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Enforcement of IPRs in Chile


Enforcement of IPRs
Counterfeiters are increasingly using the Chilean ports to enter Latin America. Chile is one of the most stable and strongest economies in the region. The ports of San Antonio, Valparaiso, and Iquique are the most common entry points for counterfeit goods.
Toys, cell phone accessories, clothing, footwear, electronics, and desktop items are the goods that most often face counterfeiting and piracy in Chile.
In Chile, intellectual property issues are generally dealt with in two separate pieces of legislation, which are as follows:
  • The Law Nº19.039, hereinafter the Industrial Property Law, governing patents, trademarks, and designs; and
  • The Law Nº17.336, hereinafter the Copyright Law, governing copyright protection.
Patents, copyright, trademarks, and designs are the different types of IPRs protected by IPR enforcement in Chile.
Registration is a requirement to enforce the exclusive rights stemming from a trademark. It is not possible to base an infringement complaint solely upon the basis of a pending trademark application and/or simply upon the earlier use of the trademark in the market.
The Industrial Property Law establishes that trademarked and patented products must be marked with the legal indications. Failure to proceed with this marking will not result in invalidity of the corresponding registration, but will deprive the owner of the IPR to the infringement actions contemplated in this Law. Therefore, it is necessary to proceed with this marking on products that use patented technologies or bear the trademarks that will be involved in litigation.
The Copyright Law does not impose any notice obligation as a condition to the valid exercise of the exclusive rights stemming from a copyright. However, affixing the copyright notice is advisable to destroy pleadings of innocent infringement.
Yes - The applicable statute of limitation is 05 years as of the date of the patent registration.
A) Government Authorities - Yes
B) Police Officials - Yes
C) Judiciary - Yes
D) Customs - Yes
A) Injunctions - Yes
B) Monetary Compensation - Yes
C) Raids - Yes
D) Seizures – Yes
E) Destruction - Yes
Civil actions take around 02 years at first instance and a further 02 years at second instance. While a decision is pending, it is possible to take preliminary or precautionary measures based on the merits of the case and the quality of the evidence rendered.
A) Responsible Authority - Criminal Court
B) Imprisonment Term - Copyright: 61 days to 540 days; no imprisonment for other kinds of infringement caused upon the proprietors of IPRs
C) Monetary Fine – The fine for infringement of industrial property can be between approximately US$1,700 to US$57,000; Copyright: US$368 to US$74,000.
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.
The court shall decide how to dispose of the tools and materials used to commit the infringement by ordering either their destruction or their distribution to charitable institutions.
Full prosecution of a criminal infringement case can be fairly long, often taking 03 years before a final decision, and at least an additional year if the case is appealed. Criminal infringement cases are rarely fully prosecuted and normally terminate before, either because during the sumario, the court is persuaded by the plaintiff to decree an impoundment or another precautionary measure over the infringing products, which typically prompts a settlement, or because, after investigating the matter, the court is not convinced about the existence of the crime and so closes the proceedings.
Notwithstanding the low amount of the fines and the lack of imprisonment penalties, the Law specifically provides for the impoundment of the infringing products, and in the case of trademark infringement, for the disposition and eventual destruction of the equipment used to produce the infringing products.
Arbitration and mediation have not been used as alternative tools to solve IP infringement conflicts in Chile.
Irrespective of the above, an IP owner who does not wish to commit personally to litigation, may choose simply to file an infringement notice with the Police Department, detailing the infringement and providing as much information as possible concerning the infringement. The police officials are legally obliged to move forward, notifying the competent court about the infringement notice, and awaiting the resolution of this court authorizing them to investigate the crime. The court’s investigation order may be broad enough so as to include the possibility of impoundment of the infringing products.
The remedies available under border control measures (customs) in Chile include imposition of fines and seizure of goods.
The applicant bears the cost of customs invention during enforcement.
If an IP rights holder abuses the enforcement measures taken by the Customs, they may withdraw themselves from taking any measures to contain the infringing goods.
If the goal is simply to stop the infringement, due to the availability of preliminary impoundments, then criminal proceeding might be preferable.
There are no specialized courts for the IP matters in Chile, and in practice, this is one of the most inconvenient features of the system. Indeed, the ever-increasing complexity of these matters requires not only a thorough knowledge of the applicable laws and international treaties, but a basic understanding of the technologies protected by the IP rights. Almost all the courts lack this education, which often, particularly in patent cases, is directly detrimental to the IP owner.