Trade Marks Prosecution Factsheet: South America

National

• Due every 10 years with a 6-month grace period
• Restoration is not possible

• Original notarised and legalised/apostilled Power of Attorney in Spanish
• Original notarised and legalised/apostilled accompanying documents in Spanish or with Spanish translation by a local sworn translator where relevant to the particular type of filing to be made, eg

i) Assignment or licence agreements

ii) Companies Registry certificates certifying changes of name/merger

• Priority-based applications (new filings only): A certified hard copy priority document issued by the relevant IPO is required along with a Spanish translation made by a local sworn translator
• Use:
  A Mid-Term Declaration of Use must be filed between the fifth and sixth year from the registration date and on renewal itself. This applies to all registrations granted or renewed on or after 12 January 2013.

• Due every 10 years with a 6-month grace period
• Restoration is not possible

• Original signed and legalised/apostilled Power of Attorney in Spanish
• Original notarised and legalised accompanying documents in Spanish where relevant to the particular type of filing to be made, e.g.

i) Assignment or licence agreements

ii) Companies Registry certificates certifying changes of name / address / merger

• Priority-based applications (new filings only): A certified hard copy priority document issued by the relevant IPO is required along with a Spanish translation by an authorised Bolivian translator

New applications are typically processed within 12 months in smooth cases.

Bolivia is a member of the Andean Pact along with the other members of the Andean Community, namely, Colombia, Ecuador and Peru. According to the Andean Pact, there are particular reciprocal rights available to trade mark owners within the Andean Community. For example, it is possible to oppose a Bolivian trade mark application on the basis of an earlier registration held by the opponent in any other Andean Community jurisdiction so long as an application to protect the trade mark in Bolivia is also filed at the time of filing the opposition.

• Due every 10 years with a 6-month grace period
• Restoration is not possible

• Simply signed scanned Power of Attorney in Portuguese
• Original notarised and legalised/apostilled accompanying documents in Portuguese in respect of recordals of assignment or licence agreements or mergers
• Original Companies Registry certificates certifying changes of name/address with certified Portuguese translation
• Priority-based applications (new filings only): A scanned copy of the certified priority document issued by the relevant IPO is required along with a Portuguese translation

New national applications are typically processed within 18 months in smooth cases.

In 2021, the Brazilian PTO started to accept the registration of position marks, i.e. protection for the specific way in which a mark is placed on or affixed to a product.

• Due every 10 years with a 6-month grace period
• Restoration is not possible

• Original signed Power of Attorney in Spanish
• Original signed accompanying documents in Spanish where relevant to the particular type of filing to be made, eg

i) Assignment or licence agreements

ii) Companies Registry certificates certifying changes of name/address/merger (if originals are unavailable apostilled copies may be submitted instead)

• Priority-based applications (new filings only): A certified hard copy priority document issued by the relevant IPO is required along with a Spanish translation

New applications are typically processed within nine months in smooth cases.

In 2022, the Chilean IP trade marks law was updated to remove the “graphical representation” requirement from the definition of a trade mark to allow for the registration of non-traditional marks, such as scent marks, three-dimensional marks, and position marks among others.

• Due every 10 years with a 6-month grace period
• Restoration is not possible

• Simply signed scanned Power of Attorney in Spanish
• Simply signed scanned accompanying documents in Spanish where relevant to the particular type of filing to be made, e.g.

i) Assignment or licence agreements

ii) Companies Registry certificates certifying changes of name / address / merger

• Priority-based applications (new filings only): a certified hard copy priority document issued by the relevant IPO is required along with a Spanish translation

New applications are typically processed within 10 months in smooth cases.

Colombia is a member of the Andean Pact along with the other members of the Andean Community, namely, Bolivia, Ecuador and Peru. According to the Andean Pact, there are particular reciprocal rights available to trade mark owners within the Andean Community. For example, it is possible to oppose a Colombian trade mark application on the basis of an earlier registration held by the opponent in any other Andean Community jurisdiction so long as an application to protect the trade mark in Colombia is also filed at the time of filing the opposition.

• Due every 10 years with a 6-month grace period
• Restoration is not possible

• Original signed and legalised / apostilled Power of Attorney in Spanish
• Original signed and legalised / apostilled accompanying documents in Spanish or with a Spanish translation where relevant to the particular type of filing to be made, eg

i) Assignment or licence agreements

ii) Companies Registry certificates certifying changes of name/merger

• Priority-based applications (new filings only): a certified hard copy priority document issued by the relevant IPO is required along with a Spanish translation

New applications are typically processed within 10 months in smooth cases.

Ecuador is a member of the Andean Pact along with the other members of the Andean Community, namely, Bolivia, Colombia and Peru. According to the Andean Pact, there are particular reciprocal rights available to trade mark owners within the Andean Community. For example, it is possible to oppose a Ecuadorian trade mark application on the basis of an earlier registration held by the opponent in any other Andean Community jurisdiction so long as an application to protect the trade mark in Ecuador is also filed at the time of filing the opposition.

• Due every 10 years with a 6-month grace period
• Restoration is not possible

• Scanned copy of a notarised Power of Attorney in Spanish
• Original notarised and legalised/apostilled accompanying documents in Spanish where relevant to the particular type of filing to be made, e.g.

i) Assignment or licence agreements

ii) Companies Registry certificates certifying changes of name / address / merger

• Priority-based applications (new filings only): a certified hard copy priority document issued by the relevant IPO is required along with a Spanish translation

New applications are typically processed within nine months in smooth cases.

The applications are published immediately after filing and the opposition term is 60 working days. If no oppositions are filed, the Examiner conducts a formal and substantial examination. If the examinations are successfully passed, the registration is granted and a hard copy of the registration certificate is issued. Proof of use is not required to maintain nor to renew a trademark registration.

• Due every 10 years with a 6-month grace period
• Restoration is not possible

• Simply signed scanned Power of Attorney in Spanish
• No additional accompanying documents are required to record a change of name or address
• Original notarised and legalised/apostilled accompanying documents in Spanish where relevant to the particular type of filing to be made, e.g.

i) Assignment or licence agreements

ii) Companies Registry certificates certifying eg mergers

• Priority-based applications (new filings only): a scanned copy of the priority document issued by the relevant IPO is required along with a Spanish translation

New applications are typically processed within four months in smooth cases.

Peru is a member of the Andean Pact along with the other members of the Andean Community, namely, Bolivia, Colombia and Ecuador. According to the Andean Pact, there are particular reciprocal rights available to trade mark owners within the Andean Community. For example, it is possible to oppose a Peruvian trade mark application on the basis of an earlier registration held by the opponent in any other Andean Community jurisdiction so long as an application to protect the trade mark in Peru is also filed at the time of filing the opposition.

Paris Convention Priority can be claimed. Uruguay is a party to the Paris Convention.

• Due every 10 years with a 6-month grace period
• Restoration is not possible

• Simply signed scanned Power of Attorney in Spanish
• No additional accompanying documents are required to record a change of name or address
• Original notarised and legalised/apostilled accompanying documents in Spanish where relevant to the particular type of filing to be made, e.g.

i) Assignment or licence agreements

ii) Companies Registry certificates certifying eg mergers

• Priority-based applications (new filings only): a scanned copy of the priority document issued by the relevant IPO is required along with a Spanish translation

• Due every 15 years with a 6-month grace period
• Restoration is not possible

• Original notarised and legalised/apostilled Power of Attorney in Spanish
• Original notarised and legalised/apostilled accompanying documents in Spanish where relevant to the particular type of filing to be made, e.g.

i) Assignment or licence agreements

ii) Companies Registry certificates certifying changes of name / address / merger

• Priority-based applications (new filings only): a scanned copy of the priority document issued by the relevant IPO is required along with a Spanish translation

New applications are typically processed within 15 months in smooth cases.

In 2022, the Venezuelan Intellectual Property Office (SAPI) accepted the application of the TRIPS Agreement and the Paris Convention as they relate to the criteria for the recognition of well-known trade marksin Venezuela.