Law 21.355 entered into force in Chile on May 9, 2022 and modified The Industrial Property Law 19.039 from 1991.

This modification has brought important changes such as the incorporation of non-traditional trademarks, and the cancellation action for non-use or genericity grounds. In the former case, the most representative applicants are Lego Juris A/S, The Coca-Cola Company and Crocs, Inc.

Likewise, it extended the validity of industrial designs and incorporated provisional patent applications; the latter are particularly important for research centers and universities, as is the case with La Universidad Católica de Chile, the first non-provisional patent applicant in Chile.

Non-traditional trademarks[1]

Law 19.039 stated that the term “trademark” shall mean any sign able to be represented graphically; however, Law 21.355 eliminated the requirement of graphic representation, reinforcing the importance of distinctiveness and incorporating olfactory and three dimensional trademarks.

Since May 9th, several three dimensional trademarks have been filed. Most representative applications are LEGO JURIS A/S, The Coca-Cola Company and Crocs, Inc.

LEGO Minifigure 3D (V140 – drawing 5 views w knob w/o face)
Application No. 1510230
Filing Date: 12/07/2022
Class: 28

Classic Shoe 3D
Application No. 1502591
Filing Date: 09/05/2022
Class: 25

Contour Bottle
Application No. 1502589
Filing Date: 09/05/2022
Clases: 29, 30, 32 and 33

So far, no olfactory trademarks applications have been filed which is challenging for the applicants due to the difficulties for describing it. The Trademark Authority has not published any directive on this particular matter yet.

Non-use cancellation action[2]

Perhaps the absence of the cancellation action figure was an aspect that many trademark owners had been waiting for a long time. As of May 9, 2022, it is possible to request the cancellation of a trademark due to lack of use or genericity from the fifth year of its registration.

On the other hand, only those who have a legitimate interest may request the cancellation of a trademark, which excludes the Authority from initiating the procedure ex-officio. Likewise, the burden of proof falls on the owner of the trademark and the Authority may issue a resolution canceling the trademark partially or totally.

Industrial Designs[3]

The applicant for an industrial design or drawing will have the opportunity to request a certificate of deposit through an abbreviated procedure which includes a formal examination stage but not a substantive one. As a consequence, the holder will not be able to lodge an infringement action against third parties in order to protect his rights, for which case the standard procedure should be requested and a substantive examination will be assessed.

The validity of the industrial design is 15 years, 5 additional years to what the law indicated before the modification.

Provisional Patent application[4]

If the applicant does not have a finished technical document, and in particular, with a list of claims, he may file a provisional patent application for which he must make a clear and complete description of the invention he seeks to protect.

From the date of filing, the applicant will have a period of 12 months to complete the remaining technical information and file a definitive patent application. However, if it is not filed within the granted period, the provisional application will be considered as not submitted, losing the initial priority date but not the novelty.

Provisional applications were requested by research centers and universities that, as a result of constant development, wished to have preliminary protection without necessarily having a final version of the invention, which would give them enough time to evaluate the feasibility of the project.

The Catholic University of Chile filed the first provisional patent application to protect an innovation related to the treatment of Arsenic in industrial solutions.[5]

[1] Article 19.
[2] Article 27 bis A.
[3] Article 67 bis A.
[4] Article 40.