The incorporation of three-dimensional trademarks into Chilean legislation is a major step forward in adapting the legal framework to market needs.
The last modification of the Industrial Property Law in Chile incorporated the long-awaited three-dimensional trademarks, representing a significant milestone in the field of intellectual property protection. This legislative change has opened up new opportunities and challenges for companies in various industries.
Until this modification, three-dimensional signs were protected as two-dimensional trademarks or as industrial designs. Now, with the possibility of registering packaging and product shapes as “three-dimensional”, there has been a growing interest in this type of protection, as evidenced by the 136 applications received and the 55 three-dimensional trademarks registered to date.
A remarkable aspect of three-dimensional trademarks is their ability to be renewed indefinitely, unlike industrial designs whose protection is limited to 15 years. This represents a considerable advantage for recognized packaging or designs that seek a more durable and effective protection.
The case of the rejection of the registration of the three-dimensional trademark “CAPEL” by the National Institute of Industrial Property (INAPI) and its confirmation by the Industrial Property Court (TDPI), is of great relevance in the development of criteria for the application of the grounds of irregularity in three-dimensional trademarks, providing in turn light about the interpretations of this new figure by the trademark authorities.
CAPEL’s application, which sought to protect the iconic Moai shape of its packaging, was rejected as descriptive or indicative, without sufficient distinctive character, and for representing a form associated with the Rapanui culture, protected as part of the intangible cultural heritage according to the UNESCO Convention.
This ruling highlights the importance of considering not only commercial, but also cultural and social aspects when evaluating the registration of three-dimensional trademarks. The decision of the INAPI and the TDPI establishes a relevant precedent in the current interpretation of the law, highlighting the need for a careful analysis of each request to determine the most appropriate protection mechanism.
It is important to highlight that the incorporation of three-dimensional trademarks into Chilean legislation is a great advance in adapting the legal framework to market needs and global trends in industrial property. However, as the above case demonstrates, this new legal figure also entails significant challenges, especially with regard to the evaluation of its registration and interaction with other aspects of law, such as the protection of cultural heritage.
In the future, it will be crucial for companies, advised by experts in the field, to carry out a detailed analysis to opt for the best strategy for the protection of their distinctive signs and other intangible assets.
For more information on these topics, you can contact our IP, Tech and Data team:
Eugenio Gormáz | Partner | egormaz@az.cl
Antonia Nudman | Senior Associate | anudman@az.cl
Carlos Lazcano | Senior Associate | clazcano@az.cl
Fernanda Rodríguez | Associate | frodriguez@az.cl
Esteban Orhanovic | Associate | eorhanovic@az.cl
