A trademark isn’t always lost just because someone else registered it first; the Industrial Property Law provides a mechanism to protect your rights based on prior use.
One of the most common scenarios we see in trademark practice is this: a company has been using its trademark for years, has customers who recognize it, has invested in building its brand, and when it finally decides to register it, discovers that a third party has already done so (by filing an application or registering the trademark beforehand).
At that point, the most common reaction is to assume that there are no alternatives left and that the only option is to change the name. After all, most people have heard at some point that, when it comes to trademarks, “first to register wins.”
As a result, many companies immediately begin evaluating a rebranding, modifying their social media accounts, changing domain names, updating advertising materials, and rethinking years of brand positioning—without first stopping to analyze whether this is truly the only option. However, there is another way.
What can I do if someone registers my trademark before I do?
The Industrial Property Law provides a tool that many companies are unaware of: Article 20(h), second paragraph.
This rule establishes that the ground for refusal of registration based on likelihood of confusion applies not only to registered trademarks but also to unregistered trademarks that are being genuinely and effectively used prior to a third party’s application.
In practice, this means that the party who has been using the trademark may:
- Oppose a third party’s application for registration.
- File a petition to invalidate a registration that has already been granted.
All of this is based on prior use, even if the trademark was never registered.
Important: Once the third party’s application is rejected or their registration is declared invalid, the law gives the prior user 90 days to register the trademark in their name. If they fail to do so, the trademark becomes available for anyone to apply for.
What is required to invoke this ground?
It is not enough to simply state that the trademark was used previously. The law requires proof of actual and effective use of the mark in the marketplace. The good news is that many companies have generated this evidence without even realizing it.
The most relevant evidence includes:
- Invoices and receipts bearing the mark, dated prior to the contested application.
- Web domain and social media presence.
- Advertising materials, catalogs, and campaigns.
- Media publications.
- Contracts, emails, and commercial documentation.
The process involves reconstructing the trademark’s history using this evidence, which must clearly predate the third party’s filing of the registration application with INAPI.
What this does not guarantee:
It is important to note that prior use does not automatically guarantee success. There are cases where the evidence is insufficient or where the differences between the marks prevent the establishment of the likelihood of confusion required by the law. Each situation is unique and must be analyzed based on the specific facts of the case.
The underlying recommendation remains the same:
Registering in a timely manner is always the best decision. But when a problem has already arisen, the first question should not be “How do I change the trademark?” but rather, “How long have I been using it, and what evidence do I have?”
In other words, the existence of a prior registration does not always settle the matter. Depending on the circumstances, it may be necessary to analyze the prior use of the trademark, the available evidence, the status of the trademark proceedings, and the various remedies provided by our laws to protect rights that may have been established previously.
For more information on these topics, please contact our team:
Eugenio Gormáz | Partner | egormaz@az.cl
Carlos Lazcano | Senior Associate | clazcano@az.cl
Fernanda Rodríguez | Associate | frodriguez@az.cl
Esteban Orhanovic | Associate | eorhanovic@az.cl
Matías Selamé | Associate | matiasselame@az.cl
Be part of our multimedia platform and you can receive the latest legal news, events, podcazt and webinars.
Subscribe to our Newsletter here.
