May 25, 2022

Chile introduces new IP legislation and joins the Madrid System; China accedes to the Hague System

Chile law

A new intellectual property law entered into effect in Chile as of May 9, 2022, modernising the IP system in the country. The new legislation is set to assist applicants and rights holders with requesting and maintaining IP protection more effectively, specifically in relation to patent and trademark rights.

Among the amendments to the current IP system is the introduction of the possibility of obtaining protection for inventions by way of provisional patents. As such, applicants will be afforded a period of 12 months to provide all relevant information pertaining to the right of ownership. This will allow for the patent application to be assessed on feasibility, as well as for the evaluation of its scalability and projection to occur without the priority of the patent being lapsed.

Furthermore, the legal action of allowing patent owners to sue for damages against the appropriation of a registered patent by a third party has been incorporated into the new legislation. Prior to the addition of this option, the only action available to patent owners in the event of patent infringement was to request the declaration of nullity of registration.

In relation to trademarks, the newly implemented legislation eliminates the requirement of graphic representation in an application for a mark, a move also seen throughout many jurisdictions in recent years. Subsequently, it will henceforth be easier for brand owners to register more non-traditional trademark types in the country, such as three-dimensional, holographic, multimedia and motion marks, as well as other less traditional trademark types.

Moreover, the expiration of a trademark due to lack of use has been introduced, with the view of ensuring that exclusive rights of a trademark are applied effectively and fairly, and not unduly blocking the entry of competitors to the market.

The legislative reform in Chile is hoped to allow for more "efficient and expeditious registration procedures" in the country, affording applicants clarity on the use of the system and the IP office of Chile to better manage the quality of IP protection and rights.

Chile Madrid

In a further move toward a more modernised IP system, Chile officially deposited its instrument of accession to the Madrid Protocol with the WIPO on April 4, 2022. As such, Chile is set to become an official member privy to the Madrid System for the international registration of trademarks 3 months thereafter, on July 4, 2022.

Following the country's accession, Chile will constitute the 111th member of the Madrid System, and the 127th country across the globe. The system itself allows applicants to file one international application, accompanied by a single set of fees, covering any or all of the Contracting States to the Madrid Protocol.

A granted international trademark is valid for an initial period of 10 years from the date of the international registration, and has the same effect in each respective designated state as if it had been filed directly within that jurisdiction.

The Madrid System simplifies the process of obtaining international trademark protection within the Contracting States and streamlines the process for trademark maintenance. Chile's accession to the Madrid Protocol is therefore set to prove advantageous to applicants based in the jurisdiction, with Chileans recorded by the WIPO to have filed more than 32,000 trademark applications in 57 different countries, as well as for international trademark applicants designating Chile for protection.

China Hague

China has also joined an international IP system, with the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs entering into force for the country on May 5, 2022. The jurisdiction deposited its instruments of accession to the Act on February 5, 2022, marking the 77th Member of the Hague Union and 68th Contracting Party to the Geneva Act of the Hague Agreement, as well as the fifth and final member of the IP5 group to become a Contracting Party.

The Hague System, which now comprises a total of 94 countries, allows applicants to file one international design application designating all of the contracting parties in which protection is sought. It is generally advantageous for applicants to utilise the system, not only for the filing and registration of industrial design rights, but for portfolio management directly with the International Bureau of the World Intellectual Property Organisation (WIPO).

An international design application can include up to 100 designs within one class of the Locarno Classification, and once granted, has the same effect in each designated state as it would if it were filed directly in that jurisdiction. International designs are valid for an initial period of five years from the date of the international registration.

The addition of China to the system is set to benefit international design applicants within China, and those wishing to designate the country in an international application.

Author: Danielle Carvey