/ Application of Trademark Law Treaty (TLT) Rules to the Renewal of Trademark Registrations

Carla Pacheco
Senior associate
Alessandri

The Chilean industrial property agency (Instituto Nacional de Propiedad Industrial, INAPI) decided to apply to renewals of trademark registrations, the provisions of the TLT, as of March 26, 2021. It applies only to trademarks of goods, service marks and trademarks of goods and services. Sound marks, collective marks and certification marks are excluded.

The TLT grants a term of at least 6 months as from the date on which the renewal must be made, to file the renewal request and pay the fee, recognizing in this point its self-executing character. Therefore, INAPI understands that the internal rule that grants a grace period of only 30 days to file the renewal request has been repealed.

Another innovation –given the extension of the grace period to request the renewal of a registration– is that now the payment/accreditation of the renewal fees can be made together with the renewal request. Previously, renewal fees could only be paid and credited once the renewal request was accepted by INAPI.

Accordingly, under the new criterion, the following should be kept in mind:

• The term for filing a renewal request comprises the period between the 6 months prior to the expiration date of a registration –as usual– and the 6 months after the expiration date, the latter being the novelty.
• The payment/accreditation of renewal fees may be made simultaneously with the filing of the renewal request or at any time within the legal term, without prejudice to the status of the procedure.
• Our internal regulation provides for a legal surcharge for the payment of renewal fees made after 6 months following the expiration –which remains unchanged–, consisting of a surcharge of 20% per month and fraction thereof, as from the first month following the expiration of the 30 days.