With the formal introduction of three-dimensional trademarks in the INAPI Short Law, it is now possible to grant protection to the entire design, i.e., the packaging is protected 360°.
Three years after the amendments introduced by the INAPI Short Law (Law No. 21,355) came into force, it is essential that we remember the advances that the incorporation of new trademark categories, including non-traditional trademarks, has brought about.
Within this group, three-dimensional trademarks represent a valuable strategic tool for owners seeking comprehensive protection for the external presentation of their products.
How was it done before?
Prior to the legal amendment, protection for packaging or physical presentation had to be obtained through the registration of mixed trademarks, i.e., a combination of a name + written word + logo, which in this case was a photo of the front of the packaging.
This method significantly restricted the scope of trademark protection, leaving open flanks to possible imitations on other angles of the packaging (back and sides).
What has changed with the Short Law?
With the formal introduction of three-dimensional trademarks into the Chilean legal system, it is now possible to grant protection to the entire design of the product or its packaging, including side and rear views, i.e., the packaging is protected 360°.
According to Exempt Resolution No. 135, which approves the instructions for processing trademarks, a three-dimensional trademark is one that consists of a three-dimensional shape, including the outline of the product, its container, or packaging.
For presentation purposes, this trademark can be represented by graphic illustrations, computer-generated images, or photographs that sufficiently show its three dimensions: height, length, and depth.
However, in order to be registered, the three-dimensional trademark must meet the following requirements:
- Intrinsic distinctiveness: The proposed shape must be capable of being distinguished from others on the market. Generic or common shapes are excluded.
- Not misleading or confusing: The design must not lead the consumer to be confused about the commercial origin of the product.
What is required to file a three-dimensional trademark with INAPI?
The requirements for filing a three-dimensional trademark with the National Institute of Industrial Property are:
- The classes in which you want to register it.
- A graphic illustration or photographic representation of the packaging, which must contain at least three different views that clearly show the three dimensions, length, height, and depth.
If the illustration or representation does not sufficiently show the details of the trademark, the National Institute of Industrial Property may require the applicant to provide up to six different views of the trademark. The electronic file must be submitted in the following format:
- JPEG (maximum 2 MB).
- Maximum image size: 2835 x 2010 pixels.
- Minimum image size: 850 x 850 pixels.
What are the benefits of the new mechanism?
Obtaining registration with INAPI allows the owner to oppose the registration of similar trademarks that attempt to obtain registration of a similar or identical trademark for the same or related products or services.
Once granted, the registration will be valid for 10 years, renewable for the same period and indefinitely, which represents a significant advantage over other legal entities, such as industrial designs, whose maximum duration is 15 years and is non-renewable.
This attribute makes the three-dimensional trademark an ideal mechanism for the prolonged protection of distinctive packaging that forms an essential part of a company’s commercial identity.
In view of the above, we recommend that all new trademark applications involving packaging or container designs be processed directly as three-dimensional trademarks, thereby enhancing their 360° protection, covering all views of the product, and thus protecting the products in their entirety against imitations or unauthorized use.
In short, the incorporation of this legal concept into the Chilean trademark system represents a significant evolution in the way the visual identity of products is protected, aligning with international standards and responding to current market needs.
Since its implementation, INAPI has granted more than 140 three-dimensional trademark registrations, demonstrating the growing adoption of this tool by owners seeking solid and lasting protection for their distinctive assets.
Therefore, we consider it essential to take advantage of this opportunity, strategically integrating it into each company’s trademark management.
For more information on these topics, please contact our team:
Eugenio Gormáz | Partner | egormaz@az.cl
Carlos Lazcano | Senior Associate | clazcano@az.cl
Fernanda Rodríguez | Associate | frodriguez@az.cl
Esteban Orhanovic | Associate | eorhanovic@az.cl
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