Annulment appeal invoked again in Chile

Another useful item from the INTA Bulletin, August 1, 2009 (Vol. 64, No. 14) concerns a decision of the Chilean Supreme Court this May in an annulment appeal proceeding -- this being just the second time this procedure has been successfully utilised since it was introduced in 2005. It may be invoked when a decision of the second instance Industrial Property Court (which hears appeals from first instance decisions of the National Institute of Industrial Property, INAPI), contains errors of law that substantially affect the dispositive portion of the decision.

In this case Empresa Nacional del Petróleo applied to register the word and design mark DIESEL CIUDAD PLUS for commercial establishments for the sale of goods in all classes. The application was partially rejected on the ground that that mark was confusingly similar to Diesel SpA’s earlier trade mark DIESEL. The Supreme Court found that the earlier decisions of the appeal court and INAPI were not based on any facts established in the proceedings; accordingly there were no grounds for partially refusing the application on the legal provisions cited.