Trademark protection based on the shape of the product in Chile: how the three-dimensional trademark is progressing in the country

March 2022

We are not telling anything new when we say that the function of trademarks is to distinguish goods or services on the market by indicating their business origin through their distinctive sign. One of the purposes of this distinctiveness is to contribute to avoid the risk of confusion and/or linking of the consumer public between competing (and sometimes even non-competing) trademarks.

There are several reasons why a trademark may be refused registration. Perhaps one of the most common, after lack of distinctiveness, is the shape of the product. However, this is not the case in all territories. In Chile, until very recently, the figure of the three-dimensional mark was not regulated in the Law, which was reluctant to this distinctive sign. However, following the approval of the new IPL bill in April 2021 (which will enter into force very shortly), the outlook is beginning to change in the country.

One of the most recent cases regarding this pronouncement has occurred with two well-known footwear brands: Vans and All Star; and not one against the other, but both against a third party.

Here are the first instance and Supreme Court judgement.

Without assessing the judgements, we will focus on the arguments of the parties and the Court in order to see how this figure is expected to advance in the country.

In the first instance decision issued by INAPI, one of the aspects that the office emphasized is that in order to determine the descriptive nature of a sign the analysis must be performed in general terms. That is: to ask whether or not the sign conveys an immediate idea of the qualities, characteristics, effects, purpose or ingredients of the good or service in question. If the answer is affirmative, the sign cannot be claimed as a trademark, as the applicant would be given exclusivity of that form.

The main question was whether the new trademark to be registered is a two-dimensional or a three-dimensional trademark, since both Vans and All Star have protection through the 3D trademark of the shape of their footwear in other territories.

In the case mentioned, it turns out that the trademark applied for which Vans and All Star oppose is made up of the two-dimensional image of a shoe in whose design also appears “a white stripe with black borders that starts on the left side and continues to the right with a bifurcation at the top and bottom, leaving a central space, and then joins together leaving two extensions at the top“. But, we reiterate, two-dimensional.

In the opinion of the office and based on the above description, the trademark analyzed as a whole is sufficiently distinctive as it has a combination, design and characteristic shapes that give it, as a whole, its own appearance and stylization.

Accordingly, the figure submitted for registration is the representation of a two-dimensional (and not three-dimensional) figure, in that sense the applicant does not seek to obtain protection of the shape of a product, but of a two-dimensional image from among the multiple possibilities of representing the shape of a shoe. Therefore, in INAPI’s opinion, it is not appreciated that the application for registration infringes the provisions of article 20 letter i) of Chilean IP Law 19.039. The trademark applied for does not correspond to the shape of the product it intends to distinguish, as indicated by the opponents.

In addition, the office states that “the current regulations in any case allow protection of the shape or color of the products or packaging, which is why the protection granted in this act refers exclusively to the sign applied for as a two-dimensional image and to be used in the form in which the registration is granted, which prevents the applicant from extending it to protect the sneaker or other footwear itself“.

In this regard, we can appreciate that while the figure of the three-dimensional trademark is not yet accepted in the country until the new Law enters into force, questions of this type are already beginning to arise from major trademarks that are demanding protection of their signs through the three-dimensional modality.

Faced with this decision, the two footwear giants went to the Supreme Court. Although for the time being they cannot rely on the three-dimensional trademark as a basis for protection, Vans argues in its defense that in any case the conflicting signs have the same coverage since they distinguish goods in class 25 (specifically, footwear) and that it is necessary to bear in mind the assessment factors of the three-dimensional trademark. These factors had not been considered by INAPI -according to Vans’ defense- claiming that they were only considered in the abstract and unrelated to the dispute and the market reality.

Another argument that Vans used in this case to try to contradict the first instance decision was that in the market for class 25 products the mass character prevails because consumers make their purchasing decisions quickly and unthinkingly, driven by the imperfect memory of the brands.

All of these arguments were rejected by the Court again on the grounds that two different types of trademarks were being dealt with: a two-dimensional trademark was being applied for and the opposing parties were opposing on the basis of a three-dimensional trademark. The Court did not consider that INAPI had committed any error of law in establishing the facts that were deemed to be proven.

This whole legal discussion is a gibberish that the new Chilean legislation should solve. The new legislation will allow the registration of three-dimensional trademarks in the territory and we will have to pay attention to what will happen to all those applicants who have tried to register a three-dimensional trademark, or to oppose it on the basis of the same, in the time between the approval of the bill and its entry into force.

Eduardo Zamora | Sara del Río