We share the opinion column by our senior associate, Carlos Lazcano, and associate, Fernanda Rodríguez, from the Intellectual and Industrial Property Group, on the risk of investing without registering your trademark.
In the business world, there are decisions that seem minor but can shape the future of a business. One of them is registering a trademark before launching a product or service.
In Chile, it is common to see individuals, entrepreneurs, and companies spending months creating their brand, visual identity, investing in social media, designing packaging, and developing products under a specific brand without first reviewing the feasibility of registering that brand or registering it directly with the National Institute of Industrial Property.
This omission can be a costly mistake that jeopardizes the investment and effort made to position the brand and business.
In Chile, the principle that the first to register acquires the right applies, a reality that many people and entrepreneurs discover when it is too late.
Obtaining registration grants the owner exclusive use of the sign throughout the national territory and allows them to prevent third parties from using it or attempting to benefit from it. In addition, registration constitutes a real defense tool that enables the owner to take action against infringements and claim compensation in the event of damage or misuse.
Our Law No. 19,039 on Industrial Property expressly states, in Article 19 bis D: “The trademark confers on its owner the exclusive and exclusive right to use it in economic traffic in the manner conferred upon it and to distinguish the products or services covered by the registration. Consequently, the owner of a registered trademark may prevent any third party, without their consent, from using identical or similar trademarks in the course of commercial operations for products or services that are identical or similar to those for which the registration has been granted, provided that the use made by the third party could lead to error or confusion. When the use made by the third party refers to an identical trademark for identical products or services, confusion shall be presumed to exist.
Another common mistake is to think that it is best to wait until the business grows before registering the trademark, when the idea is to do exactly the opposite. The best time to do so is before launching the product or service so that all marketing and positioning efforts are made on a registered trademark.
In addition, registration allows the trademark to be licensed securely and thus authorized for use by third parties. In the event of a conflict, the ownership registered with INAPI proves beyond doubt that the trademark belongs to me, which grants me all the exclusive rights recognized by the Industrial Property Law.
Therefore, registering a trademark should not be seen as an expense, but as a real investment, since ultimately the entire business will revolve around that trademark that I decided to protect from the outset.
Although it is possible to apply for registration once the business is already up and running, doing so at that stage involves greater risk, as there is always the possibility that someone else has already registered an identical or substantially similar sign for the same products or services.
When creating a business, project, or venture, it is best to file a trademark application as soon as possible in order to verify its viability and determine whether it will be necessary to modify the name to avoid conflicts. This way, I protect my business and obtain exclusivity over the use and exploitation of my trademark in the market.
Column written by:
Carlos Lazcano | Senior Associate Intellectual and Industrial Property Group | clazcano@az.cl
Fernanda Rodríguez | Associate Intellectual and Industrial Property Group | frodriguez@az.cl
