Chile and the Madrid Protocol: What International Applicants Need to Know

On July 4, 2022, the Madrid Protocol entered into force in Chile, making the country a member of the international trade mark registration system administered by the World Intellectual Property Organization (WIPO). This was a landmark event — Chile joined a small but growing group of Latin American countries in the Madrid System, following Colombia (2012), Mexico (2013), and Brazil (2019). For international applicants, the Madrid Protocol provides a streamlined route to seek trade mark protection in Chile through a single international application. However, the practical implementation has revealed several important considerations that applicants must understand to avoid common pitfalls.

What the Madrid Protocol Means for Chile

The Madrid Protocol allows trade mark holders to file a single international application through WIPO, designating Chile (among other member countries) for protection. Instead of filing a separate national application directly with INAPI, the applicant files through their home office, pays a single set of fees, and WIPO notifies INAPI of the designation.

Key benefits include:

• Centralised filing: A single application and a single set of fees cover multiple countries, including Chile.
• Centralised management: Changes to the international registration (such as assignments, name changes, or limitations) can be recorded centrally through WIPO and extended to all designated countries.
• Cost efficiency: Applicants avoid the need to hire separate local representatives in each country for the initial filing (though local counsel may be needed later if issues arise).
• Streamlined renewals: The international registration is renewed centrally through WIPO.

How INAPI Processes International Designations

Once WIPO notifies INAPI of a designation to Chile, INAPI processes the application through its standard examination procedure, with certain adaptations required by the Madrid Protocol:

• Preliminary check: INAPI conducts an initial verification that the information in the international registration is correct and complete.
• Publication: The application is published in INAPI’s internal gazette, which begins the 30-working-day opposition period — the same period that applies to national applications.
• Substantive examination: After the opposition period expires, INAPI examines the application on both absolute and relative grounds, including descriptiveness (Article 20(e)), likelihood of confusion (Article 20(h)), well-known marks (Article 20(g)), and all other grounds under Article 20.
• Decision: If no issues are found and no oppositions are filed, INAPI grants protection. If issues are identified, INAPI issues a provisional refusal, which is communicated to WIPO and forwarded to the international registration holder.

Common Reasons for Provisional Refusal

INAPI has publicly stated that the most common grounds for issuing provisional refusals on international designations relate to:

• Translation or description of goods and services: The terms used in the international application may not correspond to INAPI’s accepted terminology. For example, broad or non-standard descriptions of goods or services may be objected to, and terms that are acceptable under the Nice Classification may need to be adapted for INAPI’s database. INAPI maintains its own database of accepted terms, which applicants can consult before filing.
• Similarity with existing Chilean trade marks: INAPI conducts the same ex officio search for international designations as for national applications. If a similar mark is already registered or pending in the same class, a provisional refusal will be issued.
• Descriptiveness or lack of distinctiveness: If the mark (or its Spanish translation) is descriptive of the goods or services, INAPI will refuse under Article 20(e).
• Incorrect classification: Where the goods or services as listed in the international registration do not correspond to the classes under INAPI’s classification practice, adjustments may be required.

Responding to a Provisional Refusal

When INAPI issues a provisional refusal, the holder of the international registration has 60 days from the date INAPI communicates the provisional refusal to WIPO to respond. This period is established by INAPI’s Exempt Resolution 184 of 2022, which governs the processing of international trade marks in Chile.

Key procedural points include:

• Local representation: To respond to a provisional refusal, the international registration holder must appoint a representative domiciled in Chile. For oppositions and appeals, representation by a practising Chilean lawyer is mandatory.
• National law applies: INAPI applies Chilean national law to the examination, subject to the particularities established by the Madrid Protocol. In the event of any conflict between national rules and the Protocol, the Protocol prevails.
• Self-executing protocol: INAPI has taken the position that the Madrid Protocol is self-executing in Chile, meaning no additional legislative reform is required for its application. This was established under Exempt Resolution 184 of 2022.

The Priority Claim Limitation

One important practical limitation concerns priority claims. Under Chilean national law, INAPI is unable to accept multiple dates of priority within a single application. For international registrations that include goods or services with different priority dates, this creates a complication: INAPI can only recognise one priority date for all the goods and services listed in the designation. Applicants with different priority dates for different goods may need to consider filing separate national applications in Chile for goods with distinct priority claims.

The Central Attack Risk

A fundamental feature of the Madrid System is the dependency period: if the basic application or registration in the home office is refused, withdrawn, cancelled, or expires within five years of the international registration date, the international registration (and all its designations, including Chile) may be cancelled as well. This “central attack” risk is not unique to Chile, but it is particularly relevant for applicants from countries with strict examination practices, where the basic mark may face challenges.

To mitigate this risk, applicants can convert an affected international designation into a national application in Chile, preserving the original filing date. However, this conversion must be completed within specific timeframes established by the Protocol.

The Non-Use Revocation Interaction

International registrations designating Chile are subject to the same non-use revocation rules introduced by Law No. 21,355 (the Short Law). If the mark is not put to real and effective use in Chilean territory within five years of the grant of protection, it is vulnerable to a cancellation action filed by any interested party. The burden of proving use falls on the international registration holder, just as it does for national registrations.

Strategic Recommendations

• Check INAPI’s accepted terms before filing: Consult INAPI’s database of goods and services terms before filing the international application. Using terms that INAPI does not accept is the leading cause of provisional refusals and adds unnecessary delay and cost.
• Search Chilean registers proactively: Before designating Chile, conduct a search of INAPI’s trade mark database (available for free at www.inapi.cl) to identify potential conflicts. This is the same due diligence recommended for national filings.
• Appoint local counsel early: While local representation is not required for the initial designation, having a Chilean attorney in place ensures timely responses to provisional refusals, oppositions, and any substantive issues.
• Monitor the Chilean gazette: For Madrid designations, the opposition period runs from the date of publication in INAPI’s internal gazette — not from the WIPO publication. Monitor INAPI’s gazette directly or through local counsel.
• Plan for the non-use requirement: International registrations in Chile are subject to the same five-year use requirement as national marks. Begin planning for genuine use in the Chilean market as soon as protection is granted.
• Consider separate national filings for complex priority claims: If your international application involves multiple priority dates for different goods, a separate national filing may be preferable to avoid INAPI’s single-priority-date limitation.

Common Mistakes

• Assuming Madrid filing eliminates all complexity: The Madrid Protocol simplifies the initial filing, but national examination, opposition, and enforcement procedures in Chile apply fully. Local knowledge remains essential.
• Using generic Nice Classification terms without checking INAPI: INAPI may not accept all standard Nice terms. Terms like “virtual bakery” may be reclassified or objected to under INAPI’s specific practices.
• Ignoring the provisional refusal response deadline: The 60-day window to respond to INAPI’s provisional refusal is strict. Missing it can result in definitive refusal of protection in Chile.
• Failing to appoint a Chilean representative: Many substantive actions — including responding to oppositions and filing appeals — require representation by a Chilean lawyer. Not having local counsel in place creates dangerous delays.
• Forgetting the non-use obligation: The fact that the mark was filed through the Madrid System does not exempt it from Chile’s five-year use requirement. Plan for use in Chile from the outset.

Key Takeaway

Chile’s accession to the Madrid Protocol in July 2022 opened a valuable new pathway for international applicants seeking trade mark protection in one of Latin America’s most stable and investment-friendly markets. The system offers genuine efficiencies in filing and portfolio management. However, the practical implementation reveals important nuances — particularly around goods and services terminology, priority claim limitations, and the interplay with Chile’s non-use revocation regime. Applicants who treat the Madrid designation as a “set and forget” filing risk provisional refusals, missed deadlines, and ultimately lost protection. Proactive due diligence, local counsel, and awareness of Chile’s specific examination practices are the keys to success.