Our partner Eugenio Gormáz spoke with El Mercurio about the trademark cancellation procedure for non-use introduced by the INAPI Short Law, which will take effect in May 2027.
2027 will be a turning point for the Chilean trademark system. Starting next May, the earliest trademark registrations will be vulnerable to cancellation for non-use. This puts an end to trademarks being “hoarded” by individuals and companies that do not use them, thereby blocking third parties or hindering the entry of new players.
According to experts, this change alters a long-standing paradigm in the country and aligns with the amended Industrial Property Law of 2022, which introduces the provision for trademark revocation due to non-use. This opens up a new landscape for companies and trademark portfolios: simply registering and renewing a trademark is no longer enough; actual use now becomes a strategic requirement for the asset. “The goal is not to penalize or eliminate strategic trademark protection, but rather to prevent artificial congestion in the trademark registry,” states Eduardo Lobos, a partner at Sargent & Krahn.
This is because, whereas previously a trademark could be maintained indefinitely by renewing it every 10 years, it will now be possible to request the total or partial cancellation of any trademark that, five years after its grant, has not been actually used in Chile.
“This reform has changed the rules of the game in the management of intangible assets in Chile. For companies, the trademark becomes a living asset that must be backed by actual and effective use, which helps maintain a more streamlined and dynamic trademark registry. This strengthens legal certainty, facilitates more efficient management, and opens new opportunities for greater competitiveness, especially for those seeking to develop and position new brands in the market. Simply put, trademarks are not meant to be tucked away in a drawer, but rather for those who truly produce and drive the economy,” says Esteban Figueroa, national director of INAPI.
In 2022, INAPI granted 37,688 new trademarks and 19,243 renewals.
Online
Eugenio Gormáz, a partner at az IP, emphasizes that this measure brings Chile closer to international standards in trademark matters and, from an economic perspective, promotes a more competitive system. At the same time, he adds, it requires companies to manage their portfolios more actively.
For this reason, Lobos maintains that the protection strategy requires a more technical and dynamic analysis in which different scenarios must be evaluated. In the case of Sargent & Krahn, he explains that they have assisted several clients with portfolio audits to identify dates of vulnerability to expiration due to non-use, as well as with the preparation and compilation of evidence of use: “There is awareness and understanding of the new regulation, especially among multinational companies that have already faced such actions in other jurisdictions.”
Gormáz agrees that there is growing interest, particularly among firms with large portfolios or older registrations. “Companies should not wait for a cancellation action to be filed before reviewing their situation,” he asserts, warning that some may be left exposed if they do not retain sufficient evidence of use or if the trademark is operated by third parties without an adequate contractual framework. “Before applying for registration, companies should ask themselves which products or services they truly need to protect and which ones they have a reasonable likelihood of marketing. Registering trademarks indiscriminately without a commercial strategy increases the risk of facing a cancellation action.”
Lobos explains that any type of evidence may be submitted to prove actual use, except for witness testimony.
How Trademark Cancellation for Non-Use Works
Where is the proceeding filed?
The cancellation action is filed with the National Institute of Industrial Property (Inapi).
What constitutes “use”?
The law refers to actual use of the trademark within the national territory. In practical terms, evidence may include invoices, receipts, shipping documents, advertising, social media posts related to sales, distribution contracts, etc. The burden of proving use rests with the trademark owner.
Whose use?
The trademark does not need to be used directly by the owner. It may also be used by licensees, distributors, franchisees, and third parties authorized by the owner.
Can revocation be partial?
Yes. For example, if a trademark is registered for 30 goods or services but is used for only five, the expiration may affect only the remaining 25.
What happens if there are valid reasons for not using it?
The law provides for exceptions, provided they are genuine circumstances beyond the owner’s control. Therefore, the trademark will not lapse if the owner can demonstrate obstacles beyond their control, such as regulatory restrictions, import bans, or administrative requirements that prevent the product or service from being marketed.
