Much has been said these days about the Trans-Pacific Partnership or TPP, a multilateral commercial treaty of the Asia Pacific block, after the conclusion of the negotiations among the party states, which means that within the following months, our country shall execute the Agreement in a definitive manner.
This treaty has considerable importance in various trade-related matters, including Intellectual and Industrial Property, which are addressed in Chapter 18 of the multilateral TPP.
In this column, we shall address the changes proposed by the TPP with regards to Trademarks in order to determine if such changes truly represent significant advances in this field.
1. Chile’s execution of an international treaty, which could be the Madrid Protocol or the Singapore Treaty.
Firstly, we must highlight that our country shall choose, discretionally, which of the two treaties it will subscribe.
There are significant differences between both treaties with regards to their treatment of Intellectual Property because, for example, the Singapore Treaty envisages, among other matters, the establishment of a common framework for non-traditional trademarks, such as olfactory, tridimensional, color, sound, gustatory and tactile trademarks.
On the other hand, the Madrid Protocol establishes an international system, which is characterized by facilitating the registry of a trademark in the countries that are parties to this treaty, through a single international trademark application, which is subjected to a uniform formal examination, after which the international office notifies the appointed countries if it decides to grant the registration or not. In the event that the registry is approved, each country (in accordance with its own criteria) must supervise compliance with all substantial requirements of the trademark in order to grant the registration.
2. Famous and notorious trademarks.
The treaty eliminates the condition currently established under letter g) of article 20 of Law No. 19,039, which – via a series of copulative conditions – requires that the base trademark of any oppositions or objections be registered abroad.
Hence, it is now possible to argue fame and notoriety based on trademarks that are not registered abroad. However, it is relevant to highlight that this possibility was already contained in the bill to reform our current Industrial Property law, specifically through broadening the scope of letter f) of the same article.
3. Exceptions to the rights granted to the holder of a trademark.
The TPP stipulates that limited exceptions to the rights granted by a trademark may be argued in certain causes, for instance, the so-called “FAIR USE” of descriptive terms, provided that it is based on legitimate interests.
The TPP allows the possibility of cancelling a GI/DO in the event that the conditions under which they were created, are suppressed. This will only apply for the GI/DO registered before the Inapi, and not to those established by law.
In conclusion, it is our opinion that the advances proposed in connection to Trademarks by the TPP do not constitute any significant progress (except for the possibility of cancelling a GI/DO), because they refer to matters that were already being applied or which were contained in the New Industrial Property Reform Bill, which is currently in the process of becoming a law. However, this does not mean that the TPP does not contain innovations and changes to other aspects of trade or even within the realm of Industrial or Intellectual Property; in fact, without a doubt, the TPP has long been awaited by Chile, because it solidifies the country’s relations with the Asia-Pacific area and facilitates the entry of Chilean products to said market.