A new IP law, No. 21.355, entered into force on 9th May 2022, in which various articles of the current IP Law No. 19.039 dated 1991 and its subsequent iterations were amended. The most significant changes that have been introduced for trade marks, patents and industrial designs are as follows:

 

TRADE MARKS:

• Non-traditional trade marks such as 3D, holographic and olfactory marks are now provided for in the new law, which eliminates the requirement for graphical representation.

• Use requirements are provided for, such that it will be now possible to seek cancellation of a trade mark registration if it is not being used. The burden of proving use will lie with the holder of the registration, and cancellation can be requested after 5 years from the filing date (or the next renewal date, for registrations granted before 9th May 2022).

• Cancellation of a granted registration will also be possible if a trade mark becomes a standard or a commonly-used sign with respect to the protected items.

• Additional criminal penalties have been included for trade mark infringement.

• New regulations regarding certification and collective trade marks have been incorporated into the law.

• Trade mark registrations can be renewed within the six months immediately prior to the expiry date and the six months after this expiry date. Previously, they could be renewed at any time before the renewal date.

 

PATENTS:

• The law introduces the possibility to restore priority within two months of the expiration of the original Convention deadline.

• Provisional patent applications with a duration of 12 months are provided for (on filing a clear description of the invention and drawings in Spanish and payment of the official fee).

• Additional official fees must be paid for every 20 sheets over 80 sheets in the patent specification.

• Applicants are provided with a term of 45 days within which to request the reinstatement of applications that have been considered abandoned, subject to the payment of a reinstatement fee.

• A new regime for the payment of annuities is established, allowing payments to be made annually from the 11th year of validity, or en bloc in the form of a single payment of the fees for the remaining 10-year period.

• The regime for supplementary protection has been amended, namely with regard to the available period for applying for the extension (which has been shortened from 6 to 2 months from the grant date of the patent), as well as setting 5 years as the maximum term of additional protection. Such supplementary patent protection is limited only to unjustified administrative process delays.

 

DRAWINGS AND INDUSTRIAL DESIGNS:

• Protection for industrial designs and drawings has been extended from 10 to 15 years. This benefit also applies to industrial designs granted under the previous law which have not yet expired.

• An optional abbreviated industrial design and drawing application procedure, which does not involve the substantive examination of the application, has been introduced. This procedure only provides the applicant with a certificate of deposit, and does not allow the rights holder to take legal actions until such time as substantive examination has been requested and approved.

• The renewal or maintenance fees for industrial designs and drawings for the second and third quinquennia can be paid en bloc before the expiration date of the first period, or in annual instalments.

 

ACCESSION TO MADRID PROTOCOL:

The Government of the Republic of Chile deposited its instrument of accession to the Madrid Protocol on 4th April 2022, and this Protocol will enter into force there on 4th July 2022. However, the amendments to the IP law discussed above did not introduce provisions regulating to Madrid Protocol filings and designations. It is anticipated that the promulgation of the necessary implementing regulations for the handling of such cases will occur within the next few weeks.

 

Should you require any further information, please do not hesitate to contact us.


For more information please contact the author, Louise Audhlam-Gardiner, at louise@lysaght.co.uk