/ Chile: Inapi establishes new criteria for processing trademarks of indigenous peoples

Valentina Gutierrez
Associate Attorney
Alessandri Abogados

In an effort to harmonize industrial property protection with respect for cultural diversity, the National Institute of Industrial Property (Inapi) of Chile issued a new guideline that addresses trademark applications related to the country’s indigenous peoples.

This guideline establishes guiding criteria for the processing and resolution of new trademark applications that contain the name of an indigenous people or correspond to manifestations related to the culture, traditions and intangible cultural heritage of indigenous peoples in Chile. 

Its purpose is to provide clear guidelines for the analysis and substantive examination of these applications, and to ensure the correct application of the relevant rules of the Industrial Property Law (IPL). It establishes detailed criteria for dealing with cases falling under the grounds for non-registrability established in Article 20(e) and (f) of the Chilean IPL. 

Some of the general criteria applied by Inapi in relation to the grounds established by the law are:

• Name of the indigenous people and name of the language of the indigenous people (Grounds f and e)

Ground of letter e) of Law 19,039: these signs lack the distinctiveness required to comply with the main function of a trademark: to clearly associate the goods or services with a specific commercial origin. This interpretation and rigorous application of ground e) guarantees that trademarks are uniquely identifiable, contributes to prevent confusion in the market and ensures that the essential purpose of trademarks is effectively fulfilled according to the law.

Ground of letter f) of Law 19,039: Inapi establishes that the granting in these cases would induce to error or deception about the origin or quality of the products or services, since the consumer will attribute characteristics and attributes of a human group to a specific individual. 

• Expressions in the language of the indigenous people (Ground e or f)

(i) Descriptive expressions in the language of the indigenous people

Ground of letter e) of Law 19,039: when the expression in the native language describes the product or service, the registration of the expression will be rejected, since it is a generic or descriptive term (and, therefore, lacks distinctiveness), following Inapi’s usual practice in such cases.

(ii) Descriptive expressions in the language of the indigenous people

Ground of letter f) of Law 19,039: If the expression is arbitrary – that is, it has no relation with the product or service to be distinguished – protection may be granted, unless it is offensive to the indigenous people, in which case the registration will be denied, since it would infringe the right to their own identity and cultural integrity and their cultural heritage, so that the granting of the trademark would tend to cause error or deception regarding the origin, quality or kind of the goods or services.

(iii) Expressions that allude to rituals or beliefs of the indigenous people

Ground of letter f) of Law 19,039: if the expression alludes to rituals or beliefs of the indigenous people, it will be rejected, even if it is arbitrary, to avoid the offensive appropriation of cultural heritage, as this would tend to cause error or deception in consumers regarding the origin, quality or kind of products or services.

• Figurative or multimedia signs (Ground f)

Ground of letter f) of Law 19,039: the registration will be rejected if the sign contains representations or images allusive to rituals or beliefs of indigenous people, whether or not arbitrary, for the same reason indicated in the previous section.

• Composite signs (Ground f or e)

Ground of letter f) of Law 19,039: the registration of composite signs that include the name of the people, the name of the language, or expressions in the language of the indigenous people, accompanied by other distinctive terms or not, will be rejected.

Ground of letter e) of Law 19,039: with respect to a composite sign in which one or more of its elements consist of expressions in the language of indigenous people, when the expression contained in the composite mark names or describes the product or service to which it will be applied, or the way of processing it, it will have to be distinguished. If the item accompanying the non-distinctive expression is also non-distinctive, the composite sign will be rejected as a generic or descriptive whole. However, if the item accompanying the expression does possess distinctiveness, it may be granted.

The guideline combines criteria that have been previously applied by Inapi and the TDPI and is based on the IPL, but also considers the principles established in constitutional rules, international treaties, laws and regulations. 

In a global context in which cultural sensitivity and respect for the rights of indigenous peoples are priorities, Inapi’s initiative reflects a balanced approach between the protection of industrial property and respect for the cultural identity of indigenous peoples.