Is Custom Recordal of Intellectual Property Rights (IPRs) available in Chile?
Is Custom Recordal of IPRs compulsory in Chile?
Is it an effective measure to stop the infiltration of illegal and counterfeit products in Chile?
Which law forms the legal basis for Custom Recordal of IPRs (Border Control Measures) in Chile?
Pursuant to the WTO Agreements on Intellectual Property Rights issues, Chile enacted the Law 19912 on October 24, 2003. Articles contained in Title II of this law set out border measures for the enforcement of IP rights. The law introduced both ex parte and ex officio enforcement actions.
Is Custom Recordal of IPRs effective on import or export of goods or both?
Custom Recordal of IPRs is effective both on the import and export of goods.
What is the role of the customs department/authority? (Kindly give 2-3 points)
The customs intercept counterfeit goods based on the evidence of counterfeit shipments. It receives from the applicant or where it is apparent that the goods are of infringing nature. They are responsible for the detention of the said goods, where after the customs may either release the goods if a criminal action is not filed. In Chile and India, ordinary customs authorities determine whether there is an evident infringement.
Is there a procedure to record IP with the customs department/authority? If yes, then kindly explain it in brief.
IP owners with border measures permit the owners of registered IP rights to request suspension of the release of goods when an infringement of their rights exists or there is a well-founded reason for believing it to exist. Also, the Chilean Customs may act ex officio if infringement is evident.
The ex-parte enforcement option requires the rights holder to submit a written request before a civil court for the suspension of customs clearance of counterfeit goods. Once the court has issued the clearance suspension order, it will notify the regional customs director or customs administrator, who then officially notifies all the customs agencies by email and circular fax, in addition to the assistant oversight department.
The ex-officio measure empowers the Customs to temporarily suspend the clearance of products where it is apparent from an examination that such products are infringing.
What documents are to be submitted along with the application for Custom Recordal of IPRs?
The following documents are required:
Power of attorney - simply signed
Filing an application before the NCA
Original registration certificate issued by Trademark Office in Chile
Description of the products covered by the said trademark
It is recommended to file images of the product and/or catalogues wherein the trademarks are depicted together with the application papers before the Customs, so that the Customs' employees may be duly informed. It will also be advisable to include information on the official local distributor, or an authorized local firm to avoid inconveniences with the legal importation of products.
Is the applicant required to execute a bond (against all liabilities and to bear the costs towards destruction, demurrage, and detention charges incurred till the time of destruction or disposal) with the customs department/authority for Custom Recordal of IPRs?
What is the time frame for the customs department/authority to notify the applicants whether their application (for custom recordal of IPRs) is registered or rejected?
Does the customs department/authority have a centralized system or the Custom Recordal is required to be done with each port of entry in Chile by land, sea, and air?
The customs department has a centralized system.
Is there an online system for Custom Recordal in Chile?
No, a written request has to be made.
What is the official fee for Custom Recordal in Chile?
There is no fee for Custom Recordal in Chile.
What is the term of Custom Recordal of IPRs? Can it be further renewed?
Does the customs department/authority have a right to conduct raids and seize the counterfeit goods within Chile?
In which scenario does the customs department/authority suspend the clearance of imported goods?
Where the customs believe that the goods contained in a consignment, whether imports or exports, are inclusive of infringing material in contravention of the law of intellectual property rights, it may suspend the clearance of goods until the court makes a final determination of the goods.
Who bears the liabilities and expenses related to suspension of the release of infringing goods?
The applicant bears the liabilities and expenses related to suspension of the release of infringing goods.
Is the IP rights holder authorized to examine the goods, the clearance of which has been suspended?
Is the IP rights holder authorized to request the information about the personal details of the importer and additional crucial piece of information concerning the consignment, which has been suspended from clearance?
Can the importer or the authorized representative of the goods, which have been suspended from clearance, request the information of the IP rights holder in question?
Within what timeframe the IP rights holder needs to confirm whether the goods are counterfeit or original after suspension?
10 business days
Is the IP rights holder required to produce an injunction order or evidence of court proceedings to detain the goods?
If the answer to the above question is 'Yes,' then what is the deadline to do so?
10 business days
Does the IP rights holder need to pay an additional bond for the detention of goods?
If the answer to the above question is 'Yes,' then to what extent and how is the valuation calculated?
In the scenario where the goods detained or seized are found to be infringing the IPRs of the IP rights holder in question, what steps does the customs department/authority take?
The Customs will inform the rights holder, if the possible violation could be identified, so that it may exercise its right to request the suspension of clearance and corresponding rights, and file a criminal action requesting maintenance of the measure. The Customs can also file a criminal action based on evidence of smuggling.
The suspension of customs clearance is effective only for 10 business days from the date of notification issued by Customs to the rights holder.
Does the customs authority invite the rights holder and importer to join the proceedings? Are there any consequences of failure to join such proceeding, if any?
Yes, the suspension of customs clearance is effective for only 10 business days from the date of notification issued by Customs to the rights holder. If a criminal action is not filed, the Customs will release the products.
Before disposal/destruction of infringing goods, does the rights holder need to submit a ‘no objection’ or concurrence document?
Are there any disadvantages of Custom Recordal of IPRs in Chile? If yes, then kindly give 2-3 points?
If an IP rights holder is not satisfied with the action taken by the customs department/authority, can he/she initiate separate legal proceedings to enforce his/her IP rights?
To establish if the goods are counterfeit before the court of justice, will the affidavit by the IP rights holder suffice or any other documentary requirement is there?
The court may require the submission of other documents to substantiate and establish the authenticity of the allegedly infringing goods.
Upon conclusion of proceedings before the Court of Justice, what are the possible remedies awarded by the court?
The Law 19.039 provides for the imposition of fines ranging from $1,800 to $70,000 on any party that attempts, for commercial purposes, to use a trademark that is identical or similar to another trademark that is already registered for the same products, services, or establishments, or in relation to those covered by the registered mark.
Any person committing a second or subsequent offence within 05 years of the imposition of a fine will receive another fine of no less than double the preceding fine.
Is the rights holder under an obligation to inform customs authority when his Intellectual Property Right ceases to be valid/ he ceases to be the owner of such IPR?