Offences against industrial property in Chile basically consist in forgery and usurpation, and unauthorized commercial use or exploitation in the case of patents, utility models and industrial designs, and counterfeiting, copying and usurpation, or use of counterfeit or copied trademarks.
Offences against industrial property (patents, utility models, trademarks and industrial designs) are dealt with according to the rules of ordinary criminal procedure and the evidence is considered according to equity.
Before a judgment can be made in such cases, the Head of the Department of Industrial Property must be heard as a means of providing the technical information on the issue brought before the court.
Offences against industrial property are considered to be "crimes", and the period in which criminal action may be brought is limited to 10 years.
Offences and penalties in respect of patents
Article 52 of the Industrial Property Law defines offences in relation to patents.
Firstly, the law punishes anyone who misleads another person by invoking the benefits of a patent which does not exist or which has lapsed; in other words, who claims to have a right which he does not in fact have, either because he never did have it or because it has lapsed.
Secondly, the law punishes anyone who without due authorization manufactures, markets or imports for the purpose of sale a patented invention. This means that the law requires anyone manufacturing, marketing or importing a patented invention to obtain an authorization from the patent holder, failing which he is guilty of a criminal act.
In this connection, it should be borne in mind that the manufacture, marketing or import must be for the purposes of sale. If the purpose is other than sale, such as private use or experiment, then no offence has been committed.
It should also be pointed out that by penalizing imports, Chilean law is not applying the principle of national exhaustion of industrial property rights, but simply penalizing the imports insofar as they constitute use without the authorization of the right holder. In the case of imports from the place at which the invention was used with the authorization of the holder, there is no infringement.
Chilean law also penalizes those who mislead through the use of a patented process. However, the use of a patented process for exclusively experimental or educational purposes is not an offence, an exception which is more explicit than in the case of product patents.
The copying of a patented invention is also an offence; in other words it is an offence to put an invention similar to a protected invention to use without the authorization of the right holder.
Finally, the law penalizes those who copy or make use of an invention for which an application is pending, provided the patent is ultimately granted. This rule makes it possible to prosecute anyone who misleadingly copies or uses an invention for which there is a pending application either for a product patent or a process patent, provided the patent is ultimately granted. Thus, the right holder is protected from the moment the application is filed and not from the moment the patent is granted.
In all of the above cases, the penalty is a fine which ranges from about US$4,822 to US$24,109, an amount which may be doubled in cases of second offence.
The maximum penalty under Chilean law for infringement of industrial property rights is in fact the seizure of the tools and implements used to commit the offence and the illegally produced objects, since this is done on behalf of the patent holder. There is no prison sentence for the infringement of industrial property law.
As regards provisional measures, the judge may order the immediate seizure of such goods, without prejudice to his authority to order such precautionary measures as may be appropriate.
In addition to these pecuniary penalties, persons convicted for infringing the rights of a patent holder must pay costs and damages.
As a prerequisite for penal action, all patented objects must carry an indication of the patent number, either on the product itself or on its packaging, visibly preceded by the word "patent ". This obligation does not apply to processes (patented).
Offences and penalties with respect to utility models and industrial designs
The offences and sanctions relating to infringement of utility models and industrial designs are essentially the same as for patents, with the exception of infringements relating to patent applications punishable after the patent has been granted.
Offences and penalties with respect to trademarks
Chilean law provides for five situations considered as infringements against trademark owners.
Firstly, the law penalizes those who misleadingly use a trademark identical or similar to another trademark already registered in the same class. This provision penalizes the unauthorized use of a trademark identical or similar to another already registered in the same class. The penalty is a broad one, in that it does not distinguish between equal or similar products and/or services as long as they are registered in the same class.
The law also penalizes those who use trademarks for deceptive purposes.
Thirdly, the law punishes those who use registered trademarks of the same class for any type of advertising. While this is a more specific type of delictual action, the idea is essentially the same as for the first case mentioned above.
The use of a trademark which is not registered, which has lapsed or which has been cancelled with the same indication that would be used for a registered trademark is also punished.
Finally, the law penalizes those who use packaging or wrapping displaying a registered trademark which does not belong to them and has not been deleted, except in cases where the marked packaging is used for product of a different class. This is a form of indirect protection for the packaging of products protected by a registered trademark.
In all of the above cases, and as in the case of patents, the penalty for infringement is a fine ranging from US$4,822 to US$24,109, which may be doubled in case of a second offence over the past five years.
The maximum penalty under Chilean law for trademark infringement is in fact the destruction of the tools and the implements used for counterfeiting or copying and the seizure of the illegally produced objects on behalf of the trademark holder. There is no prison sentence for the infringement of industrial property law.
As regards provisional measures, the judge may order the immediate seizure of the goods with a counterfeit or copied trademark, without prejudice to his authority to order such precautionary measures as may be appropriate.
In addition to these pecuniary penalties, persons convicted or infringing the rights of a trademark owner are liable for payment of costs and damages.
As a prerequisite for penal action, all registered trademarks used commercially must carry the symbol or the initials "M.R.".
Offences and penalties with respect to copyright and related rights
Under Chilean law, offences with respect to copyright and related rights are punishable by a pecuniary penalty or a prison sentence. In fact, a bill has been submitted which calls for even greater penalties for this type of infringement.
There is a general penalty for infringements of copyright and related rights consisting of a fine ranging from US$241 to US$2,410 which is applicable in the absence of a specific penalty, as we shall see further on.
When a court orders the payment of damages for infringement of copyright and related rights it may order, at the request of the injured party, the handing over, sale or destruction of the copies of the work produced or put into circulation and the materials for their production, and the seizure of the product recited, represented, reproduced or performed.
The court may also order, during the proceedings, the immediate suspension of the sale, circulation, exhibition, performance or representation of the work.
The judges have the authority to order, at the request of the injured party, the publication of the judgement, with or without the grounds on which it is based, in a journal, at the cost of the offender.
Finally, it should be pointed out that such offences are actionable publicly and the complainant has a right to half of the fine imposed.
The first specific penalty under copyright law concerns those who, without the authority to do so, use works belonging to others which are protected, whether published or unpublished, by:
- Public recording, radio or television broadcasting, representation, performance, reading, reciting, exhibition or, in general, any other means known or that becomes known;
- reproduction of the work by any process;
- adaptation of the work to another genre, utilization in any other form involving a variation, adaptation or transformation of the original work, including translation; and
- public performance through radio or television broadcasting, phonographic records, cinematographic films, magnetic tapes or any other material support which could be used in sound or voice recorders, with or without images, or by any other means.
The law also penalizes those who, without the authority to do so, use protected interpretations, productions and broadcasts of holders of related rights.
It also punishes those who counterfeit copyright protected works, whether literally, artistic or scientific, or publish, reproduce or sell them falsely displaying the name of the authorized publisher, removing or changing the name of the author or the title of the work or misleadingly altering the text. It should be noted that in Chile, the title of a work is also protected.
Those who are liable for payment of copyright or related rights on the performance of musical works and fail to provide performance notifications or falsify or alter them are also guilty of a criminal act.
The law also penalizes the marketing of books fraudulently published or printed or without the authorization of the copyright holder.
The above infringements are punishable by 61 to 541 days' imprisonment or a fine ranging from US$241 to US$2,410.
Falsification of the number of copies sold in the accounts relating to the publishing contract is also punishable by 541 days to 5 years' imprisonment.
The law provides for 61 to 541 days' imprisonment for those who, with the motive of gain, intervene in the reproduction, public distribution or introduction into the country and those who acquire or hold for the purposes of sale phonograms, videograms, phonographic records, cassettes, video cassettes, cinematographic films or computer programs.
Penalty for infringement of other categories of rights
Chilean law also penalizes infringements of other intellectual property rights, such as those relating to geographical indications, undisclosed information and protection of plant varieties.
The Law on Alcoholic Beverages in Chile defines at least three geographical designations with respect to spirits, one of which protects Chilean Pisco. The law provides for a fine of US$723 to US$7,233 for those who use this designation in violation of its requirements. This fine can be increased to US$14,400 in case of second offence. Similar penalties are applied to those who infringe the rules governing designation of origin with respect to wine.
There is no prison sentence for such offences.
Regarding undisclosed information, there is a series of imprisonment penalties for persons who disclose information that has been classified as confidential, especially information relating to industry or to business and commercial transactions.
Finally, Chilean law prescribes a fine ranging from US$241 to US$2,410 and prison sentences of 61 to 541 days for infringements of plant breeders' rights through the propagation or sale of reproductive material or the offering of such material for sale, or the distribution, importation or marketing thereof, a penalty which is doubled in case of second offence.