78. The representative of Chile recalled that, at the June meeting his delegation had addressed the first question and would therefore simply refer to its statements made then, and focus on sub question 2.
79. The Chilean Industrial Property Law 19.039 provided that generic terms could not be registered as trademarks or as geographical indications. With regard to trademarks, Article 20.e) of the Law stipulated that expressions or signs used to indicate the type ("género") of products or services, and those generally used in trade to describe certain goods or classes of goods, or certain services or types of services could not be registered as trademarks. As regards geographical indications, Article 95 of the same Law established that signs or expressions that were common or generic indications, i.e. considered as such by those familiar with such matters or by the public in general could not be recognized as geographical indications. The procedure of registering trademarks and geographical indications was administered by the Industrial Property Institute, and the issue of genericness of a term was determined by the Institute. The genericness of a term could also be challenged in opposition proceedings by any interested party. In that case, whoever presented an opposition must substantiate the cause of action or provide other background information concerning the generic nature of the term, to enable the Industrial Property Institute to carry out a more thorough analysis.
80. With regard to the burden of proof of genericness under sub-question 2, he said that when it related to trademark applications, which were of the competence of the Industrial Property Institute, the issue of registrability of a term was to be determined by the Institute. The applicants must, in principle, comply with the requirements to ensure that the term was eligible for registration. One of the requirements was that the term for which protection was sought was not a generic term. The situation differed when the trademark or the geographical indication had already been registered, i.e. was protected. In that case, the burden of proof that the term registered was generic would be on the alleging party. Appeals could be made to the Institute against the registration or another action could be initiated.
