/ Bill introduces two new actions in Chilean Trademark and Patent Law

In July 2018 the National Institute of Industrial Property (Inapi) proposed a bill to partially amend the Chilean Industrial Property Law (No. 19.039) by including new provisions that would make self-executing several of the international treaties to which Chile must adhere, as part of the renegotiation of the Free Trade Agreement signed with the European Union in 2003 (The Madrid International Trademark System, the Hague International Design System, the Locarno Design Classification Agreement, the Patent Law Treaty and the Strasbourg Agreement on Patent Classification).

The bill was made available to the Industrial Property stakeholders for a brief comment period. The final version of the bill is currently being discussed by the Senate.

This bill encompasses several provisions that tend to put up to date the Chilean Industrial Property Law in accordance with international standards, such as: i) broadening the trademark definition so as to cover the olfactive and tridimensional ones; ii) new rules governing the collective and certification trademarks; iii) incorporation of provisional applications for patent rights; iv) clarifications on the maximum patent term extension to get via a supplementary protection request; v) new patent right limitations, namely, private acts with no commercial purposes, experimental and educational acts and the preparation/manufacture of drugs under medical prescription in certain individual cases; vi) extending the validity term of industrial design registrations from 10 years to 15 years; and vii) setting up a new abbreviated procedure for granting industrial design registrations without substantive examination, among others.

However, there are two important topics that have captured most of the attention among stakeholders, both in the trademark and patent arenas:

Non-use cancellation action of trademarks
This provision was one of the most urgently required by many actors in the trademark environment, due to the undesirable consequences that the current status is allowing (for example, registration of trademarks with the only intention of blocking the entrance of a competitor into the market).

The bill establishes that it will be possible to request the cancellation of a trademark registration in those cases wherein the right holder cannot demonstrate its real and effective use over a period of five years as of the registration date. This action can be filed by anyone showing a legitimate interest and the burden of proof will be on the registration owner.

Notwithstanding the preceding, the current version of the bill includes a transitory article (5°) which establishes that the five years term wherein the use of a trademark is required will be only counted from the date of its first renewal after this new law enters into force. This situation should give trademark owners enough time to prepare new strategies of commercialization and promotion of their goods or services in order to avoid the cancellation of their trademarks.

Patent right usurpation action
The inclusion of this action in the bill is definitely a better alternative than the only one available in the current IP Law (article 50 a) ), which just allows the true inventor or legitimate assignee of patent rights can go against those who usurped the inventorship/ownership over the patent rights, by filing a cancellation action. Naturally, this cancellation action is intended to annul the patent, rather than restituting the rights to the true inventor or legitimate assignee, which appears to be far from being an effective and fair legal remedy.

With this new action, it would be possible to declare the usurpation of the patent rights and thereby proceeding to “transfer” the rights to whoever should have held the rights by virtue of legitimate inventorship/ownership, instead of canceling the patent and leaving the invention in public domain. A compensation for the corresponding damages is also permitted under this provision of the bill.

Nonetheless, as proposed in the bill, this action should have to be brought by the interested party before the civil ordinary courts of justice. This seems impractical, in view of the specialty and wide trajectory of the Industrial property Court, which should be the natural court competent on this matter, as it is the one currently deciding on all controversies related to inventions created within the context of employment and services contracts.

To download the full text of the bill (only available in Spanish), click here.

To learn more about other important aspects of the changes envisioned by this bill, feel free to contact us at: ip@alessandri.cl

Francesca Rodríguez, senior associate
Javier Aleuanlli, associate
Alessandri