous marks and allow certain nontraditional marks to be registered for the first time; and expand protections for geographic indications and designations of origin, which were previously limited to the wine industry.

In addition, it would allow brand owners to register 3D, color, smell and sound trademarks. At present, sound marks can only be registered if they can be represented graphically as a musical score. “If the new law is approved, people could obtain registrations for simple sounds such as the noise of a HARLEY DAVIDSON motorcycle, which is a trademark in the United States,” says Velasco. “Up until now, it wouldn’t have been possible to register that sound as a trademark in Chile.”