CHILE: Trademark Renewals Adapted to Trademark Law Treaty

The National Institute of Industrial Property (INAPI) published Circular No. 96 in the Official Gazette on March 17, 2021, providing: “Instructions on deadlines for filing and paying renewals incorporating the criteria of the Trademark Law Treaty (TLT).”

The Circular applies the provisions of the Trademark Law Treaty (TLT) and establishes the following:

1. The timeframe for renewing trademark registrations in Chile is extended to six months before and up to six months after the renewal due date, except for sound, collective, certification, and warranty trademarks. These exceptions maintain the deadline to request the renewal up to 30 working days after its expiration according to the Industrial Property Law (IPL). IPL Article 24 provides that: “The registration of a trademark shall have a duration of ten years, counted from the date of its registration in the respective registry. The owner shall have the right to request its renewal for equal periods during its validity term or within 30 days following the expiration of such term.”

Consequently, for the sake of feasibility and certainty for trademark holders, INAPI established April 1, 2021, as the implementation date of the new process. Thus, renewal applications filed after that date will be processed in accordance with the timeframes set by the TLT for the purposes of requesting renewal, and the IPL will govern payment and application of fees.

2. “The maximum term of six months to pay and accredit the renewal fees shall always be computed as from the due date of the registration being renewed.”
3. Pursuant to the IPL, the payment made within six months after the expiration of the registration will be subject to a surcharge of 20 percent for each month or fraction of a month. Indeed, Article 18 of the IPL states in its pertinent part that: “payment shall be made within the six months following the expiration of the registration, with a surcharge of 20% for each month or fraction of a month counted as from the first month of expiration of the term established in Article 24 of this law.”
4. Finally, this establishes a new system that allows the payment and accreditation of the renewal fees at the time of filing the renewal application. Prior to this amendment, renewal fees had to be paid at the time of acceptance of the renewal. With the new regulation in force, it is now possible to avoid paying higher surcharges and even the expiration of the current registrations since the six-month term is established to file the application and pay the respective fees.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

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