INTA Backs Chile’s Agreement to Join Madrid Protocol

On May 19, Chile approved a bill accepting the Madrid Protocol. The country’s accession to the Protocol, once it joins, will make it the sixth Latin American member of the global trademark system, giving a boost to harmonization in the region. On April 20, the country also passed a so-called “Short Law” modernizing its Industrial Property Law. INTA played a strong role in both efforts.

The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks is managed by the World Intellectual Property Organization (WIPO) and makes it possible to protect a mark in a large number of countries through an International Registration.

INTA provided input and guidance from the start of the process when it was called on to consult with the trade minister in 2018. The minister asked INTA to share its position on Madrid accession and the Association voiced its support. The Association also provided information to the National Institute of Industrial Property (INAPI) about the position of various brand owners, as well as the nuances of the Madrid System and the experience of other countries that have adopted it.

In June 2020, INTA participated in a policy dialogue with IP Offices from Latin America, co-organized by Mexico’s Intellectual Property Office and WIPO. INTA representatives emphasized that accession to the Madrid Protocol would be beneficial to companies of all sizes.

In addition, in January 2021, INTA and a local member firm co-hosted a virtual roundtable to discuss challenges and opportunities that the Madrid System would bring to trademark owners in the country. (See the INTA News article).

The bill to implement this treaty entered the Chilean Congress’s first constitutional process on December 2, 2020. The Chamber of Deputies approved the bill on January 14, 2021, and then it moved to the Senate Chamber for a vote last month.

Chile, the fifth largest economy in the region, will follow Cuba, Colombia, Mexico, Brazil, and Trinidad & Tobago (in order of entrance) to accede to the Protocol. This means that four of the five largest economies in the region are Madrid members. Also, Chile’s entrance into the Madrid System makes it the third country from the Pacific Alliance (Chile, Colombia, and Mexico, leaving only Peru) to become a member of the Madrid community.

In applauding the accession, INTA strongly praised the work of Ms. Bresky, whose effort INTA Chief Representative Officer, Latin America and the Caribbean Office José Luis Londoño called “outstanding.”

Separately, the “Short Law” had been submitted to Congress by the previous administration of former President Michelle Bachelet and took more than two years of negotiations to gain congressional approval. As with the Madrid Protocol, INTA supported the IP Office from the beginning, since the “Short Law” brings Chilean trademark law into modern international standards, as well as into coherence with INTA model law.

INTA had discussions with the IP Office on how to better implement and regulate the amended law regarding nontraditional marks, and provided a global benchmark for it.

In the case of the Madrid accession, the current administration was “bold” to have submitted it, as the government was facing strong opposition in the Chilean Congress, said Mr. Londoño.

Ms. Bresky “successfully navigated through very critical situations,” he noted. These included social unrest in the country, a referendum, and the election of “assemblists” (representatives) to draft a new Constitution.

The Congress also deserves praise, Mr. Londoño said, as it put the political situation and differences aside and passed the two laws. In the case of the “Short Law,” it passed by an overwhelming majority of 129 votes in favor, 1 against, and 1 abstention. The Madrid bill passed in the Senate with 30 votes in favor, 0 against, and 3 abstentions.

A date is not set for Chile to deposit the treaty before WIPO. Once the treaty is deposited, the agreement will enter into force as of the third month after the deposit date.

To learn more, see the Law & Practice article.

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. 

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