We invite you to read the column written by our senior associate, Carlos Lazcano, and associate, Fernanda Rodríguez, of the Intellectual and Industrial Property Group, on actions for expiration due to non-use of registered trademarks.
In 2027, the first actions for revocation due to non-use will become enforceable with respect to trademarks registered under the regime introduced by Law No. 21,355. Therefore, it will be a pivotal year for many companies that have trademarks registered in Chile.
In general terms, this means that certain registered trademarks may be challenged if they have not been effectively used during the period required by law.
Previously, a trademark could remain in force practically indefinitely through periodic renewals, even if it had never been used in the market. As a result, so-called “paper registrations”—that is, registered trademarks that were not being used—began to increase, preventing third parties from accessing those same marks to carry out actual commercial activities. To address this situation and bring our legislation in line with international standards, a cancellation action for non-use was introduced in 2022—a mechanism that allows for the challenge of registrations that have not been effectively used during the period established by law.
The arrival of the first cancellation actions presents a good opportunity for companies to review their trademark strategy and ask themselves some basic questions:
- Do the trademarks I am registering today correspond to actual business projects?
- Do the scopes of protection I am requesting effectively reflect the products and services I intend to offer?
- Am I using my trademarks consistently in the market?
- Would I be able to demonstrate that use if someone challenged it?
This does not mean that companies should register fewer trademarks, but rather that they should register more strategically: applying for the trademarks that I will actually use in the market.
When there is actual use, not only is the commercial value of the trademark strengthened, but evidence is also generated that allows for proving its effective use in the face of potential future challenges. Ultimately, the goal is not to accumulate registrations, but to build trademark protection that consistently supports the development of the business.
Similarly, it is also essential to have evidence demonstrating the trademark’s use in the market, such as advertising, websites, social media, catalogs, marketing campaigns, invoices, and other records that are typically generated in the course of business.
Now, a question that naturally arises is why, if the action for revocation due to non-use was incorporated into our legislation in 2022, it will not begin to have practical effects until 2027. For this action to proceed, five years must have elapsed from the date of trademark registration without the trademark having been used. It is also important to bear in mind that cancellation does not occur automatically nor can it be declared ex officio by the National Institute of Industrial Property. The law requires that a person with a legitimate interest file the corresponding action. Once the action is filed, it is up to the trademark owner to prove that the trademark has been subject to actual and effective use within the national territory.
In addition, the declaration of expiration does not take effect upon the filing of the complaint, but rather when a final judgment orders the total or partial cancellation of the corresponding registration. In other words, as long as there is no final decision, the trademark remains valid and protected.
Ultimately, the emergence of the first actions for revocation due to non-use will mark one of the most significant milestones in the Chilean trademark system in recent decades. For the first time, the obligation to effectively use a registered trademark will cease to be a purely theoretical requirement and will become a decisive factor in maintaining the right.
Chile is moving away from a model in which registration alone allowed for the maintenance of virtually indefinite rights, and is advancing toward a system that prioritizes the effective use of trademarks in the marketplace.
As a result, our legislation aligns with trends that have long prevailed in other jurisdictions internationally, promoting a more dynamic trademark registration system, reducing the existence of blocking trademarks, and facilitating access for new market entrants to marks that can actually be commercially exploited.
In practical terms, this will require companies to adopt a much more strategic approach to managing their intangible assets, recognizing that it is no longer enough to simply register a trademark; they must also use it effectively in the market to maintain its protection.
Column written by:
Carlos Lazcano | Intellectual and Industrial Property Group Senior Associate | clazcano@az.cl
Fernanda Rodríguez | Intellectual and Industrial Property Group Associate | frodriguez@az.cl
