Shapes as TM in Latam – The restrictive position of Chile

July 2020

A recent resolution from the Chilean INAPI has reminded us that Chile is one of the few countries which formally reject the possibility to register the shape of a product as a trademark.

In this particular case, the company BIMBO requested the following two applications[1] to identify bread (Cl. 30) in several Latin-American countries:

The Trademark Office of many countries accepted and registered these very applications (Peru, Mexico, Argentina) but the Chilean INAPI, on first instance, has recently rejected them arguing that forms cannot be registered as trademarks and that they lack distinctiveness.  

The INAPI resolution is pretty short and, as far as we know, has been appealed by Bimbo. We will see what the outcome is but in any event it raises again the long debated issue of registering the shape of a product as a trademark and the restrictive position sustained by Chile in this regard.

Generally speaking, registering shapes or forms of products is something accepted in most Latin-American jurisdictions[2] but rejected quite explicitly in Chile, where the INAPI considers that the shape or form of a product cannot be registered, regardless of whether it has or has not distinctiveness. The current Guidelines of the INAPI expressly mention that this prohibition is applied broadly, to mixed and figurative signs, and whether the shape represents the totality of the sign or its principal element. They argue that it is a matter of public interest to avoid that one person gets the exclusivity of the form or shape of a product, which needs to remain free to be used by all competitors. Fortunately, as it usually happens with legal topics, there are always gray areas; for instance, there are trademarks in Chile, such as the following, which identify shapes and have been considered as being acceptable in Chile for different reasons.

Even though this applications have been accepted, the formal rejection to allow shapes as trademarks still remains in Chile. I humbly question the main premise for this basic rejection. Subject to a better-founded opinion, I sustain that allowing a specific form, distinctive enough, to be registered as a trademark does not prevent third parties from using other forms or shapes which confer the same function. If an application claims for a generic form, which is not distinctive or merely claims a function, it would be rejected for that reason. But if the application claims for a distinctive form, the trademark will be limited to that particular and distinctive form; being all other forms of that product out of the scope of the corresponding trademark. Therefore, granting a trademark upon a specific shape or form with the limitations accepted in most jurisdictions (mentioned in the next paragraph) does not affect competition. Indeed, we can argue the complete opposite: it protects a fair competition and guarantees that consumers are not confounded as to the origin of a certain product with a particular and distinctive shape. However, Chile remains solid in its interpretation, and we will have to be attentive to potential changes in the project of amendment of the IP Law.

Finally, it is worth mentioning that in all other Latin-American countries shapes can be registered. The challenge with this type of applications will be similar to the one faced in other jurisdictions, with requirements which are tricky and sometimes imply a balance not easy to find. On the one hand, the mark (i) cannot result from the nature of the product, (ii) nor be necessary to obtain a technical result or (iii) its shape give substantial value to the goods. On the other hand, the shape has to be distinctive enough to identify the origin of the products, which is the essential function of a trademark.

In any event, requesting the shape of a product as a trademark is an option which we anticipate will be pursued by many applicants in the near future. Nonetheless, who would not want to have its products identified so quickly as by having a quick look at its shape? Let´s see if Chile moves on that direction. For the time being, let’s have a look at some examples of successful cases in other countries. I bet you know who the owner is at a first glance!

MX 2023882 

[1] CL app # 1341870 & 1341871

[2] Brazil, Argentina, Bolivia, Costa Rica, Dominican Republic, Ecuador, El Salvador, Guatemala, Honduras, Mexico, Nicaragua, Panama, Paraguay, Uruguay.

Eduardo Zamora