/ Current events of the Madrid System in Chile

There is a disparity in the criteria for correction of observations that could discourage foreign applicants from filing trademarks in Chile through the Madrid Protocol. We hope that this disadvantageous circumstance will be gradually reversed.

Laura Hernández Bethermyt

Francisco Silva von Moltke

Almost two years after the implementation of the Madrid System in Chile, we have applied for and registered trademarks from our country in different jurisdictions and we have been able to take advantage of the benefits that the system grants in more than 128 countries in the long term. Chile is an attractive country and the holders take advantage of the benefits that the system has for them. Our country is on a par with countries in the region such as Colombia, Brazil and Mexico, who are also part of the system and can attest to the benefits and attractiveness of using the tool.

The system provides the opportunity to expedite applications with an “expert processing”option, which consists of a management that does not require additional review by the office of origin, which allows speeding up the management towards the reception of the World Intellectual Property Organization – WIPO and the Madrid Monitor system, which provides a centralized and secure access to all the online tools and services needed to file and manage international applications and registrations. Regardless of whether or not the “expert processing” option is followed.

However, contrary to expectations, the Chilean trademark office – as the receiving office for international applications seeking protection in our country – has been quite strict with the coverage of trademarks filed through the Madrid system. As is usual in the case of trademark applications, the local office has raised objections in a manner that seeks to adapt the coverage to local practice. In principle, this should not be a problem. However, the problem arises because foreign applicants using the protocol and designating Chile as a destination have only one opportunity to correct any objections related to the required coverages. In contrast, applications submitted domestically have several opportunities to adjust the wording of the required coverage, in some cases as many as four or more opportunities.

This disparity can create difficulties for foreign applicants, as the correction of objections can be critical to the success or usefulness of their registration. In addition, sometimes the part of the coverage objected to may correspond to the fundamental part or reason for the application in question. Thus, leaving out some particular element of the application could discourage applicants from filing trademarks in Chile or at least through the Madrid Protocol.

In response to this situation, corresponding appeals have been filed before the Honorable Industrial Property Court, which have gradually reversed this disadvantageous circumstance.

A concrete example is the case of the trademark OPENBEAM, whose application number 991667879 faced a formal observation regarding its coverage. After correcting it to bring it in line with the current Nice Classification and local practices, the trademark office simply eliminated it because it did not agree with the proposed changes. The corresponding appeal was filed against this resolution and the Honorable Industrial Property Court considered that such resolution violates the principles of equality before the law and due process, enshrined in Articles 19 No. 2 and 3 of the Political Constitution of the Republic. Therefore, the trademark office was ordered to grant the applicant, at least once, the opportunity to submit its observations before the final decision.

Although the trademark office has not responded to this instruction from the Court, we consider that this apparent disadvantage of trademark applications filed through the protocol could be overcome soon.

Any new situation requires adaptation and improvement and evidently Chile, two years after the implementation of the protocol, is still at that stage, looking for the best way to apply equally and fairly the same requirements to different types of applications, which we are sure we will be able to adjust.