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This is an informal case summary prepared for the purposes of facilitating exchange during the 2024 WIPO IP Judges Forum.

Session 4

Industrial Property Court of Chile [2023]: mark SHEUEN, TDPI N°1760-2022

Date of Judgment: January 19, 2023

Issuing Body: Industrial Property Court – Chile

Level of Issuing Body: First Instance

Type of Proceeding: Judicial (Administrative)

Subject Matter: Trademarks

Plaintiff: SHEUEN PATAGONIA SPA

Defendant: National Institute of Industrial Property (INAPI)

Keywords: Indigenous languages, Distinctiveness of trademark, Deceptive trademarks, Cultural heritage

Basic Facts: SHEUEN PATAGONIA SPA (the plaintiff) applied to register the below trademark:

The trademark application sought protection for certain products in Class 33, as well as services in Classes 35 and 43 of the Nice Classification.

The National Institute of Industrial Property (INAPI), acting as a tribunal of first instance, rejected the trademark application on the grounds that the applied trademark corresponds to a word from the language of the indigenous Selk'nam people. INAPI found that the trademark would cause error and deception among consumers regarding its origin, qualities, and characteristics potentially attributing them to the indigenous people.

SHEUEN PATAGONIA SPA appealed the decision rendered by INAPI to the court of second instance, the Industrial Property Court of Chile.

Held: The Industrial Property Court upheld the first-instance ruling and refused to grant protection to the trademark in question.

Relevant holdings in relation to the strength of trademarks: The Industrial Property Court upheld the ruling of the first instance tribunal, INAPI, confirming that “SHEUEN” is a word derived from the Selk'nam language. Moreover, the sign in question includes the image of a spirit associated with the Hain ceremony, a significant cultural ritual of the Selk'nam people, an indigenous group from Chile.

Since both the name and the image are integral elements of this community's cultural heritage, the court decided that granting protection to the trademark in question would cause error or deception regarding the origin and source of the products and services intended to be offered by the applicant.

Relevant Legislation:

·       Law No. 19.039 on Industrial Property